Levi Strauss & Co. v Mark Coulton - [1992] FCA 1027

Re: LEVI STRAUSS AND CO. and LEVI STRAUSS (AUSTRALIA) PTY LTD
And: MARK COULTON and ERIC MATZEN
No. N G218 of 1992
FED No. 1027
Number of pages - 5
Practice and Procedure
(1992) 25 IPR 312

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Gummow J.(1)

CATCHWORDS

Practice and Procedure - Anton Piller order - information disclosed on affidavit - application for leave to use that information for purposes of proceedings in foreign jurisdiction - principles applicable.

Trade Marks Act 1955

R. and A. Bailey and Co. Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701

Crest Homes PLC v Marks (1987) AC 829

Holpitt Pty Ltd v Varimu Pty Limited (1991) 29 FCR 576, applied.

HEARING

SYDNEY

#DATE 22:12:1992

Counsel and solicitors Mr R.J. Webb instructed
for the Applicants: by Baker and McKenzie.

Counsel and solicitors Mr B. Slowgrove instructed
for the Second Respondent: by Dennis and Co.

ORDER

THE COURT ORDERS THAT:

The motion filed 15 December 1992 be dismissed, with costs.

JUDGE1

GUMMOW J. In this matter, the first respondent swore an affidavit on 26 August 1992 which, with the annexures, disclosed the direct or indirect source of what, it is not disputed, were goods to which trade marks which in Australia are registered property of one or other of the applicants had been applied without the licence or consent of the applicants. Two sources were disclosed. The first was a corporation in the People's Republic of China named China Trading Service Company Limited and the other a corporation apparently conducting a business in the State of California in the United States of America under the name West Coast Wholesalers Incorporated. The affidavit was sworn in compliance with an order of the Court, but a claim was made relying upon the privilege against self-incrimination.

The principal proceeding is, as I have already indicated, based upon registered trade mark infringement. There are some 10 registered trade marks involved, some in Part A and the others in Part B of the register under the Australian Trade Marks Act 1955. The Australian registrations are territorial in nature; see R. and A. Bailey and Co. Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701 at 709-710. By a motion filed 15 December 1992, but amended this morning, the applicants now seek leave in the following terms.
Leave is sought by the applicants to use, first, the affidavit of the first respondent sworn on 26 August 1992 and, secondly, any information contained in any of the documents referred to in that affidavit:

for the purpose of investigating possible infringements of the registered trademarks, copies of which are annexed to the application (the marks), possible infringements in

jurisdictions outside Australia of registered trademarks

which are the same as or substantially identical to the

marks and the infringement of any rights which the first

applicant or any of its subsidiary corporations might have in unregistered marks the same as or substantially identical to the marks by…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1992] FCA 1027
Decision Date: 22 DECEMBER 1992

CaseChat Overview and Summary

Levi Strauss & Co. brought an application against Mark Coulton seeking an Anton Piller order, and subsequently sought leave to use information disclosed on affidavit for the purposes of proceedings in a foreign jurisdiction. The case was heard in the Federal Court of Australia. The dispute centred around allegations of intellectual property infringement, with Levi Strauss & Co. claiming that Mark Coulton had engaged in the illegal copying and distribution of their branded products.

The court had to determine the appropriate principles governing the use of information disclosed on an Anton Piller order affidavit for proceedings in a foreign jurisdiction. Specifically, the court needed to decide whether the applicant could use the disclosed information for purposes outside the Australian jurisdiction and if any conditions or limitations should apply to such use. The court considered the balance between the need to protect confidential information and the interests of justice in both the Australian and foreign proceedings.

In its decision, the court held that the use of the disclosed information for foreign proceedings would not be appropriate without specific authorisation from the Australian court. The court emphasised the importance of maintaining the confidentiality and integrity of the information disclosed in the Anton Piller order. It concluded that any use of such information in foreign proceedings must be subject to stringent conditions to prevent misuse and ensure the protection of the disclosing party's interests. Based on these principles, the court dismissed the motion for leave to use the disclosed information for foreign proceedings, with costs awarded against the applicant.

The court's final order was that the motion filed on 15 December 1992 be dismissed, with costs. This outcome underscored the necessity of adhering to the principles of confidentiality and fairness in the use of information obtained through Anton Piller orders, particularly when such information is sought to be used in foreign jurisdictions.

Orders

Orders of the court

THE COURT ORDERS THAT:

The motion filed 15 December 1992 be dismissed, with costs.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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