FEDERAL COURT OF AUSTRALIA
Nokia Corporation v Yu (No 2) [2008] FCA 1088
NOKIA CORPORATION v HENRY YU
VID 336 OF 2008
GORDON J
18 JULY 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:
18 JULY 2008
WHERE MADE:
MELBOURNE
THE COURT DECLARES THAT:
1.By his importation into Australia of the items listed in Schedule “A” each bearing one or more of the following Australian registered Trade Marks:
(a) Australian Registered Trade Mark number 458364 for Nokia in Class 9;
(b) Australian Registered Trade Mark number 490781 for Nokia and Device in Class 9;
(c) Australian Registered Trade Mark number 867057 for Nokia in Classes 9, 18, 25, 38, 41 and 42.
(together referred to as “Nokia Trade Marks”) without the licence or authority of the Applicant, the Respondent has infringed the Nokia Trade Marks and each of them.
THE COURT ORDERS THAT:
2.The Respondent be permanently restrained, whether by himself his employees or agents or otherwise, 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 goods in respect of which the Nokia Trade Marks are registered (“the Nokia registered goods”);
(b) goods of the same description as any of the Nokia registered goods;
(c) services that are closely related to any of the Nokia 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 paragraph 2 of this order.
3.The goods seized by the Australian Customs Service (“Customs”) at Sydney pursuant to a Notice of Objection lodged by the Applicant under s 132 of the Trade Marks Act 1995 (Cth), and which are the subject of and referred to in the Notice of Seizure to Objector dated 9 April 2008 and bearing the customs reference number DGR200801302/2kk (“the Notice of Seizure”) sent to the Applicant by a delegate of the Chief Executive Officer of Customs in which the Respondent is identified as the designated owner of such seized goods, be forfeited to the Commonwealth and disposed of as the Chief Executive Officer of Custom directs.
4.The Respondent pay the Applicant’s costs of the proceeding.
5.The proceeding be discontinued subject to the Applicant having liberty to apply to reinstate the proceeding limited to the question of quantum.
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:
18 JULY 2008
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
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- Case
- [2008] FCA 1088
- Decision Date
CaseChat Overview and Summary
The primary legal issues before the court were whether Yu had indeed infringed Nokia's trademarks and, if so, what remedies were appropriate to address the infringement. This included assessing the extent of the infringement and determining whether the trademarks were being used in relation to goods and services that were either identical or similar to those for which Nokia's trademarks were registered. The court also had to consider the appropriate penalties and relief to be imposed on Yu, including the forfeiture of infringing goods and the awarding of costs.
The Federal Court found in favour of Nokia, concluding that Yu had indeed infringed Nokia's trademarks by using them in the course of trade in relation to goods and services that were either identical or closely related to those for which Nokia's trademarks were registered. The court accepted Nokia's argument that Yu's actions constituted a clear case of trademark infringement and were likely to cause confusion among consumers. The court further held that the forfeiture of the seized goods and the imposition of costs on Yu were necessary to effectively deter future infringement and to compensate Nokia for the harm caused by the infringement. The court granted Nokia an injunction permanently restraining Yu from further infringing the trademarks and ordered the forfeiture of the seized goods to the Commonwealth. Additionally, the court awarded costs to Nokia and discontinued the proceeding, subject to Nokia's right to apply for reinstatement limited to the issue of quantum.
Orders
Orders of the court
2. The Respondent be permanently restrained, whether by himself his employees or agents or otherwise, 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 goods in respect of which the Nokia Trade Marks are registered (“the Nokia registered goods”);
(b) goods of the same description as any of the Nokia registered goods;
(c) services that are closely related to any of the Nokia 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 paragraph 2 of this order.
3. The goods seized by the Australian Customs Service (“Customs”) at Sydney pursuant to a Notice of Objection lodged by the Applicant under s 132 of the Trade Marks Act 1995 (Cth), and which are the subject of and referred to in the Notice of Seizure to Objector dated 9 April 2008 and bearing the customs reference number DGR200801302/2kk (“the Notice of Seizure”) sent to the Applicant by a delegate of the Chief Executive Officer of Customs in which the Respondent is identified as the designated owner of such seized goods, be forfeited to the Commonwealth and disposed of as the Chief Executive Officer of Custom directs.
4. The Respondent pay the Applicant’s costs of the proceeding.
5. The proceeding be discontinued subject to the Applicant having liberty to apply to reinstate the proceeding limited to the question of quantum.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
Established by: GORDON J
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