Nokia Corporation v Yu
[2008] FCA 1087
•6 June 2008
FEDERAL COURT OF AUSTRALIA
Nokia Corporation v Yu [2008] FCA 1087
Federal Court Rules
Trade Marks Act 1995 (Cth)British American Tobacco Australasia Ltd v Sabar [2007] FCA 1255
Chanel Ltd v Kim (2007) 75 IPR 51
Sony Computer Entertainment Australia Pty Ltd v Angrainni (2000) 48 IPR 49NOKIA CORPORATION v HENRY YU
VID 336 OF 2008
GORDON J
6 JUNE 2008
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 336 OF 2008
BETWEEN:
NOKIA CORPORATION
Applicant
AND:
HENRY YU
Respondent
JUDGE:
GORDON J
DATE OF ORDER:
6 JUNE 2008
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.The requirement for personal service on the Respondent be dispensed with.
2.Service on the Respondent of any document in this proceeding be effected by sending a copy of the document by pre-paid post, addressed to the Respondent at Unit 2, Number 24, Northumberland Road, Auburn, NSW.
3.Service on the Respondent of the:
a)Application and Statement of Claim filed 13 May 2008 be taken to have been effected on 28 May 2008 by leaving a copy of the same in the letterbox at Unit 2, Number 24, Northumberland Road, Auburn, NSW;
b)Notice of Motion dated 2 June 2008 (“the Notice of Motion”), together with the affidavits of Luke Andrew Merrick sworn 26 May 2008, Themis Papas sworn 30 May 2008 and Kenneth James Taylor sworn 2 June 2008, be taken to have been effected on 5 June 2008 by sending a copy of the same by pre-paid express post addressed to the Respondent at Unit 2, Number 24, Northumberland Road, Auburn, NSW.
4.The Chief Executive Officer of The Australian Customs Service (“Customs”) be restrained until the trial of this proceeding or further order from releasing any of the goods the subject of and referred to in the Notice of Seizure to Objector dated 9 April 2008, and sent to the Applicant by Customs under cover of letter marked DGR 200801302 / 2 kk N08/00723.
5.By 4:00pm on 27 June 2008, the Respondent file and serve any defence.
6.The Respondent pay the Applicant’s costs of and incidental to the Notice of Motion.
7.Otherwise costs reserved.
8.The matter be listed for directions on 18 July 2008 at 9:30am.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 336 OF 2008
BETWEEN:
NOKIA CORPORATION
Applicant
AND:
HENRY YU
Respondent
JUDGE:
GORDON J
DATE:
6 JUNE 2008
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
The applicant, Nokia Corporation (“Nokia”), is the owner of registered trade mark numbered 458364 for Nokia in Class 9, registered trade mark 490781 for Nokia and device in Class 9, registered trade mark number 808735 for Nokia in Class 16 and registered trade mark number 867057 for Nokia in Classes 9, 18, 25, 38, 41 and 42 (“the Nokia Trade Marks”).
On 13 May 2008, Nokia filed an application and statement of claim in the Federal Court identifying the Nokia Trade Marks and that each of the marks was registered, subsisting and of full force and effect. The statement of claim went on to allege that the respondent, Mr Yu, without the licence or authority of Nokia had:
… 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 or one or more trade marks which are substantially identical with or deceptively similar to one or more of the Nokia Trade Marks.
The claim went on to identify the allegedly infringing goods as:
… mobile phone accessories including but not limited to mobile phone covers, mobile phone batteries and mobile phone plugs, bearing one or more of the Nokia Trade Marks or one or more trade marks which are substantially identical with or deceptively similar to one or more of the Nokia Trade Marks, which products were not made by or under the licence or authority of [Nokia].
On or about 9 April 2008, the Australian Customs Service (“Customs”) seized eight phone covers, 70 phone batteries and 30 plugs. The consignment of goods was addressed to the respondent at 2/24 Northumberland Road, Auburn, New South Wales, (“the respondent’s alleged address”). The respondent was, therefore, the designated owner of the goods within the meaning of the Trade Marks Act 1995 (Cth) (“the Act”).
The applicant applies for two types of orders. First, an order that the Chief Executive Officer (the “CEO”) of Customs be restrained until the trial of this proceeding, or further order, from releasing any of the goods, the subject of a Notice of a Seizure to Objector dated 9 April 2008. Secondly, an additional order that the application and statement of claim be taken to have been served on the respondent on 28 May 2008 at which time both of those documents were left in the letterbox at the respondent’s alleged address and that service of those documents and other documents be effected in future by sending a copy of them by
pre-paid post addressed to the respondent at that address. In support of both of these applications, I have before me a number of affidavits: an affidavit of Mr Merrick sworn 26 May 2008; an affidavit of Mr Taylor sworn 2 June 2008; and an affidavit of attempted service of a Mr Papas sworn on 30 May 2008.
Part 13 of the Act empowers Customs in accordance with that part, including ss 131-144, to seize goods that are imported into Australia if that importation infringes or appears to infringe a registered trade mark. As I have said, the registered owner of the trade mark, the objector, may give to Customs notice objecting to the importation of those goods that infringe the mark: see s 132. Under s 133(2) of the Act, if the goods to which the section applies have, applied to them or in relation to them, a sign that, in the opinion of the Customs, is substantially identical with, or deceptively similar to, a notified trade mark; and are goods in respect of which the notified trade mark is registered; the CEO of Customs must seize the goods unless he or she is satisfied that there are no reasonable grounds for believing that the notified trade mark is infringed by the importation of the goods. Customs must then, as soon as practicable, give to the designated owner of any seized goods and to the objector a notice identifying the goods and stating that the goods have been seized: see s 134(a) and (b) of the Act.
The Act then contemplates a regime which provides that if the objector has not brought an action for infringement of the notified trade mark in respect of the goods within what is defined as the ‘action period’, Customs must release them to the designated owner: s 136 of the Act.
Significantly, for the purposes of the present application, s 137(5) of the Act provides:
If, after 20 working days from the day on which the action was brought, there is not in force at any time an order of the court directed at the Customs CEO preventing the goods from being released, the Customs CEO must release the goods to their designated owner.
The Act, therefore, contemplates a court order directed to Customs preventing the goods from being released. Moreover, the Act also contemplates that Customs will not be a party to the proceeding: see s 137(2) of the Act. In the present case, Customs has informed the court it does not intend to appear or be joined as party to the application.
It has been held to be appropriate and within the power of the court to make an order directed to Customs, being a non-party to the proceeding: see Sony Computer Entertainment Australia Pty Ltd v Angrainni (2000) 48 IPR 49 at [5] - [9] and British American Tobacco Australasia Ltd v Sabar, [2007] FCA 1255 at [4].
In deciding whether or not to grant an order directed to Customs of the kind sought by the applicant, it is relevant to consider a number of additional matters. First, that Customs does not resist the granting of the relief sought: see Chanel Ltd v Kim (2007) 75 IPR 51 at [35]. In the present case, that is the position here. Secondly, that there is evidence in support of the applicant’s contention that the goods are counterfeit: see Sabar [2007] FCA 1255 at [5] and [6]. There is evidence before the court to satisfy that aspect. Thirdly, that the respondent has not appeared in the proceedings, also what has occurred here.
In the present circumstances, it is appropriate that there be relief sought in accordance with the interlocutory relief sought in the application filed in this court on 13 May 2008 that the CEO of Customs be restrained until the trial of this proceeding, or further order, from releasing any of the goods, the subject of and referred to in the Notice of Seizure to Objector dated 9 April 2008, sent to the applicant by Customs under cover of a letter marked with customer’s reference number DGR 200801302 / 2 kk N08/00723.
That leaves the second application - an order for substituted service and informal service under O 7 rr 9 and 10 of the Federal Court Rules. As I said, I have before me affidavits of attempted service sworn by Mr Papas together with a further affidavit of service sworn by Mr Merrick, deposing to the attempts made by the applicant to serve the respondent, not only with the application and statement of claim but also with the notice of motion of 2 June 2008 seeking substituted orders, orders for substituted service, and the affidavits filed in support of those matters. In the circumstances outlined in those affidavits, it is appropriate for orders for substituted service and informal service to be made in accordance with the orders sought in the Notice of Motion.
I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gordon. Associate:
Dated: 6 June 2008
Counsel for the Applicant: Ms K Beattie Solicitor for the Applicant: Corrs Chambers Westgarth
Date of Hearing: 6 June 2008 Date of Judgment: 6 June 2008
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