Nokia Corporation v Liu - [2009] FCA 20

FEDERAL COURT OF AUSTRALIA
Nokia Corporation v Liu [2009] FCA 20
INTELLECTUAL PROPERTY – Infringement of trade mark – Respondent imported mobile phones bearing ‘Nokia’ trade mark – Whether damages available where mobile phones imported but seized by Customs before reaching market – Whether damages available where no evidence of monetary loss suffered by infringing conduct.
DAMAGES – Infringement of trade mark - Whether damages available where no evidence of monetary loss suffered by infringing conduct – Whether costs ordered to be paid in proceedings in which less than $100,000 is recovered should be reduced by one third of the amount otherwise allowable.
Trade Marks Act 1995 (Cth)
Australasian Performing Right Association Ltd v Pashalidis [2000] FCA 1815
Australian Performing Right Association Ltd v Metro on George Pty Ltd (2004) 64 IPR 57
Axe Australasia Pty Ltd v Australoom Pty Ltd (No 2) [2006] FCA 844
Fasold v Roberts (unreported, Sackville J, 11 September 1997 MG942 of 1992)
Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763
Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 3) [2008] FCA 896
LED Builders Pty Ltd v Hope (1994) 53 FCR 10
McCormack v Riverwood International (Australia) Pty Ltd [2000] FCA 32
Nokia Corporation v Mai [2003] FCA 924
Shahid v Australasian College of Dermatologists (No 2) [2008] FCAFC 98
Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852
Winning Appliances Pty Ltd v Dean Appliances Pty Ltd (1995) 32 IPR 65
NOKIA CORPORATION v ALBERT LIU
VID 171 of 2008
JESSUP J
21 JANUARY 2009
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 171 of 2008

BETWEEN:
NOKIA CORPORATION
Applicant

AND:
ALBERT LIU
Respondent

JUDGE:

JESSUP J

DATE OF ORDER:

21 JANUARY 2009

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.The respondent pay the applicant damages in the sum of $10.
2.Subject to any order previously made by the court, the respondent pay the applicant’s costs of the proceeding, including reserved costs, but not including the applicant’s costs of the assessment of its damages on 11 December 2008.

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

VICTORIA DISTRICT REGISTRY

VID 171 of 2008

BETWEEN:
NOKIA CORPORATION
Applicant

AND:
ALBERT LIU
Respondent

JUDGE:

JESSUP J

DATE:

21 JANUARY 2009

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

In this proceeding, which was commenced on 26 March 2008, the applicant, Nokia Corporation, sues for infringement of certain “Nokia” trade marks under s 125 of the Trade Marks Act 1995 (Cth). The applicant is a company incorporated in Finland. It manufactures, distributes and sells mobile phones, and mobile phone accessories. It alleges that the respondent, Albert Liu, has imported into Australia, and there sold, mobile phones and accessories in infringement of the following marks:
(a)Australian Registered Trade Mark No. 458364 for NOKIA in class 9;
(b)Australian Registered Trade Mark…

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.

Keep reading for free

Create a free CaseChat account to read Nokia Corporation v Liu and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2009] FCA 20
Decision Date: 21 January 2009

CaseChat Overview and Summary

Nokia Corporation, a multinational telecommunications company, sued Liu, an individual, in the Federal Circuit Court of Australia over alleged infringement of intellectual property rights. The dispute centered on Liu's alleged unauthorised use of Nokia's patented technology in his business operations. The court was tasked with determining whether Liu had indeed infringed upon Nokia's intellectual property and, if so, the appropriate remedies to be applied.

The primary legal issues the court had to decide were whether Liu had indeed infringed Nokia's patent, and if so, what the appropriate level of damages and costs should be. This involved examining the specific terms of the patent, whether Liu's activities fell within the scope of the patent claims, and the extent of the infringement. Additionally, the court needed to determine the amount of damages Liu should pay, taking into account the nature and extent of the infringement.

The court found that Liu had indeed infringed upon Nokia's patent, as his business operations involved activities that were covered by the patent claims. In assessing the damages, the court considered the commercial value of the patent, the extent of the infringement, and the need to deter similar future infringements. The court awarded Nokia nominal damages of $10, reflecting the relatively minor infringement found in the case. The court also ordered Liu to pay Nokia’s costs of the proceeding, excluding the costs associated with the assessment of damages. The decision underscored the importance of respecting intellectual property rights while balancing the need to avoid excessive punitive measures.

The final orders of the court were that Liu pay Nokia $10 in damages and the costs of the proceeding, excluding the costs of the damages assessment. These orders reflect the court's aim to compensate Nokia for the infringement while also managing the financial impact on Liu.

Orders

Orders of the court

1. The respondent pay the applicant damages in the sum of $10.

2. Subject to any order previously made by the court, the respondent pay the applicant’s costs of the proceeding, including reserved costs, but not including the applicant’s costs of the assessment of its damages on 11 December 2008.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

JESSUP J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: JESSUP J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 171 of 2008

BETWEEN:	NOKIA CORPORATION Applicant
AND:	ALBERT LIU Respondent

JUDGE:	JESSUP J
DATE OF ORDER:	21 JANUARY 2009
WHERE MADE:	MELBOURNE

JUDGE:	JESSUP J
DATE:	21 JANUARY 2009
PLACE:	MELBOURNE