Nemorin v Pierre

Case [2013] FCA 337

FEDERAL COURT OF AUSTRALIA

Nemorin v Pierre [2013] FCA 337

Citation: Nemorin v Pierre [2013] FCA 337
Parties: MARIE GHYLIANE NEMORIN and MARC GAETAN NEMORIN v ARMANDE PIERRE and ALLAN WEBB
File number: NSD 1040 of 2012
Judge: FLICK J
Date of judgment: 11 April 2013
Catchwords: PRACTICE AND PROCEDURE – proceeding resolved by consent - costs – absence of a hearing – no order as to costs  
Legislation: Trade Marks Act 1995 (Cth) s 133
Trade Practices Act 1974 (Cth)
Cases cited: Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2006] FCA 1427, 236 ALR 665
Australian Competition and Consumer Commission v Real Estate Institute of Western Australian Inc [1999] FCA 18, 161 ALR 79
Australian Securities Commission v Aust-Home Investments Ltd (1993) 44 FCR 194
Gladstone Park Shopping Centre Pty Ltd v Ross Wills (1984) 6 FCR 496
Gribbles Pathology Pty Ltd v Health Insurance Commission (1997) 80 FCR 284
Hughes v Western Australian Cricket Association (Inc) (1986) ATPR 48, 134
Re The Minister for Immigration & Ethnic Affairs; Ex parte Lai Qin (1997) 186 CLR 622
Roadshow Films Pty Ltd v iiNet Ltd [2010] FCA 645 at [37], 269 ALR 606
Ruddock v Vadarlis (No 2) [2001] FCA 1865, 115 FCR 229
Trade Practices Commission v Nicholas Enterprises Pty Ltd (No 3) (1979) 42 FLR 213
We Two Pty Ltd v Shorrock [2002] FCA 875
Date of hearing: 11 April 2013
Date of last submissions: 11 April 2013
Place: Sydney
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 31
Counsel for the Applicants: Mr CR de Robillard
Solicitor for the Applicants: Marshall William
Counsel for the Respondents: Mr DW Thompson
Solicitor for the Respondents: Thompson Downey Cooper

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1040 of 2012
BETWEEN:

MARIE GHYLIANE NEMORIN
First Applicant

MARC GAETAN NEMORIN
Second Applicant
AND:

ARMANDE PIERRE
First Respondent

ALLAN WEBB
Second Respondent

JUDGE:

FLICK J

DATE OF ORDER:

11 APRIL 2013

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.By consent the Respondents by themselves, their servants and/or agents, be restrained from and are hereby so restrained from importing into Australia or distributing within Australia, without the prior written authority of the Applicants, goods that display the trade mark the subject of the certificate of registration number 07019/2009 as issued on 25 February 2009 by the Registrar of Trademarks of Mauritius.

2.By consent, the Respondents are to take steps to ensure that all goods currently in the possession of the Australian Customs and Border Protection Service pursuant to seizure reference number PCI 12/003 be forfeited to the Commonwealth.

3.Subject to orders 4 and 5, the Respondents pay the Applicants’ costs of these proceedings from 18 September 2012.  

4.The Respondents pay the Applicants’ costs in preparing their originating process filed on 18 September 2012.

5.The Applicants pay the Respondents’ costs of the directions hearing held on 12 September 2012, to be taxed if not agreed.

Note:Entry of orders is dealt with in…

Continue reading Nemorin v Pierre

Sign in free to access the full text

Details
AGLC
Nemorin v Pierre [2013] FCA 337
Case
[2013] FCA 337
Decision Date

CaseChat Overview and Summary

Nemorin v Pierre was a proceeding in the Federal Court of Australia concerning a dispute over the rights to a trademark and the sale of food products. The applicants, Marc Nemorin and Ghyliane Nemorin, were granted a certificate of registration for a trademark in Australia in February 2012. The respondents, Pierre and Riviera Food Products, were importing and distributing food products from Mauritius, which the applicants claimed were deceptively similar to their trademark. The primary issue before the court was the form of orders to be made in relation to the injunction and the costs to be awarded. Competing versions of the proposed orders were presented to the court.

The court noted that the proceeding had been largely resolved between the parties, with the respondents consenting to the form of injunctive relief and agreeing to pay the applicants' costs. The court decided to not second-guess the reasons for the respondents' offer, as it might include factors known only to the legal representatives and not the court. The court made orders in line with the submissions made by the parties.

The court's orders included a consent injunction restraining the respondents from importing or distributing goods displaying the disputed trademark in Australia without the applicants' prior written authority. The respondents were also required to take steps to ensure that the seized goods be forfeited to the Commonwealth. The respondents were ordered to pay the applicants' costs from 18 September 2012, with the applicants paying the respondents' costs of the directions hearing. This decision demonstrates the court's willingness to facilitate settlement and the resolution of disputes in an efficient manner.

Orders

Orders of the court

1. By consent the Respondents by themselves, their servants and/or agents, be restrained from and are hereby so restrained from importing into Australia or distributing within Australia, without the prior written authority of the Applicants, goods that display the trade mark the subject of the certificate of registration number 07019/2009 as issued on 25 February 2009 by the Registrar of Trademarks of Mauritius.

2. By consent, the Respondents are to take steps to ensure that all goods currently in the possession of the Australian Customs and Border Protection Service pursuant to seizure reference number PCI 12/003 be forfeited to the Commonwealth.

3. Subject to orders 4 and 5, the Respondents pay the Applicants’ costs of these proceedings from 18 September 2012.

4. The Respondents pay the Applicants’ costs in preparing their originating process filed on 18 September 2012.

5. The Applicants pay the Respondents’ costs of the directions hearing held on 12 September 2012, to be taxed if not agreed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Yesterday the Court was informed that the proceeding had been largely resolved between the parties. Left unresolved were the form of orders to be made, including orders as to costs. Competing versions of the proposed orders were provided to the Court this morning. THE FACTS IN OUTLINE The relevant facts are within a narrow compass. It would appear that a Mauritian company, Eugenie Food Products Limited (“Eugenie Food Products”), produced goods for the food trade. Relevantly for the purposes of the present proceeding, in October 2005 Eugenie Food Products wrote to the First Applicant confirming that “your company, Flavours From Afar, has been given the exclusive rights to sell and market Eugenie’s range of products within Sydney …”. The typed version of that letter referred to the sale of products within “the Australian territory…”. The latter phrase has been crossed out and in lieu the word “Sydney” and thereafter some indecipherable words written by hand. This letter confirmed that these rights would continue for a period of 18 months. Goods were apparently supplied in 2007 and 2008. The goods supplied, however, gradually became more and more difficult to obtain and in about 2008 its products disappeared from retail outlets. There is some evidence that no products directly supplied by Eugenie Food Products have been sold in Australia since mid-2009. There is also some evidence that “for some years now Eugenie has sold products made by individuals … in their homes”. Whatever may be the position as to goods imported to Australia, in February 2009 the Controller within the Ministry of Foreign Affairs, Regional Integration and International Industrial Property Office in Mauritius issued to Eugenie Food Products a Certificate of Registration of a Mark. The mark the subject of the certificate is No 07019/2009 and is as follows: The Certificate specifies that the “validity of the mark” is for a 10 year period expiring in October 2018. The list of goods the subject of the trade mark includes specified food products. The Respondents carry on in Australia a business known as Riviera Food Products. In doing so it imports goods from Mauritius. It sells its products to grocery retailers, including those in Sydney, Melbourne, Brisbane and Perth. In February 2012 an Australian Certificate of Registration of Trade Mark was issued to the Applicants. The mark depicted in that Certificate is as follows:The period of registration is stated to be due for renewal in June 2021. Again, the goods the subject of that trade mark are specified, being specified food products. In about April 2012 Riviera Food Products ordered goods from Seskel Enterprises Limited, another Mauritian company. The order included a quantity of goods produced by Eugenie Food Products. In June 2012 Riviera Food Products received a notice from the Australian Customs and Border Protection Service that it had seized 1,932 “jars of pickles, jams and chilli paste”. The notice identified a seizure number of PCI 12/003 and stated that the seizure was pursuant to s 133 of the Trade Marks Act 1995 (Cth). The goods were said to be “deceptively similar to a trade mark notified by Marc Nemorin and Ghyliane Nemorin”.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In the circumstances of the present case, including the consent by the Respondents to the form of injunctive relief and their offer to pay the costs and their acceptance that they should pay the costs of the Applicants essentially as from 18 September 2012, it is appropriate that such orders should be made. That was in part the offer made by the Respondents and this Court should not put any further obstacle in their path in now making the orders the subject of submissions this morning. Nor should the Court attempt to “second guess” the reasons why the Respondents have made the offer in fact made. In any settlement those reasons may include a commercial assessment as to prospects of success, the costs involved in running a case to hearing and factors known only to the legal representatives and not the Court. CONCLUSION Orders should be made in the form discussed during the course of submissions this morning. THE ORDERS OF THE COURT ARE: 1.By consent the Respondents by themselves, their servants and/or agents, be restrained from and are hereby so restrained from importing into Australia or distributing within Australia, without the prior written authority of the Applicants, goods that display the trade mark the subject of the certificate of registration number 07019/2009 as issued on 25 February 2009 by the Registrar of Trademarks of Mauritius. 2.By consent, the Respondents are to take steps to ensure that all goods currently in the possession of the Australian Customs and Border Protection Service pursuant to seizure reference number PCI 12/003 be forfeited to the Commonwealth.3.Subject to orders 4 and 5, the Respondents pay the Applicants’ costs of these proceedings from 18 September 2012. 4.The Respondents pay the Applicants’ costs in preparing their originating process filed on 18 September 2012.5.The Applicants pay the Respondents’ costs of the directions hearing held on 12 September 2012, to be taxed if not agreed.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.