Kabushiki Kaisha Sanrio v Impression International Pty Ltd (No 2)

[2008] FCA 346

FEDERAL COURT OF AUSTRALIA

Kabushiki Kaisha Sanrio v Impression International Pty Ltd (No 2)
[2008] FCA 346

INTELLECTUAL PROPERTY – Goods seized and held by Customs collected notwithstanding the existence of an interlocutory injunction – further urgent interlocutory relief sought and granted

KABUSHIKI KAISHA SANRIO (SANRIO COMPANY, LTD) v IMPRESSION INTERNATIONAL PTY LIMITED, BASSAM HAWKI AND HOA CHEN
NSD 333 OF 2008

BUCHANAN J
12 MARCH 2008
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 333 OF 2008

BETWEEN:

KABUSHIKI KAISHA SANRIO (SANRIO COMPANY, LTD)
Applicant

AND:

IMPRESSION INTERNATIONAL PTY LIMITED
First Respondent

BASSAM HAWKI
Second Respondent

HOA CHEN
Third Respondent

JUDGE:	BUCHANAN J
DATE OF ORDER:	12 MARCH 2008
WHERE MADE:	SYDNEY

THE COURT NOTES THAT:

A.Notwithstanding the Orders made by the Court on 11 March 2008, the First Respondent collected the goods referred to in paragraph 14 of the Statement of Claim (the “Infringing Products”) from the Australian Customs Service shortly after 2pm on 12 March 2008.

THE COURT ORDERS THAT:

1.Upon the Applicant giving the usual undertaking as to damages, the First Respondent whether by itself, its servants, agents, or otherwise is restrained, until further order of the Court, from advertising, promoting, selling, offering to sell, supplying or offering to supply in Australia any articles or goods collected from the Australian Customs Service in Victoria on 12 March 2008.

2.Upon the Applicant giving the usual undertaking as to damages, the First Respondent whether by itself, its servants, agents or otherwise shall do all acts and things necessary to cause any articles or goods referred to in Order 1 to be delivered up to the Melbourne offices of the Applicant’s solicitors, Griffith Hack Lawyers Pty Ltd, at Level 3, 509 St Kilda Road, Melbourne, by 12pm on Friday, 14 March 2008. 

3.Upon the First Respondent’s compliance with Order 2, the Applicant will, pending further order of the Court, hold the any articles or goods  delivered up in accordance with Order 2 in a secure storage facility, at its expense.

4.Leave is given to the Applicant to issue a subpoena to the Chief Executive Officer of the Australian Customs Service.

5.Abridgement is granted of all relevant times required for the service of the subpoena to the Chief Executive Officer of the Australian Customs Service.

6.The Applicant is to effect service of a sealed copy of the subpoena to the Chief Executive Officer of the Australian Customs Service by facsimile to the number [phone] by 10am on Thursday, 13 March 2008.

7.The Applicant’s costs of and incidental to these interlocutory proceedings are reserved.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 333 OF 2008

BETWEEN:

KABUSHIKI KAISHA SANRIO (SANRIO COMPANY, LTD)
Applicant

AND:

IMPRESSION INTERNATIONAL PTY LIMITED
First Respondent

BASSAM HAWKI
Second Respondent

HOA CHEN
Third Respondent

JUDGE:	BUCHANAN J
DATE:	12 MARCH 2008
PLACE:	SYDNEY

REASONS FOR JUDGMENT

BUCHANAN J:

1. In this matter I made orders on 11 March 2008 in the following terms:

   ‘THE COURT ORDERS:

   1.Upon the applicant giving the usual undertaking as to damages, the first respondent, whether by itself, its servants, agents or otherwise, is restrained until further order from collecting the goods referred to in paragraph 14 in the Statement of Claim.

   2.        Costs of the proceedings to date are reserved.

   3.The matter is adjourned to 9:30am on Monday 17 March 2008 before Rares, J.’

2. I also made a direction as follows:

   ‘THE COURT DIRECTS THAT:

   1.The applicant notify the Chief Executive Officer of the Australian Customs Service of Order 1 and provide a copy of that Order as entered by 6:00pm today, 11 March 2008.’

3. The applicant has again approached the Court for further urgent interlocutory relief.  I granted leave to the applicant to file a notice of motion supported by affidavits of Blair Mark Beven and John Dominic Lee each sworn 12 March 2008.  Those affidavits disclose that, notwithstanding the orders which I made yesterday, representatives of the first respondent collected the goods subject of order 1 at around 2 pm today.  Customs apparently felt obliged in accordance with its own statutory obligations to release the goods but took steps to ensure that the person who came to collect them was aware of the orders made and both sighted and signed a copy of the order.  Customs takes the view that it should not disclose the name of the person who collected goods, or provide any form of copy of the signed order without an order from the Court.

4. I make no criticism of the conduct of any Customs officer based on the material which is before the Court. The applicant made a conscious and, I think, proper decision when it sought orders in the first instance not to seek orders directly against the Australian Customs Service. 

5. I emphasise that the material before the Court at this moment consists only of evidence from the applicant.  The respondents have not yet provided any explanation of their own conduct, or had an opportunity to address submissions to the Court about it.  However, in the circumstances, I am satisfied that further interlocutory relief is appropriate in a further attempt to preserve the status quo until the matter receives attention by the judge to whose docket this case has been assigned and the respondents have an opportunity to make submissions to that judge about the question of further interlocutory relief and other matters.

6. In those circumstances I make orders in accordance with the short minutes of order provided to the Court today as amended by me during the proceedings in discussion with counsel.

I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Buchanan.

Associate:

Dated:       12 March 2008

Counsel for the Applicant:	Andrew Fox
Solicitor for the Applicant:	Griffith Hack Lawyers
Date of Hearing:	12 March 2008
Date of Judgment:	12 March 2008