Jemella Australia Pty Ltd v Bouobeid (No 2)
[2010] FCA 365
FEDERAL COURT OF AUSTRALIA
Jemella Australia Pty Ltd v Bouobeid (No 2) [2010] FCA 365
Citation: Jemella Australia Pty Ltd v Bouobeid (No 2) [2010] FCA 365 Parties: JEMELLA AUSTRALIA PTY LTD v MOHAMAD BOUOBEID and JEMELLA GROUP LIMITED File number: QUD 285 of 2009 Judge: COLLIER J Date of judgment: 14 April 2010 Date of hearing: 14 April 2010 Place: Brisbane Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 14 Solicitor for the Applicant: Ms B Nguyen of McInnes Wilson Solicitor for the First and Second Respondents: The First and Second Respondents did not appear
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 285 of 2009
BETWEEN: JEMELLA AUSTRALIA PTY LTD
ApplicantAND: MOHAMAD BOUOBEID
First RespondentJEMELLA GROUP LIMITED
Second Respondent
JUDGE:
COLLIER J
DATE OF ORDER:
14 APRIL 2010
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.Judgment in default, pursuant to Order 35A rule 2(2)(a) to (d) and rule (3)(2)(c) and (d) of the Federal Court Rules, be entered as against the first respondent in favour of the applicant on the following terms:
(a)the first respondent be restrained pursuant to section 126 of the Trade Marks Act 1995 (Cth), whether by himself, his servants, agents or otherwise howsoever, 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 No 951 664, being the letters “GHD”;
(b)the first respondent deliver up to the applicant or its nominated agent for the destruction, all counterfeit hairstyling products bearing the marking “ghd hairstyling iron”, “ghd styler” or “ghd” whatsoever in the possession, power or control of the first respondent and within 21 days of service of this order upon him, swear and file an affidavit deposing to the fact of such delivery;
(c)the consignment consisting of 10 hairstyling products described as “hair stylers and packaging bearing a sign that is substantially identical or deceptively similar to a trademark notified by Jemella Australia Pty Ltd”, addressed to the first respondent and seized by the Australian Customs Service pursuant to section 133 of the Trade Marks Act on 30 December 2008, which goods are referred to in the Notice of Seizure to Objector dated 30 December 2008 reference N0089236, be forfeited to the Commonwealth;
(d)the first respondent pay to the applicant damages in the amount of $10 for the first respondent’s infringement of Registered Trade Mark No 951664 being the letters “ghd”.
2.The first respondent pay the applicant’s costs of and incidental to these proceedings, including all reserved costs and the costs of this motion, fixed in the amount of $8,500.
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 285 of 2009
BETWEEN: JEMELLA AUSTRALIA PTY LTD
ApplicantAND: MOHAMAD BOUOBEID
First RespondentJEMELLA GROUP LIMITED
Second Respondent
JUDGE:
COLLIER J
DATE:
14 APRIL 2010
PLACE:
BRISBANE
REASONS FOR JUDGMENT
I have before me a notice of motion, filed 7 March 2010, in which the applicant seeks the following orders:
1.Judgment in default, pursuant to Order 35A rule 2(2)(a)-(d) and rule 3(2)(c) and (d) of the Federal Court Rules, be entered as against the first respondent in favour of the applicant in the following terms:
(a)the first respondent be restrained pursuant to s 126 of the Trade Marks Act 1995 (Cth) (the TM Act), whether by himself, his servants, agents or otherwise howsoever, 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 No 951 664, being the letters “GHD”;
(b)the first respondent deliver up to the applicant or its nominated agent for destruction, all counterfeit hairstyling products bearing the marking “ghd hairstyling iron”, “ghd styler” or “ghd” whatsoever in the possession, power or control of the first respondent and within 21 days of service of this order upon him, swear and file an affidavit deposing to the fact of such delivery;
(c)the consignment consisting of 10 hairstyling products described as “hair stylers and packaging bearing a sign that is substantially identical or deceptively similar to a trademark notified by Jemella Australia Pty Ltd”, addressed to the first respondent and seized by the Australian Customs Service pursuant to s 133 of the TM Act on 30 December 2008, which goods are referred to in the Notice of Seizure to Objector dated 30 December 2008 reference N0089236, be forfeited to the Commonwealth;
(d)the first respondent pay to the applicant damages in the amount of $10.00 for the first respondent’s infringement of Registered Trade Mark No 951664 being the letters “ghd”.
2.The first respondent pay the applicant’s costs of and incidental to these proceedings, including all reserved costs and the costs of this motion, fixed in the amount of $8,500 through such further or other orders as this honourable court sees fit.
I note that, while the applicant is represented today in Court, there is no appearance by the first respondent.
On 18 December 2009, Greenwood J made interim orders in terms similar to those sought in paras 1(a) and (b) of the notice of motion. His Honour also made orders that the matter be adjourned for directions. The matter returned for directions before Reeves J on 11 January 2010, and before me on 29 January 2010 and 2 March 2010.
On 29 January 2010, I made a number of orders as to filing of material. In particular, I directed that pursuant to O 10 r 1(2)(a)(viii) of the Federal Court Rules any further documents (including any notice of motion filed by the applicant) be served on the first respondent by: (a) posting a copy of the document by registered post addressed to the first respondent at Locked Bag 7901, Mount Lewis, New South Wales 2190; and (b) sending a text message to the first respondent’s mobile phone number (0410 801 949) describing the document and stating that the document has been sent to him. Any document sent in accordance with this order was to be taken to be served on the first respondent five business days after the date on which both of those actions had been taken. I made further orders as to filing of material on 2 March 2010.
The first respondent has made no appearance at any of these hearings I have mentioned nor filed any material in response to directions that have been made in these proceedings.
This morning in Court, Ms Nguyen, for the applicant, sought leave to file two affidavits. In the affidavit of Kelly Maree Gardiner sworn 14 April 2010 – which I granted leave to file this morning – Ms Gardiner deposed in para 3 that:
On 9 March 2010, pursuant to the order of this honourable Court, made on 29 January 2010, a letter was sent to the first respondent by express post to Locked Bag 7901, Mount Lewis, New South Wales 2190 enclosing the following documents by way of service on him:
(a) order of Collier J of this honourable Court dated 29 January 2010;
(b) order of Collier J of this honourable Court dated 2 March 2010;
(c) notice of motion filed 2 March 2010;
(d) Jemella’s submissions filed 2 March 2010; and
(e) the affidavit of Luke William Fox sworn 3 March 2010 incorrectly describing the express post letter as “affidavit of Luke William Fox sworn 2 March 2010”.In her affidavit, Ms Gardiner also deposed that the material I have just described was returned unclaimed by the first respondent. More particularly, the material was returned unclaimed to the applicant on or about 16 March 2010 and was received back by Ms Gardiner.
In the affidavit of Ms Nguyen, Ms Nguyen deposes as to the service of the notice on the first respondent of change of solicitors of the applicant.
The applicant seeks judgment in default in accordance with O 35A r 2 and r 3 of the Federal Court Rules. Rule 2(2) defines, so far as relevant, when a respondent is in default for the purposes of O 35A. Rule 3(2) gives the Court discretion to give judgment against the respondent.
In this case it is clear that the first respondent is in default in these proceedings. The reasons for this are:
1.The first respondent has failed to appear at any directions hearings in this matter.
2.The first respondent has failed to defend these proceedings in any way, including a failure to appear at today’s hearing.
3.I am satisfied that the first respondent was given notice of not only the proceedings but today’s hearing, and has not appeared.
In my view, the applicant is entitled to the substantive relief sought because:
1.The certificate of registration for the GHD mark has been produced and is in evidence.
2.The applicant is the authorised user of the GHD mark and is authorised to bring these proceedings. I note that the registered owner of the GHD mark is a respondent to these proceedings.
3.The evidence established that products seized by Customs are, in fact, counterfeit products and that the GHD mark is applied to them without authorisation of the second respondent who is the registered owner of the GHD mark.
4.The first respondent has not provided an undertaking to the applicant in relation to any previous or proposed importations or dealings with counterfeit GHD products. In fact, the first respondent has not provided any evidence in that regard at all. I agree with the applicant that, on this basis, it is appropriate for the Court to make the order restraining the first respondent from dealing with any counterfeit GHD products.
5.It is well established that importation alone can be infringement of a trade mark. The applicant has not quantified actual damage caused by the infringement which means that, as a general proposition, the applicant is entitled to nominal damages.
Indeed, in these proceedings, I note that the applicant has sought nominal damages only of $10. I am prepared to order that such damages be paid by the first respondent. By comparison, a substantial sum has, however, been sought as costs, namely costs fixed in the amount of $8,500. The applicant submits that it has already incurred disbursements of more than $2,500. Further, the applicant has, in submissions, directed my attention to examples of costs orders made by this Court in comparable proceedings involving the applicant.
The applicant draws my attention to, for example, the orders made in Jemella Australia Proprietary Limited v Pellizzeri QUD 234/2008 where costs of $8,800 were awarded, and Jemella Australia Proprietary Limited v Nicholson QUD 281/2008 where costs of $9,696.15 were awarded in circumstances of three appearances by the applicant but no appearance by the respondent. I have examined those two particular orders and the circumstances involved and they are similar to the circumstances here. I am prepared to make an order for costs in the amount of $8,500 as sought by the applicant.
In summary, I make the following orders which are in very similar terms to those sought by the notice of motion. The Court orders that:
1.Judgment in default, pursuant to Order 35A rule 2(2)(a) to (d) and rule (3)(2)(c) and (d) of the Federal Court Rules, be entered as against the first respondent in favour of the applicant on the following terms:
(a)the first respondent be restrained pursuant to section 126 of the Trade Marks Act 1995 (Cth), whether by himself, his servants, agents or otherwise howsoever, 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 No 951 664, being the letters “GHD”;
(b)the first respondent deliver up to the applicant or its nominated agent for the destruction, all counterfeit hairstyling products bearing the marking “ghd hairstyling iron”, “ghd styler” or “ghd” whatsoever in the possession, power or control of the first respondent and within 21 days of service of this order upon him, swear and file an affidavit deposing to the fact of such delivery;
(c)the consignment consisting of 10 hairstyling products described as “hair stylers and packaging bearing a sign that is substantially identical or deceptively similar to a trademark notified by Jemella Australia Pty Ltd”, addressed to the first respondent and seized by the Australian Customs Service pursuant to section 133 of the Trade Marks Act on 30 December 2008, which goods are referred to in the Notice of Seizure to Objector dated 30 December 2008 reference N0089236, be forfeited to the Commonwealth;
(d)the first respondent pay to the applicant damages in the amount of $10 for the first respondent’s infringement of Registered Trade Mark No 951664 being the letters “ghd”.
2.The first respondent pay the applicant’s costs of and incidental to these proceedings, including all reserved costs and the costs of this motion, fixed in the amount of $8,500.
I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier. Associate:
Dated: 19 April 2010
0
0
0