Jemella Australia Pty Ltd v M Style Plus Pty Ltd

[2007] FCA 347

FEDERAL COURT OF AUSTRALIA

Jemella Australia Pty Ltd v M Style Plus Pty Ltd [2007] FCA 347

SEARCH ORDER - alleged counterfeit products - whether prima facie case of breach of trade mark - potential for actual loss or damage - whether there is a real possibility that the respondents will destroy the incriminating products

Held: Search order granted.

Federal Court Rules O 25B

EFG Australia Ltd v Kennedy (unreported, NSESC, Bryson J, 2 August 1995) cited

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 v M STYLE PLUS PTY LTD ACN 117 201 975, NIVINE DODAR, MOHAMAD MOHANNA AND JEMELLA LIMITED
QUD81 OF 2007

COLLIER J
9 MARCH 2007
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD81 OF 2007

BETWEEN:

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138
Applicant

AND:

M STYLE PLUS PTY LTD ACN 117 201 975
First Respondent

NIVINE DODAR
Second Respondent

MOHAMAD MOHANNA
Third Respondent

JEMELLA LIMITED
Fourth Respondent

JUDGE:	COLLIER J
DATE OF ORDER:	9 MARCH 2007
WHERE MADE:	BRISBANE

Upon the undertakings given to the Court by the applicant, the applicant’s solicitor, the independent solicitors and the independent computer experts that are contained in Schedule B to the annexed draft search order,

THE COURT ORDERS THAT:

SEARCH ORDER
Penal Notice

TO:                 M STYLE PLUS PTY LTD ACN 117 201 975
AND TO:        NIVINE DODAR
AND TO:        MOHAMAD MOHANNA
If you (being the persons bound by the Order):

(a)refuse or neglect to do any act within the time specified in the Order for the doing of the act; or

(b)disobey the Order by doing an act which the Order requires you to abstain from doing,

you will be liable to imprisonment, sequestration of property or other punishment.
Any other person who knows of this Order and does anything which helps or permits you to breach the terms of this Order may be similarly punished.

TO:                 M STYLE PLUS PTY LTD (ACN 117 201 975)
AND TO:        NIVINE DODAR
AND TO:        MOHAMAD MOHANNA
This is a ‘search order’ made against you on 9 March 2007 by Justice Collier at a hearing without notice to you after the Court was given the undertakings set out in Schedule B to this Order and after the Court read the affidavits listed in Schedule C to this Order.

THE COURT ORDERS:
Introduction

1.        (a)       the application for this Order is made returnable immediately;

(b)the time for service of the application, supporting affidavits and originating process is abridged and service is to be effected by 14 March 2007.

2.Subject to the next paragraph, this Order has effect up to and including 23 March 2007, (“the Return Date”). On the Return Date at 10.15 am, there will be a further hearing in respect of this Order before Justice Collier.

3.You may apply to the Court at any time to vary or discharge this Order; including, if necessary, by telephone to the Judge referred to in the immediately preceding paragraph (phone [phone]) or to the Duty Judge (phone [phone]).

4.This Order may be served only between 9.00 am and 2.00 pm on a business day.

5.        In this Order:

(a)‘applicant’ means the person who applied for this Order;

(b)‘independent computer expert’ means the person identified as the independent computer expert in the search party referred to in Schedule A to this Order;

(c)‘independent solicitor’ means the person identified as the independent solicitor in the search party referred to in Schedule A to this Order;

(d)       ‘listed thing’ means any thing referred to in Schedule A to this Order;

(e)‘premises’ means the premises and any of the premises identified in Schedule A to this Order, including any vehicles and vessels that are under the respondents’ control on or about the premises or that are otherwise identified in Schedule A;

(f)‘search party’ means the persons identified or described as constituting the search party in Schedule A to this Order;

(g)       ‘thing’ includes a document;

(h)‘you’, where there is more than one of you, includes all of you and includes you if you are a corporation;

(i)        any requirement that something be done in your presence means:

(A)in the presence of you or of one of the persons described in (6) below; or

(B)if there is more than one of you, in the presence of each of you, or, in relation to each of you, in the presence of one of the persons described in (6) below.

6.        This Order must be complied with by you by:

(a)       yourself; or
(b)       any director, officer, partner, employee or agent of yourself; or
(c)       any other person having responsible control of the premises.

7.This Order must be served by, and be executed under the supervision of, the independent solicitor.

ENTRY, SEARCH AND REMOVAL

8.Subject to paragraphs 10 to 20 below, upon service of this Order, you must permit members of the search party to enter the premises so that they can carry out the search and other activities referred to in this Order.

9.Having permitted members of the search party to enter the premises, you must:

(a)permit them to leave and re-enter the premises on the same and the following day until the search and other activities referred to in this Order are complete;

(b)permit them to search for and inspect the listed things and to make or obtain a copy, photograph, film, sample, test or other record of the listed things;

(c)disclose to them the whereabouts of all the listed things in the respondent’s possession, custody or power, whether at the premises or otherwise;

(d)disclose to them the whereabouts of all computers, computer disks and electronic information storage devices or systems at the premises in which any documents among the listed things are or may be stored, located or recorded and cause and permit those documents to be printed out;

(e)do all things necessary to enable them to access the listed things, including opening or providing keys to locks and enabling them to access and operate computers and providing them with all necessary passwords;

(f)permit the independent solicitor to remove from the premises into the independent solicitor’s custody:

(i)the listed things or things which reasonably appear to the independent solicitor to be the listed things and any things the subject of dispute as to whether they are listed things; and

(ii)the copies, photographs, films, samples, tests, other records and printed out documents referred to above; and

(g)permit the independent computer expert (if there is one) to search any computer and make a copy or digital copy of any computer hard drive and permit the independent computer expert (if any) or the independent solicitor to remove any computer hard drive and computer from the premises as set out in paragraphs 20 and 21 below.

RESTRICTIONS ON ENTRY, SEARCH AND REMOVAL

10.This Order may not be executed at the same time as a search warrant (or similar process) is executed by the Police or by a regulatory authority.

11.      You are not required to permit anyone to enter the premises until:

(a)the independent solicitor serves you with copies of this Order and any affidavits referred to in Schedule C (confidential exhibits, if any, need not be served until further Order of the Court); and

(b)you are given an opportunity to read this Order and, if you so request, the independent solicitor explains the terms of this Order to you.

12.Before permitting entry to the premises by anyone other than the independent solicitor, you, for a time (not exceeding two hours from the time of service or such longer period as the independent solicitor may permit):

(a)       may seek legal advice;
(b)       may ask the Court to vary or discharge this Order;

(c)(provided you are not a corporation) may gather together any things which you believe may tend to incriminate you or make you liable to a civil penalty and hand them to the independent solicitor in (if you wish) a sealed envelope or container; and

(d)may gather together any documents that passed between you and your lawyers for the purpose of obtaining legal advice or that are otherwise subject to legal professional privilege or client legal privilege, and hand them to the independent solicitor in (if you wish) a sealed envelope or container.

13.Subject to paragraph 22 below, the independent solicitor must not inspect or permit to be inspected by anyone, including the applicant and the applicant’s solicitors, any thing handed to the independent solicitor in accordance with subparagraphs 12(c) and (d) above and the independent solicitor must deliver it to the Court at or prior to the hearing on the Return Date.

14.During any period referred to in paragraph 12 above, you must:

(a)inform and keep the independent solicitor informed of the steps being taken;

(b)permit the independent solicitor to enter the premises but not to start the search;

(c)not disturb or remove any listed things; and

(d)comply with the terms of paragraphs 25 and 26 below.

15.Any thing the subject of a dispute as to whether it is a listed thing must promptly be handed by you to the independent solicitor for safekeeping pending resolution of the dispute or further Order of the Court.

16.Before removing any listed things from the premises (other than things referred to in the immediately preceding paragraph), the independent solicitor must supply a list of them to you, give you a reasonable time to check the correctness of the list, and give you and the applicant’s solicitors a copy of the list signed by the independent solicitor.

17.The premises must not be searched, and things must not be removed from the premises, except in the presence of you or of a person who appears to the independent solicitor to be your director, officer, partner, employee, agent or other person acting on your behalf or on your instructions.

18.If the independent solicitor is satisfied that full compliance with the immediately preceding paragraph is not reasonably practicable, the independent solicitor may permit the search to proceed and the listed things to be removed without full compliance.

19.The applicant’s solicitors and the independent solicitor must not allow the applicant in person to inspect or have copies of any thing removed from the premises nor communicate to the applicant information about its contents or about anything observed at the premises until 4:30 pm on the return date or other time fixed by further Order of the Court.

COMPUTERS

20.(a)       If it is expected that a computer will be searched, the search party must include a computer expert who is independent of the applicant and of the applicant’s solicitors (“the independent computer expert”).

(b)Any search of a computer must be carried out only by the independent computer expert.

(c)The independent computer expert may make a copy or digital copy of the computer hard drive and remove that copy or digital copy from the premises.

(d)The independent computer expert may search the computer or the copy or digital copy of the computer hard drive at the premises and/or away from the premises for listed things and may copy the listed things electronically or in hard copy or both.

(e)The independent computer expert must as soon as practicable and, in any event, prior to the hearing on the Return Date, deliver the copy or digital copy of the computer hard drive and all electronic and hard copies of listed things to the independent solicitor, together with a report of what the independent computer expert has done including a list of such electronic and hard copies.

(f)The independent solicitor must, at or prior to the hearing on the Return Date, deliver to the Court all things received from the independent computer expert and serve a copy of the latter’s report on the parties.

(g)If no independent computer expert has been appointed, but the independent solicitor considers it necessary to remove a computer from the premises for safekeeping or for the purpose of copying its contents electronically and printing out information in documentary form, the independent solicitor may remove the computer from the premises for that purpose and cause that purpose to be achieved.

21.(a)       Unless you are a corporation, you are entitled to object to paragraphs 20(b) to (f) on the ground that they might tend to incriminate you or make you liable to a civil penalty.

(b)You are also entitled to object to paragraphs 20(b) to (f) on the ground that the computer contains material that is otherwise privileged.

(c)Upon communicating any objection under paragraphs (a) or (b) to the independent solicitor, paragraphs 20(b) to (f) become inoperative to the extent that you have objected to them. In that event, if the applicant’s solicitor communicates to the independent solicitor that the applicant proposes to contest the objection:

(i)the independent computer expert shall remove the computer hard drive (or, if that is not practicable, the computer) from the premises and deliver it into the custody of the independent solicitor who shall deliver it to the Court at or prior to the Return Date;

(ii)on the Return Date or on another date, the applicant may apply to the Court for Orders to similar effect as paragraphs 20(b) to (f) and if you object, the Court may adjudicate upon your objection.

INSPECTION

22.Prior to the Return Date, you or your solicitor or representative shall be entitled, in the presence of the independent solicitor, to inspect any thing removed from the premises and to:

(a)       make copies of the same; and

(b)provide the independent solicitor with a signed list of things which are claimed to be privileged or confidential and which you claim ought not to be inspected by the applicant.

PROVISION OF INFORMATION

23.      Subject to paragraph 24 below, you must:

(a)at or before the further hearing on the Return Date (or within such further time as the Court may allow) to the best of your ability inform the applicant in writing as to:

(i)        the location of the listed things;

(ii)the name and address of everyone who has supplied you, or offered to supply you, with any listed thing;

(iii)the name and address of every person to whom you have supplied, or offered to supply, any listed thing; and

(iv)details of the dates and quantities of every such supply and offer;

(b)within five working days after being served with this Order, make and serve on the applicant an affidavit setting out the above information.

24.(a)       this paragraph 24 applies if you are not a corporation and you wish to object that compliance with paragraph 23 may tend to incriminate you or make you liable to a civil penalty;

(b)this paragraph 24 also applies if you are a corporation and all of the persons who are able to comply with paragraph 23 on your behalf and with whom you have been able to communicate, wish to object that compliance may tend to incriminate them or make them liable to a civil penalty;

(c)you must, at or before the further hearing on the Return Date (or within such further time as the Court may allow), notify the applicant in writing that you or all the persons referred to in (b) wish to take such objection and identify the extent of the objection;

(d)if you give such notice, you need comply with paragraph 23 only to the extent, if any, that it is possible to do so without disclosure of the material in respect of which the objection is taken;

(e)if you give such notice, the Court may give directions as to the filing and service of affidavits setting out such matters as you or the persons referred to in (b) wish to place before the Court in support of the objection.

PROHIBITED ACTS

25.Except for the sole purpose of obtaining legal advice, you must not, until 4:30 pm on the Return Date, directly or indirectly inform any person of this proceeding or of the contents of this Order, or tell any person that a proceeding has been or may be brought against you by the applicant.

26.Until 4:30 pm on the Return Date, you must not destroy, tamper with, cancel or part with possession, power, custody or control of the listed things otherwise than in accordance with the terms of this Order or further Order of the Court.

COSTS

27.The costs of this application are reserved to the Judge hearing the Application on the Return Date.

SCHEDULE A

Premises
The premises located at:

(i)Shop 235, Westfield Shopping Centre, Burwood, NSW;

(ii)Shop 4014, Westfield Shopping Centre, Bondi Junction, NSW;

(iii)Shop 345, Westfield Shopping Centre, East Gardens, NSW; and

(iv)112 Chapel Street, Kingsgrove, NSW.

Listed Things

1.All counterfeit hairstyling products bearing the marking “GHD Hairstyling Iron” or “GHD” whatsoever; and

2.All documents, including:

(i)any paper or other material on which there is writing; and

(ii)any paper or other material on which there are marks, figures, symbols or perforations having a meaning for a person qualified to interpret them; and

(iii)any disc, tape, computer or other article or any material from which sounds, images, writings or messages are capable of being produced or reproduced (with or without the aid of another article or device),

relating to the importation, supply, distribution and sale of the counterfeit hairstyling products bearing the marking “GHD Hairstyling Iron” or “GHD” whatsoever.

Search Party
For Shop 235, Westfield Shopping Centre, Burwood, NSW

1.        The independent solicitor:

Michael Deacon
Solicitor
Shelston IP Lawyers
Level 21, 60 Margaret Street
SYDNEY  NSW  2000

2.        The applicant’s solicitor or solicitors:

Benjamin Roland Wetzig
Solicitor
FOX LAWYERS
Level 10, 141 Queen Street
BRISBANE  Q  4000

3.        Other members of the search party:

(a)Matthew Gaweda of Forensic Data, 1/83 York Street, Sydney, New South Wales, in the capacity of independent computer expert.

For Shop 4014, Westfield Shopping Centre, Bondi Junction, NSW

4.        The independent solicitor:

Rebekah Gay
Partner
Shelston IP Lawyers
Level 21, 60 Margaret Street
SYDNEY  NSW  2000

5.        The applicant’s solicitor or solicitors:

Luke William Fox
Solicitor
FOX LAWYERS
Level 10, 141 Queen Street
BRISBANE  Q  4000

6.Other members of the search party:

(a)Mitchell Bezzina of Forensic Data, 1/83 York Street, Sydney, New South Wales, in the capacity of independent computer expert.

For Shop 345, Westfield Shopping Centre, East Gardens, NSW

7.        The independent solicitor:

Thai Loi
Associate
Shelston IP Lawyers
Level 21, 60 Margaret Street
SYDNEY  NSW  2000

8.        The applicant’s solicitor or solicitors:

Taryn Nicole Hartley
Solicitor
FOX LAWYERS
Level 10, 141 Queen Street
BRISBANE  Q  4000

9.Other members of the search party:

(a)Matthew Gaweda of Forensic Data, 1/83 York Street, Sydney, New South Wales, in the capacity of independent computer expert.

For 112 Chapel Street, Kingsgrove, NSW

10.      The independent solicitor:

Linda King
Partner
Shelston IP Lawyers
Level 21, 60 Margaret Street
SYDNEY  NSW  2000

11.      The applicant’s solicitor or solicitors:

Stephen James Fox
Solicitor
FOX LAWYERS
Level 10, 141 Queen Street
BRISBANE  Q  4000

12.Other members of the search party:

(a)Mitchell Bezzina of Forensic Data, 1/83 York Street, Sydney, New South Wales, in the capacity of independent computer expert.

SCHEDULE B
UNDERTAKINGS GIVEN TO THE COURT

Undertakings given to the Court by the applicant

(1)The applicant undertakes to submit to such Order (if any) as the Court may consider to be just for the payment of compensation (to be assessed by the Court or as it may direct) to any person (whether or not a party) affected by the operation of the Order.

(2)The applicant will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.

(3)The applicant will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4:30 pm on the Return Date.

(4)If the applicant has not already done so, as soon as practicable, the applicant will file a Notice of Motion for hearing on the Return Date and an originating process.

(5)The applicant will insure the things removed from the premises against loss or damage for an amount that reasonably appears to the applicant to be their full value.

Undertakings given to the Court by the applicant's solicitor

(1)The applicant’s solicitor will pay the reasonable costs and disbursements of the independent solicitor and of any independent computer expert.

(2)The applicant’s solicitor will provide to the independent solicitor for service on the respondent copies of the following documents:

(a)       this Order;
(b)       the Application for this Order for hearing on the Return Date;

(c)the following material insofar as it was relied on by the applicant at the hearing when the Order was made:

(i)        affidavits (or draft affidavits);

(ii)exhibits capable of being copied (other than confidential exhibits);

(iii)      any written submission; and

(iv)      any other document that was provided to the Court;

(d)a transcript, or, if none is available, a note, of any exclusively oral allegation of fact that was made and of any exclusively oral submission that was put to the Court; and

(e)the originating process, or, if none was filed, any draft originating process produced to the Court.

(3)The applicant’s solicitor will answer to the best of his or her ability any question as to whether a particular thing is a listed thing.

(4)The applicant’s solicitor will use his or her best endeavours to act in conformity with the Order and to ensure that the Order is executed in a courteous and orderly manner and in a manner that minimises disruption to the respondents.

(5)The applicant’s solicitor will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.

(6)The applicant’s solicitor will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4:30 pm on the Return Date.

(7)The applicant’s solicitor will not disclose to the applicant any information that the solicitor acquires during or as a result of execution of the Search Order, without the leave of the Court.

(8)The applicant’s solicitor will use best endeavours to follow all directions of the independent solicitor.

Undertakings given to the Court by the independent solicitor

(1)The independent solicitor will use his or her best endeavours to serve the respondents with this Order and the other documents referred to in undertaking (2) of the above undertakings by the applicant’s solicitor or solicitors.

(2)Before entering the premises, the independent solicitor will:

(a)offer to explain the terms and effect of the Search Order to the person served with the Order and, if the offer is accepted, do so; and

(b)inform the respondents of their rights to take legal advice.

(3)Subject to undertaking (4) below, the independent solicitor will retain custody of all things removed from the premises by the independent solicitor pursuant to this Order until delivery to the Court or further Order of the Court.

(4)At or before the hearing on the Return Date, the independent solicitor will provide a written report on the carrying out of the Order to the Court and provide a copy to the applicant’s solicitors and to the respondents or the respondents’ solicitors. The report will attach a copy of any list made pursuant to the Order and a copy of any report received from an independent computer expert.

(5)The independent solicitor will use best endeavours to ensure that members of the search party act in conformity with the Order and that the Order is executed in a courteous and orderly manner and in a manner that minimises disruption to the respondents, and will give such reasonable directions to other members of the search party as are necessary or convenient for the execution of the Order.

(6)The independent solicitor will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.

(7)The independent solicitor will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4:30 pm on the Return Date.

Undertakings given to the Court by the independent computer expert

(1)The independent computer expert will use his or her best endeavours to act in conformity with the Order and to ensure that the Order, so far as it concerns the independent computer expert, is executed in a courteous and orderly manner and in a manner that minimises disruption to the respondents.

(2)The independent computer expert will not, without leave of the Court, use any information, document or thing obtained as a result of the execution of this Order for the purpose of any civil or criminal proceeding, either within or outside Australia, other than this proceeding.

(3)The independent computer expert will not inform any other person of the existence of this proceeding except for the purposes of this proceeding until after 4:30 pm on the Return Date.

(4)The independent computer expert will use best endeavours to follow all directions of the independent solicitor.

SCHEDULE C
AFFIDAVITS RELIED ON

Name of Deponent

1.        Stephen Gregory Whatling

2.        Kathleen Pincombe

3.        Kylie Oakes

4.        Luke William Fox

5.        Martin Penny

Date affidavit made

1 March 2007
1 March 2007
1 March 2007
1 March 2007
7 March 2007

NAME AND ADDRESS OF APPLICANT'S SOLICITORS

The Applicant’s solicitors are Fox Lawyers, of Level 10, 141 Queen Street, Brisbane Q 4000; and/or GPO Box 2498, Brisbane Q 4001.

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

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD81 OF 2007

BETWEEN:

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138
Applicant

AND:

M STYLE PLUS PTY LTD ACN 117 201 975
First Respondent

NIVINE DODAR
Second Respondent

MOHAMAD MOHANNA
Third Respondent

JEMELLA LIMITED
Fourth Respondent

JUDGE:	COLLIER J
DATE:	9 MARCH 2007
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. The applicant has filed an application with the Federal Court seeking:

   (a) a permanent injunction pursuant to s 126 Trade Marks Act 1995 (Cth) and/or s 87 Trade Practices Act 1974 (Cth) restraining the respondents from distributing, offering for sale, displaying or otherwise exploiting, counterfeit hairstyle products bearing the trade mark “GHD Hairstyling Iron” or “GHD” or otherwise infringing Registered Trade Mark No 951664;

   (b)   interlocutory relief in the form of immediate discovery pursuant to O 15A r 3 and r 6 Federal Court Rules, and an interlocutory injunction; and

   (c)    interim relief pursuant to O 25B Federal Court Rules in the form of a search order requiring the respondent to permit members of the search party to enter the premises so that they may carry out the search.

2. This afternoon the applicant has asked me, ex parte, to grant the interim relief sought in this application by way of search order pursuant to O 25B Federal Court Rules.

3. Order 25B r 2 provides:

   The Court may make an order (a search order), in any proceeding or in anticipation of any proceeding in the Court, with or without notice to the respondent, for the purpose of securing or preserving evidence and requiring a respondent to permit persons to enter premises for the purpose of securing the preservation of evidence which is, or may be, relevant to an issue in the proceeding or anticipated proceeding.

4. Order 25B r 3 provides:

   The Court may make a search order if the Court is satisfied that:

   (a)an applicant seeking the order has a strong prima facie case on an accrued cause of action; and

   (b)the potential or actual loss or damage to the applicant will be serious if the search order is not made; and

   (c)there is sufficient evidence in relation to a respondent that:

   (i)    the respondent possesses important evidentiary material; and

   (ii)   there is a real possibility that the respondent might destroy such material or cause it to be unavailable for use in evidence in a proceeding or anticipated proceeding before the Court.

5. The order sought by the applicant is substantially in the form of Federal Court of Australia Practice Note 24 “Search Orders” issued by the Chief Justice on 5 May 2006.

6. The applicant has filed six affidavits in support of its application. They are:

   (1)   An affidavit of Luke William Fox sworn 1 March 2007, wherein Mr Fox deposes, inter alia, that the applicant commenced proceedings in the Federal Court against a number of persons, unrelated to the present respondents, in relation to the sale of counterfeit hairstyling irons in or about June 2005, and more relevantly in relation to this proceeding, annexing extracts from the database of the Australian Securities and Investments Commission showing the nexus between the first respondent and the second and third respondents;

   (2)   An affidavit of Kylie Oakes sworn 1 March 2007, wherein Ms Oakes deposes, inter alia, that she is the director of a company (trading as Red Bedes) which is the sole distributor of GHD products in New South Wales; that the first respondent is a company managed by the second respondent and of which the third respondent is a director and shareholder, and that the first respondent has purchased GHD products from Red Bedes and also appears to be selling counterfeit GHD hairstyling irons in the knowledge that the counterfeit hairstyling irons are counterfeit.

   (3)   An affidavit of Martin Penny sworn 7 March 2007, wherein Mr Penny deposes, inter alia, that he is a director of Jemella Ltd, which is the registered owner of Trade Mark 951664 for the GHD mark, and that the applicant is authorised to bring an action for infringement of the GHD mark.

   (4)   An affidavit of Stephen Gregory Whatling sworn 1 March 2007, wherein Mr Whatling deposes, inter alia, that he is managing director of the applicant, that a number of faulty hairstyling irons, which are counterfeit GHD hairstyling irons, have been returned by consumers to the applicant in the belief that the hairstyling irons were genuine, and that Mr Whatling understands that the counterfeit hairstyling irons were purchased at hair salons operated by the first respondent.

   (5)   An affidavit of Kathleen Pincombe sworn 1 March 2007, wherein Ms Pincombe deposes, inter alia, that she is an employee of the company trading as Red Bedes, that she attended a number of hair salons operated by the first respondent and saw counterfeit GHD hairstyling irons for sale, and she purchased a counterfeit GHD hairstyling iron at one of those salons.

   (6)   A further affidavit of Luke William Fox sworn 9 March 2007, to which are annexed the consent of an independent solicitor, sworn undertakings of two independent computer experts, and the undertaking of the applicant as to compensation and use of material should the search order be issued.

7. The applicant has produced as exhibits to the affidavit of Mr Whatling examples of genuine black and pink GHD hairstyling irons, and examples of counterfeit black and pink GHD hairstyling irons, all in boxes.

8. I am satisfied that there is a strong prima facie case on an accrued cause of action in respect of what appear to be counterfeited goods that breach Registered Trade Mark No 951664 – which is owned by the fourth respondent but which the applicant is authorised to use – being sold by the first respondent, a company which appears to be under the control of the second and third respondents.

9. Further, I consider that the potential for actual loss or damage to the applicant will be serious if the search order is not made. I note in particular the affidavit of Mr Whatling, who deposes that a number of faulty counterfeit hairstyling irons have been returned to the applicant by consumers under a misapprehension that the products were genuine GHD hairstyling irons, that the counterfeit hairstyling irons do not comply with the stringent quality control which would normally be applied to a genuine GHD product, and that the counterfeit hairstyling irons are of inferior quality by comparison to the genuine GHD hairstyling irons. In my view, it is arguable that an inferior product sold under the brand name of GHD would adversely affect the reputation of the genuine product and brand, the applicant’s goodwill, and the market for the genuine product.

10. Finally, I accept the submissions of Mr O’Brien for the applicant that, given what appear to be the deliberate actions of the first, second and third respondents in selling counterfeit GHD products as well as genuine GHD products, and the active concealment of that conduct as alleged by the applicant, there is a real possibility that the respondents will destroy the incriminating products and documents if the order is not made: EFG Australia Ltd v Kennedy (unreported, NSWSC, Bryson J, 2 August 1995).

11. Accordingly, I am prepared to make the search order in the terms sought by the applicant in the claim for interim relief as set out in the application, subject to the provision of a properly executed undertaking by Mr Wetzig, solicitor for the applicant, and the filing with the Court of undertakings by independent solicitors in New South Wales.

I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier.

Associate:

Dated:        20 March 2007

Counsel for the Applicant:	D O'Brien
Solicitor for the Applicant:	Fox Lawyers
Solicitor for the Respondents:	The First, Second, Third, and Fourth Respondents did not appear
Date of Hearing:	9 March 2007
Date of Judgment:	9 March 2007