Intel Corporation v Genovesi Enterprises Pty Ltd

[2001] FCA 747

Intel Corporation v Genovesi Enterprises Pty Ltd [2001] FCA 747

Intel Corporation v Genovesi Enterprises Pty Ltd [2001] FCA 747

INTEL CORPORATION & ANOR v GENOVESI ENTERPRISES PTY LIMITED
(ACN 074 529 589) (trading as INTEL FINANCIAL SERVICES) & ANOR

N 1256 OF 2000

LINDGREN J

13 JUNE 2001

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1256 OF 2000

BETWEEN:

INTEL CORPORATION

FIRST APPLICANT

INTEL AUSTRALIA PTY LIMITED (ACN 001 798 214)

SECOND APPLICANT

AND:

GENOVESI ENTERPRISES PTY LIMITED (ACN 074 529 589) (trading as INTEL FINANCIAL SERVICES)

FIRST RESPONDENT

GIANFRANCO JOSEPH GENOVESI

SECOND RESPONDENT

JUDGE:

LINDGREN J

DATE OF ORDER:

13 JUNE 2001

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.       The first respondent, whether by its servants, agents or otherwise, be permanently restrained from advertising, promoting, selling, offering to sell, supplying or offering to supply or distributing any goods or services under or by reference to any name or mark which incorporates the word INTEL or any other name or mark substantially identical with or deceptively similar to the word INTEL.

2.       The first and second respondents, whether by their servants, agents or otherwise, be restrained from authorising or procuring or being in any way directly or indirectly a party to or concerned in the conduct restrained by Order 1 above.

3.       The respondents take all necessary steps to execute all necessary documents to change the business name used by the first respondent to a name that does not include the word INTEL or a name that is substantially identical with or deceptively similar to the word INTEL, and to notify the Ministry of Fair Trading (WA) of the first respondent's change of business name within seven days of the date of this order.

4.       The respondents pay the applicants' costs.

Note:       Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1256 OF 2000

BETWEEN:

INTEL CORPORATION

FIRST APPLICANT

INTEL AUSTRALIA PTY LIMITED (ACN 001 798 214)

SECOND APPLICANT

AND:

GENOVESI ENTERPRISES PTY LIMITED (ACN 074 529 589) (trading as INTEL FINANCIAL SERVICES)

FIRST RESPONDENT

GIANFRANCO JOSEPH GENOVESI

SECOND RESPONDENT

JUDGE:	LINDGREN J
DATE:	13 JUNE 2001
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1       The applicants move on a notice of motion filed on 21 May 2001 for certain orders which, in fact, I propose to make. The evidence establishes that the notice of motion and supporting affidavits were served on the respondents on 23 May 2001. Neither respondent, although called outside the Court today, has appeared.

2       The applicants move under Order 10 rule 7, or, alternatively, Order 20 rule 1 of the Federal Court Rules for the relief identified in pars 1, 2 and 3 of the application by which the proceeding was commenced on 22 November 2000.

3       Order 10 rule 7 provides, relevantly, that:

"(1) Where a party fails to comply with an order of the Court directing that party to take a step in the proceeding, any other party may move the Court on notice -

(a) ...;

(b) if the party in default is a respondent - for judgment or an order against him in default;

(c) ...."

4       In the present case the respondents are in default in relation to orders which were made by the Court on 19 March 2001. On that date the Court ordered them to give discovery by 16 April 2001 in the categories which had been set out in a list sent by the applicants' solicitors to the respondents' solicitor under cover of a letter dated 16 March 2001.

5       Today, the second respondent sent a facsimile transmission to the solicitor for the applicants stating, inter alia:

"I wish to say thank you for hearing me out last evening on the phone.

As you now know, I was badly mislead [sic] by my lawyer.

I don't have a lawyer any more and I can't get one.

I hope today's hearing is the last in the matter.

Obviously I won't be there.

I'd be very grateful if you would convey the following to the court.

(1) I do not oppose the orders you seek.

(2) My apologies to the court."

6       The letter was signed "Frank Genovesi" and a postscript stated that he had faxed a copy of his letter to this Court. In fact he did send by facsimile transmission a copy of the letter to my Associate. The evidence shows that Mr Genovesi owns all the issued shares in the capital of the first respondent and that he and his wife are its directors.

7       In the light of Mr Geonvesi's letter and proof of service of the notice of motion, it is not necessary for me to refer to the evidence in detail. Moreover, I regard it as appropriate to take an approach favourable to the applicants in relation to certain parts of the evidence which may not strictly satisfy the rules of evidence: see Australian Securities Commission v Macleod (1994) 54 FCR 309 (Drummond J) at 314; Maxims Entertainment Pty Limited v Chinatown Enterprises Pty Ltd [1998] FCA 1707 (Burchett J) at pp 2-3. In the course of the reading of the evidence, there was, in particular, an affidavit of Paul Eugene Brennan filed in another proceeding in this Court (NG 790 of 1998), which I have read as evidence in this proceeding even though the requirements of O 33 r 5 of the Federal Court Rules might not be satisfied (a copy was exhibited to an affidavit filed in this proceeding). As well, I have read as evidence in this proceeding, a report of "Trade Mark Investigation Services (TMIS)" dated 26 November 1999, which is not in the form of an affidavit, but which was also exhibited to an affidavit filed in this proceeding. In doing so, I have exercised the discretion which I have under O 33 r 3(b) of the Federal Court Rules.

8 The affidavits read by Ms Bowne of counsel for the applicants establish that the first applicant is the owner of the registered trade mark INTEL, that the second applicant is an authorised user of that trade mark and that the respondents have been using that word as a trade mark in respect of the provision of financial services. The respondents have used the sign INTEL sometimes alone and sometimes in the expression "INTEL Financial Services" but even in the latter case, in a way so as to emphasise the word INTEL. Accordingly, I am satisfied that infringement is proved: see s 120 of the Trade Marks Act 1995 (Cth).

9       I make orders 2, 3 and 4 of the notice of motion filed on 21 May 2001. As well I order that the respondents pay the applicants' costs of the proceeding.

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren.

Associate:

Dated:        18 June 2001

#DATE 13:06:2001

Counsel for the Applicant:	Ms A H Bowne
Solicitors for the Applicant:	Mallesons Stephen Jaques
The Respondents did not appear.
Date of Hearing:	13 June 2001
Date of Judgment:	13 June 2001