Jemella Australia Pty Ltd v Young

[2008] FCA 394

FEDERAL COURT OF AUSTRALIA

Jemella Australia Pty Ltd v Young [2008] FCA 394

PRACTICE AND PROCEDURE – consideration of an application for a Search Order under Order 25B of the Federal Court Rules

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 v MICHAEL YOUNG, MJY HAIR AND BEAUTY PTY LTD ACN 125 666 711, TOM KOTSIMBOS AND JEMELLA LIMITED
QUD57 OF 2008

GREENWOOD J
18 MARCH 2008
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD57 OF 2008

BETWEEN:

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138
Applicant

AND:

MICHAEL YOUNG
First Respondent

MJY HAIR AND BEAUTY PTY LTD ACN 125 666 711
Second Respondent

TOM KOTSIMBOS
Third Respondent

JEMELLA LIMITED
Fourth Respondent

JUDGE:	GREENWOOD J
DATE OF ORDER:	18 MARCH 2008
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1.A search order issue in the form of the Search Order marked Annexure 1 to this Order.

2.An order restraining the first, second and third respondents, whether by themselves, their officers, servants, agents or otherwise howsoever from distributing, advertising and offering for sale, displaying or otherwise exploiting counterfeit hairstyling products bearing the mark ‘GHD Hairstyling Iron’ or ‘GHD’ or otherwise infringing the trade mark or from publishing or maintaining any internet website which advertises for sale hairstyling products bearing the mark ‘GHD Hairstyling Iron’ or ‘GHD’ or which infringe the trade mark or which suggests any connection or association between the applicant and the fourth respondent  on the one hand, and the first, second and third respondents on the other, until 4:00pm on 1 April 2008.

3.Costs of and incidental to the application for interim relief be reserved.

4.The application be adjourned until Tuesday, 1 April 2008 at 10:15am.

Penal Notice

TO:            Michael Young

If you (being the person bound by this 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.

1.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.

Date that entry is stamped: 

Deputy District Registrar

ANNEXURE 1

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY

NO:  QUD         of 2008

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138

Applicant

MICHAEL YOUNG

First Respondent

MJY HAIR AND BEAUTY PTY LTD ACN 125 666 711

Second Respondent

TOM KOTSIMBOS

Third Respondent

JEMELLA LIMITED

Fourth Respondent

SEARCH ORDER

TO:            Michael Young

This is a ‘search order’ made against you on 18 March 2008 by Justice Greenwood  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 25 March 2008.

2.Subject to the next paragraph, this Order has effect up to and including 1 April 2008, (“the Return Date”).  On the Return Date at 10 am (Queensland time), there will be a further hearing in respect of this Order before Justice Greenwood.

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 No:  07 3248 1166) or to the Duty Judge (Phone No:  07 3248 1100).

4.This Order may be served between 7:00am and 7:00 pm (Victorian time) on a business day;

5.In this Order:

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

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

(c)‘independent solicitor’ means the persons 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 present 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.

(j)‘motor vehicle’ means the vehicle being a silver Toyota Camry Aurion with the registration WCS-273.

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 13 to 22 below, upon service of this Order, you must permit members of the search party to enter the premises and to have access to the inside of the motor vehicle so that they can carry out the search and other activities referred to in this Order.

9.In the event that the motor vehicle or any of its compartments are locked, you are to provide the independent solicitor with a key that will unlock the locked compartments for the purpose of allowing the independent solicitor to unlock the compartments.

10.In the event the search party is unable to access the area immediately adjacent to the main entrance to the premises (the Restricted Area) due to security restricting such access, any person responsible for managing and enforcing the restriction to this access is, upon being directed to do so by the independent solicitor, to use his or her best endeavours to assist the search party to gain access to the Restricted Area.

11.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 respondents’ 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 to search any computer and make a copy or digital copy of any computer hard drive and permit the independent computer expert or the independent solicitor to remove any computer hard drive and computer from the premises as set out in paragraphs 23 and 24 below.

RESTRICTIONS ON ENTRY, SEARCH AND REMOVAL

12.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.

13.You are not required to permit anyone to enter the premises or the motor vehicle 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.

14.Before permitting entry to the premises or the motor vehicle by anyone other than the independent solicitor, you, for a time (not exceeding two hours from the time of service, two hours from the commencement of normal business hours 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.

15.Subject to paragraph 25 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 15(c) and (d) above and the independent solicitor must deliver it to the Court at or prior to the hearing on the Return Date.

16.During any period referred to in paragraph 15 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 28 and 29 below.

17.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.

18.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.

19.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.

20.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.

21.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 4.30pm on the Return Date or other time fixed by further Order of the Court.

COMPUTERS

22.(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.

23.(a)     Unless you are a corporation, you are entitled to object to paragraphs 22(b) to (g) 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 22(b) to (g) on the ground that the computer contains material that is otherwise privileged.

(c)Upon communicating any objection under paragraph (a) or (b) to the independent solicitor, paragraphs 22(b) to (g) 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 22(b) to (g) and if you object, the Court may adjudicate upon your objection.

INSPECTION

24.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

25.Subject to paragraph 27 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 two (2) working days after being served with this Order, make and serve on the applicant an affidavit setting out the above information.

26.(a)     This paragraph (27) applies if you are not a corporation and you wish to object that compliance with paragraph 26 may tend to incriminate you or make you liable to a civil penalty.

(b)This paragraph (27) also applies if you are a corporation and all of the persons who are able to comply with paragraph 26 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 26 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

27.Except for the sole purpose of obtaining legal advice, you must not, until 4.30pm 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.

28.Until 4.30pm 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

29.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)4 Parry Street, Moonee Ponds in the State of Victoria.

Motor Vehicle

A motor vehicle being a silver Toyota Camry Aurion with the registration WCS-273.

Listed Things

1.All counterfeit hairstyling products bearing the marking “GHD Hairstyling Iron” or “GHD” whatsoever or which otherwise infringe the Trade Mark;  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 or which otherwise infringe the Trade Mark.

Search Party

1.The independent solicitor:  Ben Wyatt and/or Jeffrey Krinns both of Rigby Cooke Lawyers, Level 13, 469 La Trobe Street, Melbourne in the State of Victoria.

2.The applicant’s solicitor or solicitors: 

Glenn Allen Caligaris of McInnes Wilson Lawyers of Level 14, Central Plaza One, Brisbane in the State of Queensland and any other solicitors identified by Glenn Allen Caligaris to the independent solicitor as a solicitor in the employ of McInnes Wilson Lawyers or any town agent appointed by McInnes Wilson Lawyers:

3.Other members of the search party:

(a)Mitchell Bezzina of Deloitte Touche Tohmatsu, 225 George Street, Sydney in the State of New South Wales; Graeme Conn and/or David Dalton both of Deloitte Touche Tohmatsu, Level 10, 180 Lonsdale Street, Melbourne in the State of Victoria in the capacity of Independent Expert.

SCHEDULE B

UNDERTAKINGS GIVEN TO THE COURT

Undertaking 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 this 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 4.30pm 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 4.30pm 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 respondent, 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 4.30pm 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 4.30pm 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  Date Affidavit Made

Affidavit of Stephen Gregory Watling  18 March 2008

Affidavit of Justin Cotton  17 March 2008

Affidavit of Dale Patrick Brown  18 March 2008

Affidavit of Jeffrey Krinns  17 March 2008

Affidavit of Kylie Anne Thomson  18 March 2008

Affidavit of Ben Wyatt  17 March 2008

Affidavit of Suzie Elasmar  18 March 2008

Affidavit of Daryl Grenfell  18 March 2008

NAME AND ADDRESS OF APPLICANT’S SOLICITORS:

The Applicant’s solicitors are:

McInnes Wilson Lawyers
                  Level 14, Central Plaza One
                  345 Queen Street
                  BRISBANE  QLD  4000

GPO Box 1089

BRISBANE  QLD  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	QUD57 OF 2008

BETWEEN:

JEMELLA AUSTRALIA PTY LTD ACN 104 455 138
Applicant

AND:

MICHAEL YOUNG
First Respondent

MJY HAIR AND BEAUTY PTY LTD ACN 125 666 711
Second Respondent

TOM KOTSIMBOS
Third Respondent

JEMELLA LIMITED
Fourth Respondent

JUDGE:	GREENWOOD J
DATE:	18 MARCH 2008
PLACE:	BRISBANE

EX TEMPORE REASONS FOR JUDGMENT

1. I have an application this afternoon before me by Jemella Australia Pty Ltd.  The application is made ex parte and an order is sought for a search order and other interlocutory relief.  The search order is sought pursuant to the rules of the court, and in particular pursuant to and in accordance with the elements of the practice direction governing search orders in support of order 25B of the Federal Court Rules.  In the application which is filed by leave, final relief is sought in terms of permanent injunctions under the Trademarks Act 1995 (Cth) and the Trade Practices Act 1974 (Cth) in relation to conduct of infringement of the trademark and contraventions of s 52 of the Act.

2. Further orders by way of permanent relief are sought in terms of delivery up damages pursuant to s 82 of the Act, in the alternative the necessary taking of accounts, an inquiry as to loss of profits or damages, interest and other orders in terms of costs.  In addition to the final orders, interlocutory orders are sought by para B of the application but the focus of the application this afternoon, in particular, is in relation to the relief sought ex parte by para BA of the application.  By clause 1 of para BA of the application, the search order is sought, and by clause 2 an interlocutory order is sought against the respondents.  The respondents in the proceeding are Mr Michael Young, a company MJY Hair and Beauty Pty Ltd, Mr Tom Kotsimbos and Jemella Limited.  The fourth respondent is the registered owner of the trademark and the applicant in the proceedings is a registered licensee and user of the mark.

3. In support of the application for the search order and the ex parte interlocutory orders, particular material has been filed which is recited in a draft order.  In particular, reliance has been placed upon the affidavit of Steven Gregory Whatling, who is the managing director of Jemella Australia Pty Ltd.  Mr Whatling deposes to the contextual facts and circumstances relating to the article in question which is a mark described as GHD for particular high quality hair products.  That mark has been the subject of extensive use and in respect of that mark the affidavits suggest that consumers have come to associate it with products of the highest standard and reliability.  The GHD products include a GHD styler, which is used for hair styling and hair straightening.  It was previously known and described as the ‘GHD hair styling iron’ or the ‘GHD hair straightener’. 

4. Mr Whatling in his affidavit deposes to circumstances concerning a pattern of counterfeit activity in relation to this particular article and describes the electrical safety approvals which are required and have been obtained under the Electrical Safety Act 2002 (Qld) for the lawful sale and distribution of the product. The immediate concern, of course, is that the first and second respondents and the third respondent are engaged in conduct which contravenes the Trade Practices Act and involves an infringement of trademark by the sale and distribution of counterfeit articles.

5. Further affidavits are relied upon in the form of an affidavit sworn by Suzie Elasmar, sworn 18 March 2008.  In that affidavit Ms Elasmar deposes to facts concerning the supply by Mr Young of particular devices which were marked with the trademark but which were not genuine articles.  The affidavit sets out facts which depose to the conduct of Mr Young in representing that he had supplied only genuine stocks of the GHD article.  The affidavit also deposes to circumstances which suggest that Mr Young sought to obfuscate the real source of supply of the article and sought to confuse the question of whether they were genuine or counterfeit articles.

6. A further affidavit of Kylie Anne Thomson, sworn 18 March 2008, is also relied upon.  In that affidavit Ms Thomson deposes to her extensive experience in identifying counterfeit articles.  Ms Thomson deposes by para 16 of her affidavit in a conclusionary way in reliance upon the pre-existing factual matters set out in the earlier paragraphs, that the articles supplied by the respondents are counterfeit articles.  In addition to the affidavit of Ms Thomson, sworn 18 March 2008, a further affidavit was read which deposes to facts from which the conclusion in para 16 of the affidavit of Ms Thomson (containing the 16 paragraphs) is supported.  I received into evidence that affidavit because para 16 in a sense ‘swears the issue’, although it is supported by some contextual facts.

7. The further affidavit of Ms Thomson deposes to factual matters from which the conclusion can properly be supported, at least for present interlocutory purposes.  Counsel for the applicant makes submissions that the features by which the counterfeit articles are identified and determined is a matter of confidentiality and it would be significantly prejudicial to disclose the identifiers which enable a counterfeit article to be determined.  For that purpose, I have therefore made an order that the confidentiality of that affidavit be preserved by sealing it on the footing that the envelope is to be opened only by order of the court.

8. The application is supported by other affidavits and they include the affidavits of Mr Ben Wyatt, sworn 17 March 2008, the affidavit of Daryl Grenfell, sworn 18 March 2008, the affidavit of Dale Patrick Brown, the applicant’s solicitor, sworn 18 March 2008, and the other material recited in the order.  All of that material goes to demonstrating compliance with the practice direction in that the affidavits depose to facts which support the claim for interlocutory relief and set out the undertakings offered by the applicant, the applicant’s solicitor, the computer experts and the independent solicitors who will supervise the proposed orders.

9. Having regard to all of this material I am satisfied consistent with the jurisprudence in relation to search orders, that there is a real and serious risk that should an order not be made that evidence is likely not to be available in the ordinary course of events.  I’m satisfied that as to those matters, there is a strong prima facie case that the evidence may not be preserved but for the order.  In relation to the interlocutory order, I am satisfied that it is appropriate to make orders in terms of para 2 of the claim for interim relief.  In terms of the search order itself, counsel for the applicant suggested at the outset that there were three premises at which a search might be conducted.  Having reviewed the material and heard further submissions, the search order is confined to the premises described as 4 Parry Street, Moonee Ponds in the state of Victoria.

10. I have had the benefit of not only reading those affidavits but also reading the content of the proposed search order.  I’m satisfied that the content of the order is consistent with the practice direction adapted appropriately to the present circumstances.  One aspect of the proposed order ought to be mentioned and that is that the order is to be served between 7 am and 7 pm Victorian time on a business day.  That form of order extends the normal or orthodox time within which search orders of this kind would be executed.  I’m satisfied that it’s appropriate to make an order between those times on the footing that the evidence establishes the surveillance of Mr Young at the premises and that Mr Young is likely to be at the premises at that time.  It seems to me that it would be beneficial and important that Mr Young is able to be identified early and served with the order whilst he is at the premises.

11. In relation to the form of the order, I propose to make an order in terms of para 1, that is, a search order in terms of the draft subject to one or two matters to be mentioned in a moment. 

12. I propose to make an order restraining the first, second and third respondents, whether by themselves, their officers, servants, agents or otherwise howsoever, from distributing, advertising and offering for sale, displaying or otherwise exploiting counterfeit hair styling products bearing the mark GHD hair styling iron, or GHD, or otherwise infringing the trademark or from publishing and maintaining any internet website which advertises for sale hair styling products bearing the mark GHD hair styling iron, or GHD, or which infringe the trademark or which suggest any connection or association between the applicant and the fourth respondent on the one hand, and the first, second and third respondents on the other until 4 pm on 1 April 2008. 

13. I propose to reserve the question of costs. 

14. In relation to the search order itself, I have examined each of the provisions of the order and am satisfied that it reflects the elements of the practice direction and the requirements of order 25B.  As to the introductory provision, clause 2 shall provide for a return date of 1 April 2008 and in clause 3 in the third line, the telephone number should be [phone] and the telephone number for the duty judge will be [phone].  As to Schedule C, the affidavits should include the affidavits of Justin Cotton, Jeffrey Krinns and Ben Wyatt.  As to para 23 of the Search Order, the references to paras 22(b) to (f) should read paras 22(b) to (g).  As to Schedule A, the premises should be confined to premises located at 4 Parry Street, Moonee Ponds in the State of Victoria.  The premises referred to at (ii) and (iii) should be deleted.  Accordingly, I will make an order for a Search Order in the form of the draft Search Order initialled by me. 

15. The notice of motion for interlocutory relief will be listed for Tuesday, 1 April 2008. 

I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.

Associate:

Dated:        18 March 2008

Counsel for the Applicant:	Mr R Lilley SC
Solicitor for the Applicant:	Mr D Brown, McInnes Wilson Lawyers
Counsel for the Respondent:
Solicitor for the Respondent:
Date of Hearing:	18 March 2008
Date of Judgment:	18 March 2008