Jemella Australia Pty Ltd v Steffensen (No 2)

[2009] FCA 296

FEDERAL COURT OF AUSTRALIA

Jemella Australia Pty Ltd v Steffensen (No 2) [2009] FCA 296

Trade Marks Act 1995 (Cth)

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 v BERNADETTE STEFFENSEN and JEMELLA LIMITED

QUD38 of 2009

LOGAN J
20 MARCH 2009
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD38 of 2009

BETWEEN:

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138
Applicant

AND:

BERNADETTE STEFFENSEN
First Respondent

JEMELLA LIMITED
Second Respondent

JUDGE:	LOGAN J
DATE OF ORDER:	20 MARCH 2009
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1.The First Respondent be permanently restrained pursuant to s 126 of the Trade Marks Act 1995 (Cth), whether by itself, its servants, agents or otherwise howsoever from importing, promoting, distribution, 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 goods the subject of paragraph 2 of the claim for interlocutory relief in the application in proceedings QUD 38 of 2009 be forfeited to the Commonwealth of Australia by consent.

3.Damages for trade mark infringement in the amount of $1.00.

4.The First Respondent pay the Applicant’s costs of the proceedings in the amount of $8,000.

5.There be no further order in this proceeding otherwise be dismissed.

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	QUD38 of 2009

BETWEEN:

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138
Applicant

AND:

BERNADETTE STEFFENSEN
First Respondent

JEMELLA LIMITED
Second Respondent

JUDGE:	LOGAN J
DATE:	20 MARCH 2009
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. The Applicant, Jemella Australia Pty Ltd ACN 104 455 138 (Jemella Australia), is a wholly owned subsidiary of the Second Respondent, which I shall term “Jemella”.  Jemella Australia is the licensee in respect of a trademark registered to Jemella.  That trademark comprises to the letters “GHD”.  Jemella Australia is licensed to use this trademark in Australia and New Zealand.  The evidence establishes that it is authorised by Jemella to bring the present proceedings.  The trademark GHD is one recognised for hair beauty and fashion products, particularly hairstyling irons.  The evidence establishes that, in that use, the trademark has a particular repute and worth, and that products bearing that trademark have a particular repute and worth accordingly.

2. The subject goods were intercepted in the Customs zone following a notice of objection given to the Australian Customs Service (Customs) on behalf of Jemella Australia.  Jemella Australia then instituted the present proceedings wherein injunctive relief, damages, and an order for forfeiture are sought.  On 2 March, Jemella Australia applied for interlocutory injunctive relief in respect of a restraint pending trial of the First Respondent, Ms Steffensen, enjoining her from importing or otherwise dealing with counterfeit GHD products.  I was not disposed, for reasons which I then gave, to grant that relief, although I did order that the goods be held by Customs pending the final hearing determination of this proceeding.

3. It is a matter of record that, on that occasion, Ms Steffensen did not appear, nor for that matter has she in any sense recognised by the rules entered an appearance.  She has, it should be said, made some informal contact both with Jemella Australia’s in-house solicitor and with the Court.  The long and the short of that informal contact is that, with respect to her, Ms Steffensen would prefer not to be involved and for the matter to be concluded in some way.  Unfortunately, for whatever reason, Ms Steffensen has elected again not to appear today, which leaves her in the position of being twice in default in respect of appearance at a directions hearing as well as, strictly, in default in terms of an appearance at all. 

4. That means that a consensual resolution of the case is not possible.  Neither has she taken steps informally to conclude the present proceeding.  Jemella Australia was in a position, given the times that are specified in the Trade Marks Act 1995 (Cth) (Trade Marks Act), whereby to preserve such rights that it had, or alleged to have, it needed to institute the present proceedings. I am quite satisfied on the affidavit evidence that was read on 2 March 2009 that the subject goods are goods which are counterfeit. I am further satisfied that the number of the goods, in the circumstances, and particularly in light of the absence of an undertaking in respect of not again importing counterfeit goods of this kind, was such as to be intended for use in domestic trade or commerce. In that regard, the number of goods is perhaps marginal for the drawing of the inference, but one does ask, rhetorically, why one individual would need a number that was imported, even making some allowance perhaps for one or two being intended to be gifts?

5. That being so, the question becomes how to dispose of the proceedings today.  Notice has been given by letter, the letter being exhibit 1, of an intention to seek final relief today.  I am satisfied that that letter would have arrived in the ordinary course of the post, at a time which was reasonable to enable Ms Steffensen to consider the position she ought to take.  Order 35A, rule 3(2) makes provision for the orders that the court may make in the event that a respondent is, like Ms Steffensen, in default.  One of the orders which may be made under para (d) is to give judgment or make any other order against the Respondent. 

6. I note that in similar circumstances to the present, in Jemella Australia v Samuel Johnson, otherwise known as Benjamin Johnson, unreported, QUD 285 of 2008, Dowsett J was disposed to make final orders including an order in respect of the payment of costs in a sum fixed by the court.  It was apparent in evidence before his Honour that the applicant in that proceeding had given Mr Johnson notice of its intention to have the matter finally dealt with by text message to a phone number used by him, and that Mr Johnson had chosen to ignore all contact from the applicant. 

7. Ms Steffensen, prior to the institution of court proceedings, did forward a consent to forfeiture and, in that sense, had not ignored contact with Jemella Australia; but that consent arrived too late to engage the provisions of the Trade Marks Act. She has effectively thereafter, though, ignored the proceedings in Court.

8. I am not satisfied on the evidence that it is either necessary or appropriate to make an order for Ms Steffensen to deliver up, as was sought, all counterfeit hairstyling products.  The reason I am not satisfied is that it seems to me, on the evidence, that the goods that have been imported, or sought to be imported, remain in the Customs zone.  There is, though, a concern arising from the absence of any disposition on Ms Steffensen’s part voluntarily to give an undertaking in respect of the repetition of conduct in respect of the importation of counterfeit goods, that an injunction ought to go in that regard.

9. I have considered the estimate of costs that is contained in the affidavit, which has been read today, of Jemella Australia’s solicitor.  The amount of costs has been assessed and that assessment appears to me to be reasonable. 

10. For these reasons, then, I make orders in terms of the draft which I have signed and placed with the papers.

I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Logan.

Associate:
Dated:        31 March 2009

Solicitor for the Applicant:	Mr L Fox (In-House Solicitor for Applicant)
Solicitor for the First Respondent:	The First Respondent appeared in person via telephone conference

Date of Hearing:	20 March 2009
Date of Judgment:	20 March 2009