Jemella Australia Pty Ltd v Daizli
[2009] FCA 1566
•18 DECEMBER 2009
FEDERAL COURT OF AUSTRALIA
Jemella Australia Pty Ltd v Daizli [2009] FCA 1566
INTELLECTUAL PROPERTY – consideration of an application for an ex parte injunction restraining the respondents from infringing the applicant’s trade mark – consideration of an interlocutory order directed to the Chief Executive Officer of the Australian Customs Service that seized articles not be released to the respondents
Trade Marks Act 1995 (Cth), ss 136, 137
Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 - cited
JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138) v SARA DAIZLI, GABBY DAIZLI and JEMELLA GROUP LIMITED
QUD 280 of 2009
GREENWOOD J
18 DECEMBER 2009
BRISBANE
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 280 of 2009
BETWEEN: JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138)
ApplicantAND: SARA DAIZLI
First RespondentGABBY DAIZLI
Second RespondentJEMELLA GROUP LIMITED
Third Respondent
JUDGE:
GREENWOOD J
DATE OF ORDER:
18 DECEMBER 2009
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.Orders of the Court will be made in terms of the draft orders as initialled by Justice Greenwood and to be entered in the Registry by the applicant.
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 Court Search on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 280 of 2009
BETWEEN: JEMELLA AUSTRALIA PTY LTD (ACN 104 455 138)
ApplicantAND: SARA DAIZLI
First RespondentGABBY DAIZLI
Second RespondentJEMELLA GROUP LIMITED
Third Respondent
JUDGE:
GREENWOOD J
DATE:
18 DECEMBER 2009
PLACE:
BRISBANE
EX TEMPORE REASONS FOR JUDGMENT
This is an application for interlocutory orders as framed in an application filed by the applicant on 20 November 2009. In the principal proceeding, the applicant seeks injunctions restraining the first and second respondents from importing, promoting, distributing, advertising or otherwise offering for sale counterfeit hairstyling products bearing the mark GHD or, alternatively, marks described as “GHD Styler” or “GHD”, or any other style which would constitute an infringement of the registered trade mark 951664 registered in respect of the letters GHD for the articles the subject of the proceeding.
In addition to injunctions restraining the first and second respondents in those terms, the applicant seeks delivery up for destruction of infringing articles, damages or, alternatively, at its election, account of profits, interest and other related orders consistent with the principal relief.
Apart from the final relief as just described, the applicant seeks interlocutory injunctions restraining the first and second respondents from engaging in the same conduct pending the trial of the action. The interlocutory orders, as framed, would also, in effect, run until earlier order made by the court. The remaining interlocutory orders are orders directed to the Chief Executive Officer of the Australian Customs Service pursuant to the provisions of the Trade Marks Act and, in particular, section 137(5) which provides that, if after 20 working days from the day on which the action was commenced (in this case, 20 November 2009), there is not in force at any time an order of the court directed to the Customs CEO preventing the goods from being released, the Customs CEO must release the goods to the designated owner.
The elements of the cause of action alleged against the first and second respondents are the subject of an affidavit from Ms Kelly Maree Gardner sworn 24 November 2009. The events giving rise to the controversy between the applicant and these respondents essentially arises out of three Notices of Seizure to Objector, which were issued by the Australian Customs Service to the applicant. The first was on 19 October 2009 and two others were issued on 20 October 2009. Each of them bears a designation number, the first of which is DGMS N0090959CL. The other two bear numbers N0091060PJ and N0090788PJ, which identify the particular articles the subject of the proceedings.
Ms Gardner deposes in her affidavit to her role as a brand protection officer for the applicant and, at paragraph 3, gives evidence of her experience in the identification of counterfeit GHD irons and/or other stylers. Ms Gardner says that she is able to identify the counterfeit nature of such a product, either from pictures she examines, a review of the actual product or written descriptions of the product in the relevant case.
At paragraph 22 of the affidavit, Ms Gardner says that she has reviewed photographs of the seized items the subject of the three notices I have just described by reference to the identification numbers above. Those photographs were provided to Ms Gardner by the Australian Customs Service. Ms Gardner says that, by reference to those photographs, she immediately identified the seized items as counterfeit. She says that the easiest way of identifying the counterfeits is the verification code on the inside arm of the iron which has been photographed by Customs. Ms Gardner then describes, in a little detail, the verification codes depicted in the photographs which informs her conclusion that each of the articles the subject of the photographs are counterfeit articles.
I am satisfied that, having regard to the affidavit of Ms Gardner, the applicant has made out a prima facie case of infringement of the trade mark in relation to articles which are not of the manufacture of the applicant or its parent, for the purposes of Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 per Gleeson CJ and Crennan J at [19] and Gummow and Hayne JJ at [65] to [72].
A further question arises in relation to the specific elements of section 136 of the Trade Marks Act 1995 (Cth) which provides that the Customs CEO must release the seized goods to their designated owner if, within the action period, Jemella has not brought an action for infringement of the notified trade mark in respect of the goods, and given to the customs CEO notice in writing of the action.
The action period relevantly expired in respect of the first notice on 20 November 2009 and in respect of the second and third notices on 23 November 2009. The action was commenced on 20 November 2009 for infringement of the notified trade mark in respect of all of the goods.
Mr Fox has appeared today on behalf of Jemella. He has given an undertaking to file an affidavit which will annex a copy of an email tendered to the court in relation to this very question. Mr Fox’s email of Friday, 20 November 2009 at 4.09 pm, directed to officers of the Australian Customs Service, gives notice that Jemella has commenced the proceedings in question and the email attaches a letter confirmatory of that matter as well. Therefore, I am satisfied that s 136 of the Trade Marks Act has been met.
That question is material to whether or not the court ought to make an order under s 137(5) directed to the CEO of the Australian Customs Service as sought in the interlocutory application. If, of course, the applicant had not given notice within the action period, then the CEO of the Australian Customs Service would be under a statutory obligation to release the goods and a question would arise as to whether an order ought to be made s 137(5) in all the circumstances. The position here is that notice has been given and those elements have been satisfied.
The further matter is that there is a supplementary affidavit by Ms Gardner which goes to attempts to serve documents on the respondents. This application is an ex parte application. The report as to service identifies aspects of the attempts to serve the respondents with the Court papers. The service report contains material which suggests that the first respondent is, and will be, out of the jurisdiction for approximately three to four months. Nevertheless, the applicant proposes to continue to attempt to effect service of the papers on the respondents. The proposed orders contemplate that if any notice of motion is to be brought on which would arise in circumstances where the applicant has been able to find and serve the first and second respondents with the Court papers, such a motion would also be brought on, on the review date.
On the footing that the first respondent is likely to be out of the jurisdiction for some time, it seems to me that the appropriate course is to re-list the matter for directions at 9.30 am on 20 January 2009 so the court might be informed about the status of the matter generally, and information will then be forthcoming about whether a notice of motion is to be heard and determined in relation to the matter more generally and if so, when.
The background circumstances relating the trade mark and a copy of the trade mark certificate and the matters relating to the verification code, analysis of counterfeit articles and, in particular, the virtue of the authentic article that it meets all electricity safety approvals and is thus safe for the use for which it is intended, is deposed to in the affidavit of Mr Anthony Grigson sworn 23 November 2009.
Having regard to all of these matters, then, I propose to make orders in terms of the draft orders which provide for liberty to apply on three days’ notice in the event that service is effected upon the respondents, and they seek to discharge the interlocutory injunction for any reason. I will make orders in terms of the draft as initialled by me, subject to the amendment to order 7, adding the directions date of 9.30, 20 January 2010.
There is one further matter that should be mentioned and that goes to a further affidavit of Ms Gardner. Ms Gardner filed an affidavit sworn 24 November 2009, in which she deposes to her search of eBay, which is part of her standard protocol for seeking to isolate and identify counterfeit articles. In this affidavit Ms Gardner says that on 14 September 2009, the applicant reported to eBay a listing for user name, “gabbyandsara44”.
The applicant then obtained copies of the eBay listing which provided information as to the seller’s list of items for sale and the seller’s items sold in the last 15 days. Ms Gardner says that eBay suspended the listing and provided the third respondent, who is Jemella Group Limited, with information relating to eBay user, “gabbyandsara44”. That information identified the user as “Gabby Daizli of 12 Tantangara Street, Miller, New South Wales, 2170”, at an email address of [email protected] with a telephone number. The material suggests that the first and second respondents are seeking to sell GHD-designated articles on eBay which the applicant contends are not authentic articles. A copy of the eBay entry is attached to the affidavit.
I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate:
Dated: 18 December 2009
Counsel for the Applicant: Not represented by Counsel Solicitor for the Applicant: The Applicant was represented by its internal corporate solicitor, Mr L Fox Counsel for the Respondents: The application was ex parte Solicitor for the Respondents: The application was ex parte
Date of Hearing: 18 December 2009 Date of Judgment: 18 December 2009
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