Nokia Corporation v Mai

Case [2003] FCA 924

FEDERAL COURT OF AUSTRALIA

Nokia Corporation  v Mai [2003] FCA 924

TRADE MARKS – infringement – “use … as a trade mark” - accessories or spare parts – whether the respondent had an arguable defence under s 122(1)(c) of the Trade Marks Act 1995 (Cth) – whether circumstances of importation gave rise to an infringement

PRACTICE AND PROCEDURE – application for summary judgment – no arguable defence or triable issue

Trade Marks Act 1995 (Cth) ss 120, 122(1)(c), 126, 131, 133
Federal Court of Australia Act 1976 (Cth) s 43
Federal Court Rules 1979 (Cth) O 20 r 1

Geoffrey Inc & Ors v Luik & Anor (1997) 38 IPR 555 referred to
Flocast Australia Pty Ltd v Purcell & Ors (1997) 39 IPR 177 referred to
Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 referred to
Dey v Victorian Railways Commissioners (1949) 78 CLR 62 referred to
General Steel Industries Inc. v Commissioner for Railways (NSW) (1964) 112 CLR 125 referred to
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 applied
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 applied
Angove’s Pty Ltd v Johnson (1982) 66 FLR 216 referred to
Masson Seeley & Co Ld v Hill Bros (Service) Ld (1940) 57 RPC 128 referred to
Minimax Ld v Moffat (1935) 52 RPC 340 followed
Kodak Ld v London Steroscopic & Photographic Co Ld (1903) 20 RPC 337 referred to
G H Gledhill & Sons Ld v British Perforated Toilet Paper Company (1911) 28 RPC 429 applied
Neostyle Manufacturing Co Ld v Ellam’s Duplicator Co (1904) 21 RPC 185 referred to
Interlego AG & Anor v Croner Trading Pty Ltd (1992) 39 FCR 348 referred to
Gillette Company & Anor v Pharma-Goods Australia Pty Ltd & Anor (1997) 38 IPR 509 referred to
Sony Computer Entertainment Australia Pty Ltd v Saleh [2001] FCA 717 followed
Dr Martens Australia Pty Ltd& Ors v Bata Shoe Company of Australia Pty Ltd & Ors [1997] FCA 505 referred to

Colgate-Palmolive Company & Anor v Cussons Pty Limited (1993) 46 FCR 225 applied
John S Hayes & Associates Pty Limited v Kimberly-Clark Australia Pty Limited (1994) 52 FCR 201 referred to
Re Wilcox; Ex parte Venture Industries Pty Ltd & Ors (No 2) (1996) 72 FCR 151 referred to
Ruddock & Ors v Vadarlis & Ors (2002) 115 FCR 229 referred to

Fancourt & Anor v Mercantile Credits Limited (1983) 154 CLR 87 referred to

James Lahore, Patents, Trade Marks & Related Rights (Butterworths, Australia, 2001)

NOKIA CORPORATION V TRUYEN MAI AND JIMMY MAI
V517 of 2003

KENNY J
2 SEPTEMBER 2003
MELBOURNE


IN THE FEDERAL COURT OF AUSTRALIA

VICTORIADISTRICT REGISTRY

V517 OF 2003

BETWEEN:

NOKIA CORPORATION
APPLICANT

AND:

TRUYEN MAI
FIRST RESPONDENT

JIMMY MAI
SECOND RESPONDENT

JUDGE:

KENNY J

DATE OF ORDER:

2 SEPTEMBER 2003

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.The second respondent herein be removed from the title of…

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AGLC
Nokia Corporation v Mai [2003] FCA 924
Case
[2003] FCA 924
Decision Date

CaseChat Overview and Summary

The case of Nokia Corporation v Mai was heard in the Federal Court of Australia. Nokia Corporation sought summary judgment against Truyen Mai (also known as Jimmy Mai) for trademark infringement. Mai opposed the application and sought orders dismissing the proceeding against him and for costs. The legal issues the Court needed to decide included whether Mai had an arguable defence to Nokia's claim of trademark infringement, and if Nokia was entitled to the relief sought. The Court found that the evidence presented by Nokia was sufficient to establish that Mai had indeed infringed Nokia's trademarks without authorization. The Court further found that Mai's reliance on section 122(1)(c) of the Trade Marks Act 1995 (Cth) was not applicable in this case. The Court granted Nokia's motion for summary judgment and made several orders in Nokia's favour. The Court declared that Mai's use of Nokia's trademarks without authorization constituted trademark infringement. Mai was restrained from using the trademarks in the future and ordered to deliver up all infringing goods and materials for destruction. Mai was also ordered to provide discovery of sales information and to pay damages, profits, and costs to Nokia.

Orders

Orders of the court

1. The second respondent herein be removed from the title of this proceeding pursuant to O 6 r 9 of the Federal Court Rules.

2. The amended statement of claim, amended application and notice of motion herein be amended in accordance with the second amended statement of claim, the second amended application and the amended notice of motion filed herein by the applicant.

THE COURT DECLARES BY CONSENT THAT:

3. The use by the respondent (otherwise known as Jimmy Mai) whether by himself, his employees or agents or otherwise howsoever of any of the following Australian Registered Trade Marks:

(a) Australian Registered Trade Mark No 458364 for NOKIA in class 9;

(b) Australian Registered Trade Mark No 490781 for NOKIA AND DEVICE in class 9

(c) Australian Registered Trade Mark No 808735 for NOKIA in class 16;

(d) Australian Registered Trade Mark No 867057 for NOKIA in classes 9, 18, 25, 38, 41 and 42,

(together referred to as “the Nokia Trade Marks”) or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to:

(e) any of the goods in respect of which the Nokia Trade Marks are respectively registered (“the registered goods”);

(f) goods of the same description as registered goods; or

(g) services that are closely related to registered goods,

not manufactured or provided by or under the authority of the applicant constitutes an infringement of the Nokia Trade Marks.

THE COURT ORDERS BY CONSENT THAT:

4. The respondent (otherwise known as Jimmy Mai) be restrained whether by himself, his employees or agents or otherwise howsoever from infringing any of the Nokia Trade Marks and in particular from using the Nokia Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to:

(a) any of the registered goods;

(b) goods of the same description as registered goods; or

(c) services that are closely related to registered goods,

not manufactured or provided by or under the authority of the applicant or otherwise procuring or inducing any other person to do any of the acts specified in this paragraph (4).

5. The respondent (otherwise known as Jimmy Mai) perform the Deed of Undertaking signed by him and attached as Annexure A hereto.

6. Within fourteen (14) days of the service of these orders upon him, the respondent (otherwise known as Jimmy Mai) deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all goods in his possession, power, custody or control, or the possession, power, custody or control of his employees or agents or otherwise, to which any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the applicant.

7. Within fourteen (14) days of the service of these orders upon him, the respondent (otherwise known as Jimmy Mai) deliver up on oath to the applicant or its duly authorised agent for destruction under supervision of all catalogues, price lists, brochures and other documents and materials in his possession, power, custody or control, or the possession, power, custody or control of his employees or agents or otherwise, bearing any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the applicant.

8. Within twenty-eight (28) days of the service of these orders upon him, the respondent (otherwise known as Jimmy Mai) provide discovery to the applicant verified by affidavit in respect of all sales by him of items bearing the Nokia Trade Marks and any of them.

AND THE COURT FURTHER ORDERS THAT:

9. The respondent (otherwise known as Jimmy Mai) pay the applicant damages for infringement of the Nokia Trade Marks, to be assessed together with interest thereon, or, at the option of the applicant on a date to be fixed, the respondent (otherwise known as Jimmy Mai) account for the profits made by him by the said infringements and pay the applicant the amount found to be due on the taking of such account, together with interest thereon.

10. The respondent (otherwise known as Jimmy Mai) pay the applicant’s costs of the respondent’s motion, notice of which is dated 15 August 2003, on the indemnity basis.

11. Save as provided for in paragraph (10), the respondent (otherwise known as Jimmy Mai) pay the applicant’s costs of the proceeding to date, including the costs of the motion, first dated 7 August 2003 and amended on 19 August 2003.

12. The matter be fixed for mention on a date to be fixed.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

I interpolate here that, in support of his own motion, Mr Mai also relied on an affidavit sworn by him on 18 August 2003 and by Kamilla Jane Shaw on 21 August 2003. In opposition, Nokia relied on an affidavit sworn by Mr Merrick on 20 August 2003 the evidence – summary judgment(a) The evidence for Nokia Exhibited to Mr Stern’s affidavit were certified copies of the relevant Certificates of Trade Mark Registration. In conformity with O 20, r 1, he deposed that he did not believe that Truyen Mai (or Jimmy Mai) had any defence to the allegations made by Nokia in this proceeding. On 13 April 2002 Ms Nguyen went, so she deposed, to Kiosk 3, 80 Harvester Road, Sunshine in Victoria (“the Sunshine premises”). At the Sunshine premises she observed 79 mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 1 mobile phone cover bearing the nokia trade mark for a Nokia 3310 mobile phone; 5 mobile phone neck straps bearing the nokia trade mark; and 5 mobile phone covers bearing the nokia trade mark for Nokia 8310 mobile phones. She bought 3 transparent plastic mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 5 opaque plastic mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 4 mobile phone neck straps bearing the nokia trade mark; 1 black mobile phone pouch bearing the nokia trade mark for a Nokia 8210 mobile phone; and 2 black mobile phone pouches bearing the nokia trade mark for Nokia 8850 mobile phones. Ms Nguyen exhibited to her affidavit a receipt for the purchase of these items. The receipt was endorsed as follows:Direct communications specialistABN: 57 179 034 246A sales attendant also gave her a business card, which read:Jimmy MaiManagerTel: (03) 9312 6700Fax: (03) 9312 6800Mob: 0416 152 687Sunshine Market Place(Next to Village)Kiosk 3 (in front of Big W)80 Harvester RoadSunshine Vic 3020direct communications specialist The evidence of Mr Taylor, who is qualified to identify counterfeit Nokia products, was that all the items bought by Ms Nguyen on 13 April 2002 were counterfeit (in the sense that the nokia trade marks had not been affixed with Nokia’s authority, knowledge or consent and the goods had not been manufactured by or under Nokia’s authority). Amongst other things, Mr Taylor deposed that all the neck straps were counterfeit since Nokia did not manufacture or authorize the manufacture of any mobile phone neck straps. Mr Taylor further deposed that, also on 13 April 2002, he went to a stall at the Laverton market, Leaks Road, Laverton (“the Laverton premises”). Whilst he was there, he counted 22 mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones that were on display and being offered for sale. He purchased one of these phone covers, which, so he deposed, was also counterfeit (in the sense referred to above, including that it bore an unauthorized nokia trade mark). At the time of his purchase, Mr Taylor received a receipt and a business card that gave the same information as the card received by Ms Nguyen.

Decision

Reasons for decision

KENNY J
Pursuant to O 20 r 1 of the Federal Court Rules (“the Rules”), Nokia Corporation (“Nokia”) moves for summary judgment against Truyen Mai, who is also known as Jimmy Mai. Mr Mai also moves for orders that:1.The proceeding against the Second Respondent be dismissed2.The Applicant pay the First Respondent’s cost of the motion3.Such other orders as the Court deems fitI turn first to the application for summary judgment.application for summary judgment Order 20 r 1 of the Rules relevantly provides that:Where, in relation to the whole or any part of the applicant’s claim for relief, there is evidence of the facts on which the claim or part is based, and –(a)there is evidence given by the applicant or by some responsible person that, in the belief of the person giving the evidence, the respondent has no defence to the claim or part…the applicant may move on notice for such judgment for the applicant on that claim or part and the Court may pronounce such judgment and make such orders as the nature of the case requires. Before Nokia can succeed on its summary judgment application, it must appear to the Court that Mr Mai has no arguable defence to Nokia’s claim: see Geoffrey Inc & Ors v Luik & Anor (1997) 38 IPR 555, at 563 and 565 per R D Nicholson J; Flocast Australia Pty Ltd v Purcell & Ors (1997) 39 IPR 177, at 178-179 per Heerey J, citing Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 (“Caterpillar”), at 413-414 per Drummond J. As Drummond J noted in Caterpillar, at 414:[T]here is no justification for importing into the Federal Court rule all the detailed restrictions that the cases identify as applicable to the traditional summary judgment rules. But O 20 is not intended to provide an alternative to trial as the ordinary method of resolving litigation in the court: see Bell v Clare (1989) 23 FCR 274 at 280. Its function is limited to providing an expeditious means of resolving litigation where the applicant can clearly demonstrate that there is no real defence to particular claims made by it.In other words, upon Nokia’s application, the standard of satisfaction required for summary judgment is that stated in Dey v Victorian Railways Commissioners (1949) 78 CLR 62, at 91 per Dixon J and General Steel Industries Inc v Commissioner for Railways (1964) 112 CLR 125, at 129-130 per Barwick CJ.the claim made by nokia Nokia is a Finnish company and is the registered owner of four trade marks variously in Classes 9, 16, 18, 25, 38, 41 and 42 in respect of goods (and services) including electrical and telecommunications apparatus and instruments, carrying cases for communications apparatus and its accessories and accessories and spare parts for such goods (in Class 9) (referred to below as “the Nokia trade marks”). By its application and statement of claim (which have been amended twice) Nokia alleges that Mr Mai has, without its licence or authority, manufactured or caused to be manufactured, imported or caused to be imported, advertised, offered for sale, distributed, supplied and sold goods bearing one or more of the Nokia trade marks. Nokia also alleges that, by reason of this conduct, Mr Mai has breached an enforceable undertaking given by him to Nokia on 9 December 2002.

Ratio Decidendi

Legal Principle Established

Established by: KENNY J

By its motion, Nokia also sought orders that:The Respondent pay the Applicant damages for infringement of the Nokia Trade Marks, to be assessed with interest thereon, or, at the option of the Applicant on a date to be fixed, the Respondent account for the profits made by him by the said infringements and pay the Applicant the amount found to be due on the taking of such account, together with interest thereon.The Respondent provide discovery verified by affidavit to the Applicant within twenty-eight (28) days of the making of these orders in respect of all sales by him of items bearing the Nokia Trade Mark or any of them.Mr Mai gave his consent to orders for discovery, but he opposed any order for damages to be assessed or for an account of profits to be made, in respect of any infringement by him of the Nokia trade marks. Counsel for Mr Mai stated that, whilst Mr Mai consented to the injunctive and declaratory relief sought by Nokia, he did not consent to an order for damages because:even though the respondent has agreed to in effect stop selling these products, it is still submitted that it has not infringed in a manner that would give rise to damages. (transcript 14)consideration of the parties’ positions The authorities established that, when the issue is one of trade mark infringement under s 120 of the Trade Marks Act 1995 (Cth), the central issue to be determined is whether the use complained of is “use by the alleged infringer as a trade mark”: see Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 (“Johnson & Johnson”) at 24 per Gummow J. As his Honour said, referring to Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 426 per Kitto J, this enquiry requires some consideration of the “‘purpose and nature’ of the impugned use”: see Johnson & Johnson at 24. In Johnson & Johnson, at 25, Gummow J summarised the position as follows:[I]t remains the case that the primary function of a trade mark registered in Pt A or B of the register is that of distinguishing the commercial origin of goods or services sold under the mark. The registered mark serves to indicate, if not the actual origin of goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name.Under the Trade Marks Act 1995 (Cth) there is, of course, only one register. Subject to two matters (discussed below) the evidence set out above establishes Nokia’s claim of infringement as particularised in paragraph 4 of Nokia’s second amended statement of claim. Subject to these matters, there can be no doubt that the respondent has infringed the Nokia trade marks. In denying infringement on Mr Mai’s part, counsel for Mr Mai relied on s 122(1)(c) of the Trade Marks Act 1995 (Cth). This provision reads as follows:In spite of section 120, a person does not infringe a registered trade mark when:…(c)the person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services … .