Jemella Australia Pty Ltd (ACN 104 455 138) v James Vosiliatis

[2010] FCA 331

FEDERAL COURT OF AUSTRALIA

Jemella Australia Pty Ltd (ACN 104 455 138) v Vosiliatis [2010] FCA 331

Citation:	Jemella Australia Pty Ltd (ACN 104 455 138) v James Vosiliatis [2010] FCA 331
Parties:	JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138) v JAMES VOSILIATIS, SONIA MOLLUSO and JEMELLA GROUP LIMITED
File number(s):	QUD 59 of 2010
Judges:	GREENWOOD J
Date of judgment:	23 March 2010
Catchwords:	INTELLECTUAL PROPERTY – application for an interlocutory injunction
Legislation:	Trade Marks Act 1995 (Cth), ss 133, 137, Part 13
Cases cited:	Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57
Date of hearing:	23 March 2010
Place:	Brisbane
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	13
Counsel for the Applicant:	Not represented by counsel
Solicitor for the Applicant:	Luke Fox, In-House Solicitor
Counsel for the Respondents:	No appearance
Solicitor for the Respondents:	No appearance

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION	QUD 59 of 2010

BETWEEN:

JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138)
Applicant

AND:

JAMES VOSILIATIS
First Respondent

SONIA MOLLUSO
Second Respondent

JEMELLA GROUP LIMITED
Third Respondent

JUDGE:	GREENWOOD J
DATE OF ORDER:	23 MARCH 2010
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1.Orders are made in terms of the draft orders initialled by Justice Greenwood.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION	QUD 59 of 2010

BETWEEN:

JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138)
Applicant

AND:

JAMES VOSILIATIS
First Respondent

SONIA MOLLUSO
Second Respondent

JEMELLA GROUP LIMITED
Third Respondent

JUDGE:	GREENWOOD J
DATE:	23 MARCH 2010
PLACE:	BRISBANE

EX TEMPORE REASONS FOR JUDGMENT

1. This is an application by Jemella Australia Proprietary Limited in which the applicant seeks a permanent injunction pursuant to section 126 of the Trade Marks Act 1995 (Cth) (the “Trade Marks Act”), restraining the first respondent, Mr James Vosiliatis, from importing, promoting, distributing, advertising, offering for sale, displaying or otherwise using counterfeit hairstyling products, bearing the marking “GHD Hairstyling Iron”, “GHD Styler”, or “GHD”, or otherwise infringing registered trade mark number 951664, being the letters “GHD”. The applicant also seeks, in the action, a permanent injunction in the same terms against the second respondent, Sonia Molluso. Apart from those orders, the applicant seeks interlocutory orders restraining the first and second respondents from engaging in conduct, framed in the same form as the permanent relief.

2. Initially, the interlocutory orders sought restraints until trial or earlier order. However, in terms of the interlocutory injunctions, the orders are sought for a period of two weeks. The third interlocutory order sought is the conventional order that the Chief Executive Officer of the Australian Customs Service be restrained from releasing to the “designated owner” under the Trade Marks Act a consignment consisting of 10 hairstyling products described as “GHD branded hair styler kits” bearing a sign that is substantially identical or deceptively similar to a trade mark notified to the Australian Customs Service by the applicant as objector and seized pursuant to s 133 of the Trade Marks Act on 25 January 2010. Those goods are the subject of a Notice of Seizure to Objector dated 25 January 2010. The goods, for the purposes of the notice, bear the designation “DGMS: V0054154” and “V0054374”. I mention those references because they lend precision to the seizure items which will be the subject of orders I propose to make.

3. The elements of the cause of action are deposed to by Ms Kelly Maree Gardner in an affidavit sworn 4 March 2010 and, of course, the elements which must be established for the purposes of an interlocutory injunction are those identified in Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 and, in particular, at [19] per Gleeson CJ and Crennan J, and [65] to [72] per Hayne and Gummow JJ. Accordingly, I have assessed the principal affidavits in support of the application against the background of that formulation of the tests for an interlocutory injunction. As to those elements, I am satisfied that there is a prima facie case made out or alternatively, a serious question to be tried, in the sense, however, described by their Honours in Australian Broadcasting Corporation v O’Neill. 

4. In brief, the elements are these. 

5. On 1 February 2010, the applicant received a Customs seizure notice dated 25 January 2010 in relation to goods bearing the mark GHD that had been seized by the Australian Customs and Border Protection Service.  On 1 February 2010, the applicant responded to that notice by advising the designated owner that the goods were not goods of the manufacture of entities associated with the applicant and that they were counterfeit goods.  The designated owner referred to in the notice is the first respondent and the nominated address of the designated owner is 98 Puckle Street, Moonee Ponds, Victoria, 3039.  The applicant wrote to the first respondent again on 9 February 2010, putting the respondent on notice that the goods were counterfeit goods. 

6. On 9 February 2010, the applicant sought an extension of time within which to provide notice to the Australian Customs Service of proposed proceedings against the first respondent, consistent with obligations contained in Part 13 of the Trade Marks Act. On 10 February 2010, the applicant received a facsimile from the Australian Customs Service confirming an extension of time within which to provide notice to Customs of proposed proceedings in connection with the notice of seizure by 1 March 2010. The affidavit of Ms Gardner sets out a chronological sequence of exchanges or at least communications from the applicant to the first respondent and exchanges between the applicant and the Australian Customs Service. It is not necessary to repeat those matters in these reasons.

7. Ultimately, the applicant was not able to reach an accommodation with the first respondent and proceedings were then commenced on 1 March 2010 against the first respondent and, of course, the second respondent. On 1 March 2010, consistent with s 137 of the Trade Marks Act, the applicant commenced proceedings and gave notice of those proceedings to the Australian Customs Service. The affidavit of Ms Kelly also deposes to her examination of photographs of the articles which are said to be counterfeit and thus infringing articles. The photographs were provided to the applicant by the Australian Customs Service. Ms Kelly explains in her affidavit her background and experience in the examination of genuine GHD IV Stylers, otherwise known as “GHD Stylers”. She has considerable experience in examining stylers to determine whether they are counterfeit GHD Stylers or not and she deposes to her experience in closely examining photographs of stylers to determine whether they are genuine.

8. In particular, genuine stylers exhibit verification numbers applied by the genuine manufacturer.  The photographs provided to the applicant by the Australian Customs Service closely show the arms of the stylers and verification codes which are deposed to in para 18 of Ms Gardner’s affidavit.  From an examination of those codes, Ms Gardner can say that the stylers are not genuine articles.  For the purposes of the interlocutory proceedings, I am satisfied that a prima facie case of importation into Australia for sale is made out, of items to which the trade mark has been applied without the licence or authority of the trade mark owner, or the applicant, as the exclusive licensee and distributor of the trade mark owner.  The trade mark owner is the third respondent in the proceedings, Jemella Group Limited, and Mr Anthony Joseph Greeson in his affidavit of 1 March 2010, exhibits a copy of trade mark number 951664, depicting in the schedule, the mark “GHD”.  Mr Greeson deposes to the commercial arrangements between the registered proprietor of the mark and the applicant. 

9. The second aspect of the matter is a question concerning the second respondent.  The second respondent in the proceedings received communications from the applicant and the sequence of events which are said to demonstrate conduct on the part of the second respondent establishing a prima facie case of infringement by reason of the second respondent’s participation in the importation for sale and distribution of the GHD Stylers the subject of the seizure notice, is this.  In para 3 of the affidavit of Mr Luke William Fox sworn 4 March 2010, he deposes to searches that he undertook in his capacity as general counsel for the applicant.  Those searches identified that the address nominated on the seizure notice sent to the objector is the address of a business described as “Price Attack, Moonee Ponds”.

10. Mr Fox also deposes at para 3 to communications between the applicant in early 2008 with the first and second respondent in relation to the sale of counterfeit GHD products by them through the Price Attack, Moonee Ponds, store.  That matter is not taken any further and, of course, it was some time ago but it does demonstrate a connection between the Price Attack Moonee Ponds store and the second respondent in the proceedings.  Mr Fox also deposes at paras 11 and 12 to a telephone conversation he had with the second respondent.  Mr Fox sought to talk to the second respondent about aspects of the notice from Customs and the question of whether the second respondent knew of or was engaged in any activity associated with the importation. 

11. In those paragraphs, Mr Fox says that he sought to speak to the second respondent by telephoning a number [phone], which is the telephone number for the Price Attack store at Moonee Ponds.  It seems therefore, that the second respondent has a continuing, contemporary connection with a business conducted at a site which is the same site as that referred to in the notice from the Australian Customs Service.  In para 12 of the affidavit, Mr Fox deposes to the questions and responses and, in that paragraph, the second respondent denies that she purchased or imported any GHD branded products.  She also said, when asked, that the first respondent is not involved with Price Attack.  Plainly, the second respondent has a continuing connection with the business activities conducted at the site of the Price Attack store at Moonee Ponds.  Mr Fox also deposes to the second respondent’s observation that she would call back, but she did not.  Therefore, there seems to be some suggestion of a continuity of engagement from those premises. 

12. In addition to those matters, a further affidavit has been filed and read by leave, of Kelly Maree Gardner, sworn 23 March 2010, which deposes to service of the application and all supporting affidavits upon both the first and second respondents.  In that affidavit, there is a reference to and an attachment of the report of the Trade Mark Investigation Services person who effected service upon the respondents and that service was effected at 98 Puckle Street, Moonee Ponds, Victoria.  For the purposes of the interlocutory orders, I am satisfied that there are facts from which proper inferences arise that the second respondent has a connection with the conduct concerning the importation of the infringing articles. 

13. I am also satisfied that it is appropriate to make the order directed to the Chief Executive Officer of the Australian Customs Service, restraining the Chief Executive Officer from releasing the consignment of hair stylers.  The draft formulation of the orders provided to me by the applicant is the appropriate formulation.  Therefore, I make the interlocutory orders contemplated in terms of the draft.  The draft will be amended to reflect that the respondent, by Order 1, is restrained in the terms of the Order, but limited to a period of two weeks. 

I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.

Associate:

Dated:        23 March 2010