Jemella Australia Pty Ltd v Boutcher
[2009] FCA 376
•17 April 2009
FEDERAL COURT OF AUSTRALIA
Jemella Australia Pty Ltd v Boutcher [2009] FCA 376
INTELLECTUAL PROPERTY – trade marks – counterfeit items – importation – held infringement
PRACTICE AND PROCEDURE – default on appearance by respondent – where respondent has filed defence and evidence in support – whether appropriate to order judgment in default or proceed to trial – applicant’s election to lead evidence on the trial held to be preferable course
Trade Marks Act 1995 (Cth) ss 133, 137, 139
Federal Court Rules O 35A r 2(2)(h)JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138) v LIANE CHERIE BOUTCHER and JEMELLA LIMITED
QUD306 of 2008
LOGAN J
17 APRIL 2009
BRISBANE
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
QUD306 of 2008
BETWEEN: JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138)
ApplicantAND: LIANE CHERIE BOUTCHER
First RespondentJEMELLA LIMITED
Second Respondent
JUDGE:
LOGAN J
DATE OF ORDER:
17 APRIL 2009
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.The First Respondent be restrained pursuant to s 126 of the Trade Marks Act 1995 (Cth), whether by herself, her 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”.
2.The consignment consisting of four (4) hairstyling products described as “GHD branded hair straighteners”, seized pursuant to s 133 of the Trade Marks Act 1995 (Cth) on 18 August 2008, which goods are referred to in the Notice of Seizure to Objector dated 18 August 2008 addressed to "Miss Cherie", be forfeited to the Commonwealth.
3.The First Respondent pay the Applicant’s costs of the proceedings fixed in the amount of $8,000.
AND THE COURT DIRECTS THAT:
4.The Applicant serve a copy of this Order on the First Respondent by ordinary prepaid post at the address given by the First Respondent for service.
5.The parties have liberty to apply within fourteen (14) days in respect of the order for costs.
6.The judgment in respect of costs not be entered for fourteen (14) days after the date of this Order and in default of any submissions within fourteen (14) days the judgment in respect of costs be entered.
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 eSearch on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
QUD306 of 2008
BETWEEN: JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138)
ApplicantAND: LIANE CHERIE BOUTCHER
First RespondentJEMELLA LIMITED
Second Respondent
JUDGE:
LOGAN J
DATE:
17 APRIL 2009
PLACE:
BRISBANE
REASONS FOR JUDGMENT
Jemella Australia Pty Ltd (hereafter Jemella Australia), has instituted proceedings in respect of what it alleges to be an infringement of a registered Australian trademark, being trademark registration number 951664. The trademark comprises the letters GHD. The owner of that trademark is a company incorporated in the United Kingdom, Jemella Limited, (hereafter Jemella UK). Jemella UK is the parent company of Jemella Australia. It has authorised Jemella Australia to use the GHD mark relevantly in Australia. Jemella UK has necessarily been joined to the proceedings. Its stance, though, unsurprisingly, is to support their institution and the seeking of the relief claimed by Jemella Australia.
The substantive Respondent is a lady who resides in Victoria, Ms Liane Cherie Boutcher. Ms Boutcher was served with the originating application and has appeared on occasion, although not on every occasion, that a directions hearing has been held in the case. She has been permitted to appear by telephone. There is a convenience associated with the adoption of that course so far as Ms Boutcher is concerned, although my experience of the use of telephone directions hearings in this case with Ms Boutcher is that it can have the disadvantage of not bringing home to a respondent litigant in person the responsibilities entailed in litigation in a court.
Be this as it may, at the last directions hearing at which Ms Boutcher did attend by telephone, I fixed today as the date for the trial of this case. That seemed to me to be the more convenient course to take, rather than to continue to deal with a difficulty in relation to her compliance with an order for discovery. As events transpired today, when the case was called on for hearing, Ms Boutcher did not appear. The absence of an appearance on her part at the date fixed for trial was, strictly speaking, an event of default in terms of O 35A r 2(2)(h).
Jemella Australia adopted the course of proceeding to lead evidence on the trial rather than seeking to have judgment entered in default. In the circumstances of this particular case, that seems to me to have been the prudent and just course to take. I make that observation because there is a defence on file and also what at least purports to be an affidavit from Ms Boutcher as to, inter alia, the merits of the case. Jemella Australia had given to Ms Boutcher a notice to attend for cross-examination. It was envisaged on behalf of Jemella Australia’s legal representative that she would be cross-examined on the trial on her affidavit.
The issue which falls for determination in respect of the case is, firstly, whether or not the applicant is indeed a person entitled to bring this proceeding in respect of a registered trademark. The evidence before me is quite clear in its establishing that the mark to which I have referred does appear on the Register of Trade Marks under the Trade Marks Act 1995 (Cth) (Trade Marks Act) and, further, that the holder of that trademark has granted to Jemella Australia a licence and has authorised it to bring the present proceedings.
The question then becomes whether or not there has been an importation which infringes that particular mark? Part 13 of the Trade Marks Act is directed to the subject of the importation of goods infringing Australian trademarks. It makes provision for the seizure of goods, which an objector notifies to the Australian Customs Service by the Customs, upon their being landed in Australia. It then confers a cause of action which can lead to the forfeiture of goods at the behest of the objector. In addition, in that infringement proceeding an applicant may, in the ordinary way, additionally claim damages or an account for profits and injunctive relief. That is what has occurred in terms of the application brought by Jemella Australia.
I was informed when the case was called on for trial in Jemella Australia’s opening that it was not desired on its part to press for either an account for profits or for damages. Further, rather than seek an order that the goods be released to it, Jemella Australia’s claim was that the goods should be forfeited to the Commonwealth as s 139 and s 137 envisage.
On 12 December 2008, Ms Boutcher filed what purported to be a defence. The bulk of that document was, in a technical sense, frivolous in that it provided for what were not truly defences and, for that matter, was cast in terms which one might regard as either scandalous or irrelevant. I struck out those portions. What was left was a bare denial by her of the claims made by Jemella Australia.
The evidence from Jemella Australia establishes that there were four hair stylers landed in Australia. I am quite satisfied, on the evidence, that the person who sought to import the stylers was Ms Boutcher. Indeed, she effectively admits as much in an affidavit which was filed on 9 October 2008.
An affidavit of Kelly Maree Gardner filed on 26 September 2008 contains as exhibits photographs of the hair stylers as landed. One sees reproduced there, inter alia, an alphanumeric code. Jemella Australia’s evidence is that the code as reproduced in evidence on the four stylers imported is not a genuine code. I am satisfied on the evidence that the four hair stylers in question are counterfeit. By that, I mean that they have not been manufactured by or on behalf of either the applicant, Jemella Australia, or, for that matter, its parent company, Jemella UK.
A question then arises as to whether or not the importation, or strictly the attempted importation, constitutes an infringement?
Ms Boutcher’s affidavit filed on 9 October 2008 contains some material which I regarded as irrelevant and of a nature such that it ought not to be able to be searched on the court file without the leave of the court or a judge. Apart from that, it does, though, contain an account by her of her reasons for seeking to import the four stylers in question. Mr Fox, who appeared for Jemella Australia, quite properly drew my attention to those parts of that affidavit. In the affidavit Ms Boutcher deposes in that regard:
I have purchased the four hair straightening irons for personal use only. I, Liane Cherie Boutcher, have bought four due to the fact I have my own home, my mother’s home and my father’s home that I have bought one for, and, as I am a model and a hairdresser and have school and other obligations to attend to on a regular basis, I have purchased an extra hair straightening iron to keep in my car in case of an “emergency”. Also please observe that I have purchased four different colours and styles of the GHD hair straightening iron for “fun” [sic].
Ms Gardner, who is the occupant of a position known as “brand protection officer” with Jemella Australia, has taken, as one might expect from her position, some interest in internet sites in which one finds advertisements for GHD products for sale. She reviews such sites regularly. The course of her review has disclosed that there are two types of site to be found on the net:
(a) what she describes as trades websites, and she gives examples of these; and
(b) what she describes as retail websites, and, again, she gives examples of these;
each of these being sites which advertise what she knows from her corporate knowledge to be solely counterfeit GHD products. Her experience with what she terms “retail websites” is that they do not have a minimum quantity which must be purchased. With what she has termed “trade websites”, these usually also do not provide for a minimum order, but where they do, the minimum order is usually 10. She states that she has not viewed any advertisement on a trade website which specifies a minimum of four. Her experience is also that a supplier is often prepared to what she terms “drop ship” counterfeit products; in other words, send a single unit direct to a customer’s address. There is also evidence before me that, in the ordinary course, one way in which genuine GHD hairstyling products are marketed is via hairdressers.
I have not had the benefit of seeing Ms Boutcher so as to form an assessment, on that basis, of her credibility. It does seem to me somewhat unlikely that four products would be purchased for the reasons that she gives; unlikely, but not impossible. I note that she gives her occupation as both model as well as hairdresser. The latter, of course, does raise a concern in terms of an ability, at least inferentially, to offer counterfeit hairstyling irons to customers.
Jemella Australia is not obliged to prove an infringement to demonstration; only on the balance of probabilities. At first blush, an importation of four does seem to be rather more than one might readily regard as a purchase for personal use. Further, at first blush, it does seem to be a little unlikely that one would have four items placed at the locations which Ms Boutcher mentions in her affidavit. The hairstyler in question, as the photographs make evident, is not a large item. It seems to be one which is, and is designed to be, readily portable.
On the balance of probabilities, I am satisfied that the stylers which were seized by the Customs were not items intended for personal use. As I say, the question is one where, with the benefit of seeing Ms Boutcher, and perhaps hearing her enlarge upon her reasons in cross-examination, a different view may have been open. She has, though, for reasons which doubtless seemed good to her, chosen not to attend at the date fixed for trial. In so doing, she has necessarily deprived me, as trial judge, of the benefit of the elaboration that she might have been able to provide in cross-examination. Her absence from court does not, in any way, prove Jemella Australia’s case. All it means is that inferences which arise on the face of the evidence adduced by Jemella Australia - first blush impressions, as I have termed them - are not challenged by any further evidence from her.
That being so, it becomes unnecessary to consider a further submission which was made in the alternative on behalf of Jemella Australia, that an infringement might nonetheless arise for the purposes of Pt 13 of the Act, at least, even if the goods concerned were imported for personal use. As, on the facts I have found, that is an academic question. It is preferable that I do not express an opinion as to the merits of that particular question.
It would seem, having regard to the factual findings that I have made, desirable also to grant to Jemella Australia the injunctive relief that it seeks in relation to any further dealings by Ms Boutcher in relation to products which would infringe the mark.
Jemella Australia has, then, established a case entitling it to an order that the goods be forfeited to the Commonwealth, and, further, for injunctive relief.
After I had delivered judgment, Mr Fox, on behalf of Jemella Australia, sought that I fix costs in an amount in the order of $13,000. Notice had not been given to Ms Boutcher of the intention on behalf of Jemella Australia to seek costs in that amount and, in so doing, to provide her in advance with an assessment of those costs, along with a short-form bill. I indicated to Mr Fox that I considered that the requirements of procedural fairness in relation to costs were such that I should not proceed to allow costs in that particular amount without extending an opportunity to Ms Boutcher to be heard about the adoption of that course.
At an earlier stage in the proceedings, and at a time when Jemella Australia envisaged that it would seek a default judgment, an affidavit of Kelly Maree Gardner was filed on 12 March 2009. That affidavit, at some length, set out a rationale, and it must be said it is a compelling rationale, why costs in the amount of $8000, as at that stage of proceedings, ought to have been allowed to Jemella Australia. That particular affidavit was served upon Ms Boutcher. Since then, in the ordinary course of events, other costs, on a party and party basis, must necessarily have been incurred by Jemella Australia.
Again, in the ordinary course of events, the way in which the cost discretion would fall for exercise in this case, having regard to its disposition, is that Ms Boutcher would have to pay the costs. I can see nothing in the conduct of proceedings on behalf of Jemella Australia that would deprive it of an entitlement to its costs on a party and party basis. So the only question, effectively, would become whether or not costs ought to be fixed or taxed.
Having regard to the episodic engagement by Ms Boutcher with these proceedings, it seems to me that to order the taxation of costs would be to impose an unnecessary burden both on Jemella Australia as well as, it must be said, Ms Boutcher. I say “unnecessary” because it seems to me that, on any view, a taxing officer would necessarily allow at least the sum of $8000 on a party and party basis in respect of the costs incurred by Jemella Australia up to and including trial. The rationale set out in the affidavit of Ms Gardner filed on 12 March is eloquent in that regard.
That being so, it seems to me that the just course to take in this instance is to fix costs in the amount of $8000, to grant liberty to apply within fourteen (14) days of today’s date in respect the order for costs, to direct that the judgment not be entered for a period of fourteen (14) days insofar as it relates to costs, and that, in default of any submission within fourteen (14) days, the judgment in respect of costs fixed in the sum of $8000 to be entered. I further direct that a copy of the orders made today be served on Ms Boutcher by prepaid post at the address which she has given for service.
As to substantive orders, the orders that I make are:
1.Pursuant to s 126 of the Trade Marks Act, the First Respondent, whether by herself, her servants, agents, or otherwise howsoever, be restrained from importing, promoting, distributing, advertising, offering for sale, displaying or otherwise using counterfeit hairstyling products bearing the marking “GHD hairstyling iron,” “GHD hairstyler,” or “GHD,” or otherwise infringing registered trademark numbered 951664, being the letters “GHD.”
2.I further order that the goods, being four hairstyling irons described as “GHD branded hair straighteners” seized pursuant to s 133 of the Trade Marks Act on 18 August 2008, as described in the notice of seizure to objector of that date, be forfeited to the Commonwealth.
I will direct that the applicant bring in short minutes to reflect the orders made today.
I certify that the preceding twenty-six (26) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Logan. Associate:
Dated: 22 April 2009
Solicitor for the Applicant: Mr L Fox (In-house Solicitor for the Applicant) Solicitor for the First Respondent: There was no appearance by the First Respondent
Date of Hearing: 17 April 2009 Date of Judgment: 17 April 2009
0
0
0