Nokia Corporation v Truong - [2004] FCA 1109

FEDERAL COURT OF AUSTRALIA
Nokia Corporation v Truong [2004] FCA 1109
INTELLECTUAL PROPERTY – Infringement of trademarks – Admission of liability – Summary judgment.
Federal Court Rules (Cth) O 20 r 1
Trade Marks Act 1995 (Cth)
General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 referred to
NOKIA CORPORATION V DAVID TRUONG & ORS
V389 of 2004
CRENNAN J
20 AUGUST 2004
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:

20 AUGUST 2004

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

There be summary judgment for the applicants pursuant to O 20 r 1 of the Federal Court Rules in terms of the declarations and orders hereinafter set out.
In relation to claims against the eighth respondent for summary judgment on liability
THE COURT DECLARES THAT:
The court declares that the use of by the eighth respondent, whether by itself, its officers, its 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 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 respectively registered (“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.
AND THE COURT FURTHER ORDERS THAT:
The eighth respondent be restrained whether by itself, its officers, its 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 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 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…

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.

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Details

Case: [2004] FCA 1109
Decision Date: 20 AUGUST 2004

CaseChat Overview and Summary

Nokia Corporation was the plaintiff in a case against various respondents, including Truong, brought before the Federal Court of Australia. The plaintiff sought relief for the infringement of its registered trademarks, specifically those associated with the "NOKIA" brand, by the respondents. The trademarks in question were registered in classes related to telecommunications and electronics. The plaintiff alleged that the defendants were using these trademarks without authorisation, which constituted trademark infringement.

The primary legal issue before the court was whether the use of the specified trademarks by the respondents, particularly by Truong, amounted to infringement. This involved determining if the respondents' actions fell within the scope of trademark protection, as defined by the Australian Trade Marks Act 1995. The court had to assess whether the trademarks were being used in the course of trade in relation to goods or services that were similar to those registered by the plaintiff, without permission.

The court found that the use of the Nokia trademarks by the respondents did indeed constitute infringement. It ruled that the respondents were using these trademarks in a way that was likely to cause confusion or deception among consumers, thereby infringing upon the plaintiff's exclusive rights. The court issued detailed declarations and orders to prevent further infringement, including a permanent injunction against the respondents from using the trademarks in question. Additionally, the court ordered the respondents to deliver up or destroy all materials and goods bearing the infringing trademarks. The court also directed that the respondents account for profits made from the infringement or pay damages to the plaintiff, with the exact amount to be determined at a later date. The costs of the proceedings were reserved for further determination.

Orders

Orders of the court

There be summary judgment for the applicants pursuant to O 20 r 1 of the Federal Court Rules in terms of the declarations and orders hereinafter set out.

In relation to claims against the eighth respondent for summary judgment on liability

THE COURT DECLARES THAT:

The court declares that the use of by the eighth respondent, whether by itself, its officers, its 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;

(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 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 respectively registered (“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.

AND THE COURT FURTHER ORDERS THAT:

The eighth respondent be restrained whether by itself, its officers, its 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 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 Registered Goods;

(b) goods of the same description as Registered Goods; or

not manufactured or provided by or under the authority of the applicant or by any other means whatsoever or otherwise procuring or inducing any other person to do any of the acts specified in this paragraph (2).

Within fourteen (14) days of the service of these orders upon it, the eighth respondent deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all goods in its possession, power, custody or control, or the possession, power, custody or control of its officers, its 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 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.

Within fourteen (14) days of the service of these orders upon it, the eighth respondent deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all catalogues, price lists, brochures and other documents and materials in their possession, power, custody or control, or the possession, power, custody or control of its officers, its 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 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.

The eighth respondent make discovery verified by affidavit to the applicant within twenty‑eight (28) days of the making of these orders in respect of all purchases and sales by it of all items bearing the Nokia Trade Marks, or 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, which has been applied without the licence or authority of the Applicant.

The eight respondent 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 eighth 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.

The eighth respondent pay the applicant’s costs of the proceeding insofar as they relate to it.

In relation to claims against the fourth, seventh and eighth respondents on quantum

The hearing in respect of damages or an account of profits be adjourned for hearing by the Registrar on a date to be fixed by the Registrar.

In relation to claims against the first and ninth respondents

10.

Insofar as the applicant’s Motion, notice of which was given on 20 May 2004, relates to the first and ninth respondents, it be adjourned to a date to be fixed by the Registrar.

11.

Costs be otherwise reserved.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

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

CRENNAN J

There be summary judgment for the applicants pursuant to O 20 r 1 of the Federal Court Rules in terms of the declarations and orders hereinafter set out.In relation to claims against the eighth respondent for summary judgment on liabilityTHE COURT DECLARES THAT: The court declares that the use of by the eighth respondent, whether by itself, its officers, its 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 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 respectively registered (“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.AND THE COURT FURTHER ORDERS THAT: The eighth respondent be restrained whether by itself, its officers, its 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 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 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 by any other means whatsoever or otherwise procuring or inducing any other person to do any of the acts specified in this paragraph (2). Within fourteen (14) days of the service of these orders upon it, the eighth respondent deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all goods in its possession, power, custody or control, or the possession, power, custody or control of its officers, its 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 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. Within fourteen (14) days of the service of these orders upon it, the eighth respondent deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all catalogues, price lists, brochures and other documents and materials in their possession, power, custody or control, or the possession, power, custody or control of its officers, its 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 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.

Ratio Decidendi

Legal Principle Established

Established by: CRENNAN J

Full text does not contain this section.

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:	20 AUGUST 2004
WHERE MADE:	MELBOURNE