Nokia Corporation v Millaras

[2010] FCA 1174

FEDERAL COURT OF AUSTRALIA

Nokia Corporation v Millaras [2010] FCA 1174

Citation:		Nokia Corporation v Millaras [2010] FCA 1174
Parties:		NOKIA CORPORATION v RENAE MILLARAS
File number(s):		NSD 1352 of 2010
Judge:		JAGOT J
Date of judgment:		25 October 2010
Catchwords:		PRACTICE AND PROCEDURE – substituted service
Legislation:		Trade Marks Act 1995 (Cth) Federal Court Rules
Date of hearing:	25 October 2010
Place:	Sydney
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	8
Counsel for the Applicant:	Ms GR Rubagotti
Solicitor for the Applicant:	Baker & McKenzie Solicitors
Counsel for the Respondent:	The Respondent did not appear

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 1352 of 2010

BETWEEN:	NOKIA CORPORATION Applicant
AND:	RENAE MILLARAS Respondent

JUDGE:	JAGOT J
DATE OF ORDER:	25 OCTOBER 2010
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The applicant’s notice of motion dated 21 October 2010 be returnable today.

2.Pursuant to Order 7 rule 9 of the Federal Court Rules, service by the applicant on the respondent of the documents specified in schedule “A” (originating process) has been effected by the applicant having taken the following steps for the purposes of bringing the originating process to the notice of the respondent:

(a)on 18 October 2010, sending a copy of the originating process to the respondent by email to the email address “[e-mail]”;

(b)on 18 October 2010, sending a copy of the originating process to the respondent by email to the email address “[e-mail]”;

(c)on 15 and 19 October 2010, leaving a copy of the originating process at the respondent’s last known address, 6/12 Hutton Street, Dandenong, Victoria, 3175; and

(d)on 19 October 2010, sending a copy of the originating process by pre-paid post addressed to the respondent’s last known address, 6/12 Hutton Street, Dandenong, Victoria, 3175.

3.Pursuant to Order 7 rule 9 of the Federal Court Rules, service by the applicant on the respondent of any further documents in these proceedings (including affidavits) may be effected by the applicant taking the following steps for the purposes of bringing such documents to the notice of the respondent:

(a)sending a copy of them to the respondent by email to “[e-mail]”; and

(b)sending a copy of them to the respondent by email to “[e-mail]”.

4.The costs of the applicant’s notice of motion dated 21 October 2010 be reserved.

5.The directions hearing listed at 9.30am on 2 November 2010 be vacated.

6.Confirm that the hearing of the applicant’s claim for interlocutory relief (see Part B of the Application filed 14 October 2010) is listed at 10.15am on 4 November 2010 before Jagot J.

7.The applicant serve a copy of these orders on the respondent in accordance with order 3 above, by 4.00pm today.

8.Liberty to restore on 2 days’ notice.

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 Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 1352 of 2010

BETWEEN:	NOKIA CORPORATION Applicant
AND:	RENAE MILLARAS Respondent

JUDGE:	JAGOT J
DATE:	25 OCTOBER 2010
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. This is a notice of motion filed in respect of an application dated 14 October 2010. The primary application is in respect of alleged infringements of registered trademarks and seeks orders pursuant to, amongst other sections, section 137(3)(b) of the Trade Marks Act 1995 (Cth) that certain goods be forfeited to the Commonwealth for disposal.

2. The notice of motion before me today is brought on an ex parte basis.  It seeks orders that, pursuant to O 7 r 9 of the Federal Court Rules, service by the applicant on the respondent (Renae Millaras) be deemed to have been effected by the applicant having taken steps nominated in subparagraphs (a) through to (d) of the notice of motion.  The notice of motion seeks a further order that service of further documents in the proceedings, including affidavits, may be effected by the applicant taking certain nominated steps.

3. The basis for these orders as sought is contained in a series of affidavits which have been read on the ex parte application.  They are the affidavit of Robert Anthony Arnold sworn 14 October 2010, the affidavit of Kenneth James Taylor sworn 15 October 2010, a second affidavit of Robert Anthony Arnold sworn 21 October 2010, the affidavit of Luba Poukchanski sworn 21 October 2010, the affidavit of Susan Gaye O’Connor sworn 21 October 2010, and the affidavit of Anthony Reymond sworn 21 October 2010.

4. I have also been assisted by short written submissions, prepared by Ms Rubagotti of counsel, setting out the nature of the proceeding and the evidence contained in these affidavits. In short, Ms Rubagotti’s submissions identify that Part 13 of the Trade Marks Act establishes a regime to protect registered Australian trademarks. The evidence before me satisfies me, at least on this ex parte application, that the applicant manufactures telecommunications devices (including mobile telephones) bearing Australian registered trademarks 458364 and 867057, the marks being “NOKIA”.

5. There is evidence of the importation for which the respondent is responsible of 15 mobile telephones bearing the mark “NOKIA” which has not been authorised by the applicant.  The evidence shows that the applicant, despite consistent and concerted efforts, has not been able to effect personal service of the originating process or the supporting affidavits on the respondent as required by the Federal Court Rules.  However, there has been service to an email address and an acknowledgement of receipt. 

6. The evidence establishes that there should be orders for substituted service on the respondent of the originating process and an order that the applicant may serve further documents by the methods indicated.  There is power to make these orders where, for any reason, it is impractical to serve a document in a manner set out by the Rules.  In this case, the evidence satisfies me that it is impractical to serve documents in the proceedings by way of personal service. 

7. Indeed I am also satisfied, as the applicant has submitted, that despite the inability to effect personal service, the originating process has come to the respondent’s attention and it is likely that documents sent to the nominated email address will bring relevant documents to the respondent’s attention. 

8. For these reasons, I consider that orders should be made as sought in the notice of motion.

I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot.

Associate:

Dated:        29 October 2010