Oakley, Inc v Elkofairi

[2010] FCA 188

FEDERAL COURT OF AUSTRALIA

Oakley, Inc v Elkofairi [2010] FCA 188

Citation:		Oakley, Inc v Elkofairi [2010] FCA 188
Parties:		OAKLEY, INC. v MANSOUR ELKOFAIRI ALSO KNOWN AS SAM ELKOFAIRI
File number:		NSD 99 of 2010
Judge:		YATES J
Date of judgment:		1 March 2010
Legislation:		Trade Marks Act 1995 (Cth), s 137
Date of hearing:	1 March 2010
Place:	Sydney
Division:	GENERAL DIVISION
Category:	No Catchwords
Number of paragraphs:	5
Counsel for the Applicant:	Mr P W Flynn
Solicitor for the Applicant:	Henry Davis York

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 99 of 2010

BETWEEN:	OAKLEY, INC. Applicant
AND:	MANSOUR ELKOFAIRI ALSO KNOWN AS SAM ELKOFAIRI Respondent

JUDGE:	YATES J
DATE OF ORDER:	1 MARCH 2010
WHERE MADE:	SYDNEY

THE COURT ORDERS BY CONSENT THAT:

1.The respondent by himself, his servants, agents or otherwise, be permanently restrained from:

(a)   importing;

(b)   causing or procuring the importation of;

(c)   selling or offering or exposing for sale,

goods bearing one or more of the trade marks as set out in the Schedule to these Orders (Registered Trade Marks), or any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks, and which has been applied without the consent of the applicant.

2.   The respondent whether by himself, his servants, agents or otherwise, be restrained from authorising, aiding, abetting, counselling or procuring any person or entity to:

(a) import;

(b) cause or procure to be imported;

(c) sell or offer or expose for sale,

goods bearing one or more of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks, and which has been applied without the consent of the applicant.

3. Pursuant to s 137(3)(b) of the Trade Marks Act 1995 (Cth) (Act), the goods comprising of 40 pairs of sunglasses and accessories thereof seized by the Australian Customs Service (ACS) on 30 December 2009 and the goods comprising of 20 pairs of sunglasses and accessories thereof seized by the ACS on 6 January 2010 (collectively, Seized Goods), which had had the Registered Trade Marks applied to them without the consent of the applicant, be forfeited to the Commonwealth for disposal at the direction of the Chief Executive Officer of ACS.

4.   Within 14 days of the service of this order upon him, the respondent deliver up to Henry Davis York lawyers at 44 Martin Place, Sydney, NSW, or any other nominated agent of the applicant, all goods, documents and other materials without limitation, in the possession, custody or control of the respondent, his servants, agents or otherwise which bear one or more of the Registered 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 Registered Trade Marks, and which trade mark, name, word, mark, sign or device has been applied without the licence or authority of the applicant (Materials), and that the applicant may destroy or otherwise dispose of the Materials as they see fit.

5.   No order as to costs.

THE COURT FURTHER ORDERS THAT:

6.   The proceeding be otherwise dismissed.

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 99 of 2010

BETWEEN:	OAKLEY, INC. Applicant
AND:	MANSOUR ELKOFAIRI ALSO KNOWN AS SAM ELKOFAIRI Respondent

JUDGE:	YATES J
DATE:	1 MARCH 2010
PLACE:	SYDNEY

REASONS FOR JUDGMENT

(Revised from transcript)

1. This matter was before the court this morning for the purpose of hearing a claim for interlocutory relief. That claim for interlocutory relief included orders sought under s 137 of the Trade Marks Act 1995 (Cth) (the Act). The applicant appears by counsel this morning. There is no appearance by the respondent. The matter has been called outside the court.

2. I have been informed this morning that the parties have reached a settlement which is reflected in short minutes of order which are signed and dated 19 February 2010 (in the case of the respondent) and 25 February 2010 (in the case of the applicant). Those orders will dispose of the proceeding finally subject to a further order being made to the effect that the proceeding otherwise be dismissed. I am informed by counsel for the applicant that that further order is sought this morning. 

3. I have read the affidavits of Kenneth James Taylor, sworn 3 February 2010 and 25 February 2010 (the latter dealing with service of the court process and other documents on the respondent), and the affidavit of Huong Nguyen sworn 26 February 2010 (dealing with further correspondence with the respondent, in particular the sending and receipt of the signed short minutes of order to which I have referred).  In respect of the latter affidavit, I note that the respondent was asked whether he would be attending court this morning.  His indication, according to the affidavit, was that he would be attending.  However, as I have noted, there is no appearance by him.

4. I have also read a bundle of correspondence which was tendered this morning and comprises Exhibit A in the proceeding. That bundle of correspondence deals with communications between the applicant’s solicitors and the Australian Customs and Border Protection Service (ACBPS). I note from that correspondence that the ACBPS does not wish to appear before the court or to be heard in the proceeding: see s 137(2)(b) of the Act. I further note that the ACBPS has no objection to the granting of final relief, including an order providing for the disposal of the goods the subject of the seizures it has made. The orders that have been proposed this morning, and which I will make, in fact provide for forfeiture of the goods in question and for their disposal at the direction of the Chief Executive Officer of the Australian Customs Service.

5. Having considered the evidence that has been placed before the court and having heard counsel for the applicant, I am satisfied that it is appropriate to make the orders which are set out in the short minutes of order. I will make the orders, which are stated to be by consent, as set out in paragraphs 1, 2, 3, 4 and 5 of the signed short minutes of order, which I will initial and date and place with the papers.  I further order that the proceeding otherwise be dismissed.

I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.

Associate:

Dated:        5 March 2010