Nokia Corporation v Truong

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FEDERAL COURT OF AUSTRALIA

Nokia Corporation v Truong
[2005] FCA 1141

EVIDENCE – admissibility of opinion – evidence of counterfeit goods.

TRADEMARKS – infringement of trademarks – whether accessories or spare parts covered by specification – whether adding material is, or altering, at trade mark avoids infringement – whether the respondents had an arguable defence.

PRACTICE AND PROCEDURE – application for summary judgment – trade mark infringement – no real or arguable defence or triable issue.

Evidence Act 1995 (Cth) ss 76, 78, 79
Federal Court Rules (Cth) O 13 r 2, O 20 r 1
Trade Marks Act 1995 (Cth) ss 120(1), 120(2)

Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 followed
De Cordova v Vick Chemical Co (1951) 68 RPC 103 considered
Dey v Victorian Railways Commissioners (1949) 78 CLR 62 applied
Fancourt & Anor v Mercantile Credits Limited (1983) 154 CLR 87 applied
Fendi Adele SrL and Anor v Friedland (2003) AIPC 91-836 considered
General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 applied
Geoffrey Inc & Ord v Luik & Anor (1997) 38 IPR 555 followed
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 followed
Louis Vuitton Malletier SA v Knierum [2004] FCA 1584 distinguished
Makita v Sprowles (2001) 52 NSWLR 705 followed
Nokia Corporation v Mai (2003) 59 IPR 413 considered
Norwich Pharmacal Co v Commissioners of Customs and Excise [1972] RPC 743 cited
Polaroid Corporation v Sole N Pty Ltd (1981) 1 NSWLR 491 followed
R v Leung and Anor (1999) 47 NSWLR 405 followed

Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 followed

Southern Cross Refrigerating Co v Toowoomba Foundry Ltd (1954) 91 CLR 592 followed

NOKIA CORPORATION v DAVID TRUONG & ORS

V389 of 2004

CRENNAN J
19 AUGUST 2005
MELBOURNE 


IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V 389 OF 2004

BETWEEN:

NOKIA CORPORATION
APPLICANT

AND:

DAVID TRUONG
FIRST RESPONDENT

TELPOWER PTY LTD (ACN 086 347 766)
SECOND RESPONDENT

CHUNG YUN YAU
THIRD RESPONDENT

DIANE CHERYL ARDREY
FOURTH RESPONDENT

BETTA FONES PTY LTD (ACN 100 510 290)
FIFTH RESPONDENT

PHILIP WAHBA
SIXTH RESPONDENT

YOU INTERNATIONAL TRADING PTY LTD (ACN 003 975 479)
SEVENTH RESPONDENT

8 DRAGONS PTY LTD (ACN 097 592 544)
EIGHTH RESPONDENT

KATHAY PTY LTD
NINTH RESPONDENT

JUDGE:

CRENNAN J

DATE OF ORDER:

19 AUGUST 2005

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.   Leave be granted to the applicant to amend its amended statement of claim in the form of the further amended statement of claim dated 17 August 2005.

2.   The applicant pay the respondents’ costs of, occasioned by and thrown away by the amendment.

3.   There be summary judgment pursuant to O 20 r1 of the Federal Court Rules in favour of the applicant and against the first and ninth respondents in the terms of the Declarations and orders hereafter set out.

THE COURT DECLARES THAT:

4.   The use by the…

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Details
Case
[2005] FCA 1141
Decision Date

CaseChat Overview and Summary

Nokia Corporation, a Finnish corporation, brought an action against David Truong and Speedy Link Communications Pty Ltd (the respondents) for the infringement of several registered trademarks. The primary trademark in question was NOKIA, registered under several classes including telecommunications apparatus and instruments. Nokia alleged that the respondents had sold and offered for sale goods bearing the NOKIA trademark without authorization. The respondents did not dispute the sale of the goods but argued that any infringement had ceased since the initiation of the proceedings. The Federal Court of Australia was tasked with deciding on Nokia's application for summary judgment, as well as the admissibility of certain evidence regarding the counterfeit goods.

The court had to decide several legal issues, including whether the respondents had any arguable defence to the infringement claims, whether the sale of accessories or spare parts bearing the NOKIA trademark constituted an infringement, and if the addition of material or alterations to the trademark avoided infringement. Additionally, the court needed to determine if there was an arguable defence presented by the respondents that could withstand Nokia's summary judgment application.

The court found that the respondents had no arguable defence to the claims of trademark infringement. It held that the sale of goods bearing the NOKIA trademark, even if they were accessories or spare parts, constituted an infringement. The court also ruled that any additions or alterations to the trademark did not avoid infringement. Furthermore, the evidence provided by Nokia was deemed admissible and sufficient to support a summary judgment. Given that the respondents had no real or arguable defence, the court granted Nokia's application for summary judgment.

The court declared that the respondents' use of the NOKIA trademark on the specified goods constituted an infringement of Nokia's registered trademarks. It ordered the respondents to cease using the NOKIA trademark and to deliver up all goods bearing the trademark for destruction. Additionally, the respondents were required to account for the profits made from the infringement and pay damages to Nokia. The court also ordered the respondents to pay Nokia's costs of the proceeding.

Orders

Orders of the court

1. Leave be granted to the applicant to amend its amended statement of claim in the form of the further amended statement of claim dated 17 August 2005.

2. The applicant pay the respondents’ costs of, occasioned by and thrown away by the amendment.

3. There be summary judgment pursuant to O 20 r1 of the Federal Court Rules in favour of the applicant and against the first and ninth respondents in the terms of the Declarations and orders hereafter set out.

THE COURT DECLARES THAT:

4. The use by the first and ninth respondents and each of them, whether by themselves, its officers (in the case of the ninth respondent), their 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 class 9,

(together referred to as the ‘Nokia Trade Marks’) and in particular from using the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Nokia Trade Marks in the course of trade on or in relation to:

(e) any of the goods in respect of which the Nokia Trade Marks are registered (the ‘Nokia Registered Goods’); or

(f) goods of the same description as the Nokia Registered Goods,

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

THE COURT FURTHER ORDERS THAT:

5. The first and ninth respondents and each of them be restrained, whether by themselves, its officers (in the case of the ninth respondent), their employees or agents or otherwise howsoever from infringing the Nokia Trade Marks or any of them and in particular from using any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Nokia Trade Marks in the course of trade on or in relation to:

(a) any of the Nokia Registered Goods; or

(b) goods of the same description as any of the Nokia Registered Goods,

not manufactured or provided by or under the authority of the applicant.

6. Within seven (7) days of the date of these orders, the first and ninth respondents and each of them deliver up on oath to the applicant or its duly authorised agent for destruction under supervision all goods in the possession, power, custody or control of the first and ninth respondents or either of them, its officers (in the case of the ninth respondent), their employees or agents or otherwise howsoever to which any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Nokia Trade Marks has been applied without the licence or authority of the applicant.

7. Within seven (7) days of the date of these orders, the first and ninth respondents and each of them deliver up on oath to the applicant or its duly authorised agent for destruction under supervision all catalogues, price lists, brochures and other documents and materials, including materials which are or which are capable of being stored, generated or transmitted via any electronic media in the possession, power, custody or control of the first and ninth respondents or either of them, its officers (in the case of the ninth respondent), their employees or agents or otherwise howsoever bearing any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Nokia Trade Marks without the licence or authority of the applicant.

8. The first and ninth respondents and each of them make discovery verified by affidavit to the applicant within twenty-eight (28) days of the making of these orders in respect of all acquisitions and/or purchases and sales and/or disposals by each of them or on their behalf of all items bearing the Nokia Trade Marks and any of them or any name, word, sign, mark or device which is substantially identical with or deceptively similar to any one or more of the Nokia Trade Marks.

9. The first and ninth respondents and each of them 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, the ninth respondent account for the profits made by it 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 first and ninth respondents pay the applicant’s costs of the proceeding to date (other than those paid pursuant to the order of Crennan J on 27 May 2005) which relate to them.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

In support of its application for summary judgment Nokia relies on the affidavits of Luke Andrew Merrick sworn on 20 May 2004, 1 July 2004, 23 February 2005 and 1 August 2005, Houng Nguyen sworn on 2 June 2004 and 11 March 2005, John Clifton Ramsden sworn on 2 June 2004, Kenneth James Taylor sworn on 7 June 2004, 11 March 2005 and 29 July 2005 and Ying Li Lian sworn on 16 August 2005 (and the exhibits accompanying these affidavits). In opposition, the respondents’ rely on the affidavit of David Truong sworn on 4 June 2005.Applicant’s evidence Exhibited to Mr Merrick’s affidavit of 20 May 2004 were certified copies of the relevant Certificates of Trade Mark Registration. As required by O 20 r 1, Mr Merrick deposed on 23 February 2005 that he did not believe that the respondents’ had any defence to the allegations made by Nokia in this proceeding. According to Ms Nguyen’s affidavit of 2 June 2004, on or about 15 April 2002 she went to a retail store located at 227 Victoria Street, Abbotsford (‘the Abbotsford premises’) and purchased one red mobile phone neck strap bearing the wordNOKIA. The neck strap was attached to a handsfree kit exhibited to Ms Nguyen’s affidavit, along with a receipt for the purchase of this item, which read as follows:‘Original Tax Invoice/Statement 78 Date 15/04/02To KateFrom SPEEDY LINK1 Handsfree with string 12.50 Total 12.50’ Ms Nguyen was also provided with a business card, which relevantly stated:‘SPEEDY LINK COMMUNICATIONSMOBILE PHONES & ACCESSORIESMelbourne Office227 Victoria StreetAbbotsford Vic. 3067Tel: +61-3 9425 9188Fax: +61-3 9425 9199 . . .’ A Geelong office address and postal address were also stated on the business card. Ms Nguyen swore a further affidavit on 11 March 2005 which states that she went to the Abbotsford premises again on or about 26 February 2005 and purchased two mobile phone covers, both of which bore the word NOKIA on them. Ms Nguyen was given another business card on this occasion, which was the same as the one outlined above, except that it started as follows:‘SPEEDY LINK COMMUNICATIONSWHOLESALE – IMPORT/EXPORTMOBILE PHONE, ACCESSORIES & PARTS . . .’ Mr Ramsden’s affidavit of 2 June 2004 states that he went to the Abbotsford premises on or about 13 May 2003 and observed in excess of 50 mobile phone covers there bearing the trademark NOKIA being displayed and offered for sale. Mr Ramsden selected and purchased two mobile phone covers, both of which had the word NOKIA on them in which the top and bottom of the ‘O’ was rubbed out, so that the ‘O’ is reduced to being like two rounded brackets separated by a small space (referred to hereinafter as a ‘broken O’). He was provided with a receipt, that was exhibited to his affidavit (along with the phone covers), which relevantly stated:‘Original Tax Invoice/Statement 67 Date 13/05/03To JohnFrom Speedy… . . . 2 x HN08210L8310CK 20Total 55’ Mr Ramsden states that he attended the Abbotsford premises again on or about 24 September 2003. On this day he observed approximately 20 mobile phone covers bearing the trademark NOKIA being displayed and offered for sale. Mr Ramsden purchased two more phone covers that bore the word NOKIA with a ‘broken O’ and was not provided with a receipt. Mr Ramsden was provided with two business cards identical to the ones given to Ms Nguyen on occasions he visited the Abbotsford premises. He received one of each type of card given to Ms Nguyen (as detailed in paragraphs 11–13).

Decision

Reasons for decision

CRENNAN J
Leave was sought by the applicant, pursuant to O 13 r 2 of the Rules to further amend the amended statement of claim to make it plain that the first respondent has been sued in respect of alleged infringements because he has been the sole registered director and guiding mind of the ninth respondent and/or participated in the management of the ninth respondent and/or its business. As this amendment facilitates determination of the real questions in controversy, leave to amend has been granted on the usual terms.Application for summary judgment O 20 r 1 of the Rules provides that:‘ (1)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; or(b)the respondent’s defence discloses no answer to the applicant’s 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.’ The authorities make it clear that the jurisdiction to give summary judgment ought to be exercised with caution: General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129. Before the applicant can succeed on its summary judgment application the Court must be satisfied that the respondents’ have no arguable defence to the applicant’s claim: see Dey v Victorian Railways Commissioners (1949) 78 CLR 62 at 91; General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129-130; Geoffrey Inc & Ord v Luik & Anor (1997) 38 IPR 555 at 563, 565. Drummond J noted in Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 at 414:‘It follows that, from the existence within the procedures of this court of the case management system, that it is the text of O 20, r 1 which must govern the outcome of the present application: there 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.’ Applicant’s claim The applicant, Nokia, is a company incorporated in Finland and the registered owner of the following four Australian trade marks in respect of goods that mainly relate to telecommunications apparatus and instruments (together referred to as ‘the Nokia Trade Marks’):(a)Australian Registered Trade Mark No. 458364 for NOKIA in class 9 in respect of the following relevant specification of goods:‘. . . electrical and telecommunications apparatus and instruments; apparatus for the recording, transmission or reproduction of sound or images;…all included in class 9”;(b)Australian Registered Trade Mark No. 490781 for NOKIA AND DEVICE in class 9 in respect of the following relevant specification of goods:‘ . . . electrical and telecommunications apparatus and instruments; apparatus for the recording, transmission or reproduction of sound or images; . . . all included in class 9’;(c)Australian Registered Trade Mark No. 808735 for NOKIA in class 16 in respect of the following relevant specification of goods:‘Brochures, catalogues, printed matter, books, magazines, calendars, stationery, newsletters, pamphlets, leaflets, directories and manuals’;(d)Registered Trade Mark No. 867057 for NOKIA in classes 9, 18, 38, 41 and 42 in respect of the following relevant specification of goods for class 9:‘Apparatus for recording, storing, transmission, receiving or reproducing of…sound…transmission equipment for use in communications…telephones…housings or casings or covers, clips…holders…headsets, handsfree devices,…accessories and spare parts for all aforesaid goods; all included in class 9.’The argument in respect of Trade Mark No. 867057 was effectively confined to the class 9 registration.

Ratio Decidendi

Legal Principle Established

Established by: CRENNAN J

Full text does not contain this section.