Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 12)
[2022] FedCFamC2G 1030
Federal Circuit and Family Court of Australia
(DIVISION 2)
Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 12) [2022] FedCFamC2G 1030
File number(s): SYG 2771 of 2019 Judgment of: JUDGE BAIRD Date of judgment: 28 November 2022 Catchwords: PRACTICE AND PROCEDURE – proposed tender of foreign judgment – objection to tender under s 91 of the Evidence Act – foreign judgment not used, or sought to be used to establish facts in issue in the proceeding – foreign judgment admitted into evidence for limited purposes pursuant to s 136 Evidence Act Legislation: Evidence Act 1995 (Cth) ss 67, 91, 129, 136
Evidence Regulations 2018 (Cth) reg 6
Division: Division 2 General Federal Law Number of paragraphs: 20 Date of last submission/s: 28 November 2022 Date of hearing: 2-6 August 2021, 9-11 August 2021, 13 August 2021, 19‑20 August 2021, 24‑25 March 2022, 27 April 2022, 14‑17 June 2022, 20-24 June 2022, 27‑28 June 2022, 12 August 2022, 5‑9 September 2022, 28‑30 November 2022, 1‑2 December 2022 Place: Sydney Counsel for the Applicants: Mr J Hennessy SC with Mr C McMeniman Solicitor for the Applicants: Gilbert + Tobin Counsel for the First, Second, Fifteenth and Seventeenth Respondents: Mr E Heerey KC with Mr D Parish Solicitor for the First, Second, Fifteenth and Seventeenth Respondents: H+H Lawyers Counsel for the Sixth Respondent: Mr Sirtes SC with Mr B Le Plastrier Solicitor for the Sixth Respondent: Gear and Co Lawyers Solicitor for the Ninth and Fourteenth Respondents: Mr S Li, Viska Lawyers and Advisors Twelfth and Thirteenth Respondents: Ms S Huo appeared for herself and with leave for the Twelfth Respondent Counsel for the Sixteenth Respondent: Mr A Di Francesco Solicitor for the Sixteenth Respondent: HWL Ebsworth Lawyers REASONS FOR JUDGMENT
(Ex tempore, revised from transcript)Judge Baird
Introduction
In the course of final hearing of this proceeding the applicants seek leave to read the second affidavit of Ms Hiu Ming Fonia Chiu and the fifth affidavit of Mr Daniel Plane both sworn 7 September 2022, and to tender a copy of the criminal judgment of the People’s Court of Yangpu District, Shanghai (2021) Hu 0110 Xing Chu No. 1018 and an English translation (Chinese Judgment) both exhibited as Exhibit FC‑2 to Ms Chiu’s affidavit. It is convenient here to note that a copy of the Chinese Judgment (but not the English translation) is also exhibited as Exhibit DP‑8 to Mr Plane’s fifth affidavit. The applicants provided an outline of submissions in support of their application. The participating respondents have opposed the application, or made submissions to similar effect.
It is not genuinely in dispute that on 31 August 2022, the fifth respondent, Mr Emilio Wang, was convicted by the People’s Court of Yangpu District, Shanghai (the Shanghai Court) at first instance of the crime of counterfeiting the applicants’ registered freezeframe trade marks.
It further does not appear to be genuinely in dispute that the Chinese Judgment (Exhibit FC‑2) is a true copy of the published reasons for judgment of the Shanghai Court in matter (2021) Hu 0110 Xing Chu No. 1018, together with an English translation made as Ms Chiu attests in her affidavit. I am satisfied on the material before me that Exhibit FC‑2 (and thus also Exhibit DP‑8), comprises a true copy of the published reasons of the Chinese Judgment, and pursuant to s 129(3) of the Evidence Act, it is not excluded from admission or use in this proceeding.
For the reasons that follow, I admit the Chinese Judgment, subject to s 136 EvidenceAct 1995 (Cth) limitations for the limited purposes set out below.
Discussion
I am satisfied on the material before me that on 14 September 2022 the applicants provided written notice to the respondents of their intention to tender and rely on the representations contained within the Chinese Judgment in accordance with the notice requirements under s 67(1) of the Evidence Act and reg 6 of the Evidence Regulations 2018 (Cth).
Subject to two matters, the existence, date and legal effect of the Chinese Judgment is not genuinely in dispute. Those two matters are:
(a)first, whilst there is no evidence before me whether the matter is on appeal, or going on appeal, Mr Li, the legal representative for the ninth and fourteenth respondents, proffered two documents which he submits disclose that there is some application for appeal on foot or to like effect. The documents appear to be in Chinese. One of the documents has some annotations on it in English. Both documents are unintelligible to the Court, and I am not satisfied that they are, or purport to be, what Mr Li contends them to be. Accordingly, I reject Mr Li’s tender; and
(b)secondly, it is not known whether there will or may be compensation recovered in the future by the victim identified in the Chinese Judgment, namely, the owner of the Chinese freezeframe trade marks, Self Care.
I am cognisant of the prima facie position under s 91(1) of the Evidence Act, and the assurance – stated emphatically by the applicants – that they do not seek to tender the Chinese Judgment or read it into evidence to prove the existence of facts that were in issue in the criminal proceeding in China.
I am satisfied that there is some relevance to this proceeding of some parts of the Chinese Judgment on which the applicants wish to rely, and a part of the Chinese Judgment on which Mr Di Francesco, counsel for the sixteenth respondent, Australian Vitamin Plus (AVP), has submitted that if the Chinese Judgment is admitted into evidence AVP seeks to rely. I expand upon these matters below.
Purpose of tendering the Chinese Judgment
The applicants first seek to rely on the Chinese Judgment for the fact of the Chinese Judgment. I am satisfied that it may be admitted for that fact.
The second purpose for which the applicants wish to rely on the Chinese Judgment is for the purpose of showing that documents relating to counterfeit freezeframe Products that are referred to in the Chinese Judgment have not been discovered or adduced by any respondent in this proceeding, particularly by the sixth respondent, Mr Skelin. They point to several parts of the Chinese Judgment as disclosing the existence of such documents before the Shanghai Court. I will identify these parts below. As I explain below, I am not satisfied that the Chinese Judgment discloses three of the four documents the applicants say the Chinese Judgment refers.
Relevance of the Chinese Judgment
I turn first to the relevance of the Chinese Judgment and its use in this proceeding.
First, as I have adverted to above, I accept the Chinese Judgment is relevant as it identifies that Mr Emilio Wang has been convicted at first instance by a Chinese court – the Shanghai Court – of the crime of counterfeiting Self Care’s registered freezeframe trade marks in China, with a fixed term of imprisonment imposed of three years and six months and a fine of RMB1.75 million; that the Shanghai Court found the crime was “with very serious circumstances” justifying a non‑suspended sentence between three years and seven years and with a fine pursuant to Article 213 of the Criminal Law of the People’s Republic of China (1997 Amendment); and part of the Chinese Judgment included an order for seized counterfeit freezeframe Products and other items of evidence, including Mr Emilio Wang’s mobile phone and laptop, to be confiscated. In saying this, however, I emphasise that the applicants do not seek to, and will not be permitted to, rely on that evidence as establishing any fact in issue in this proceeding of counterfeit freezeframe Products.
Secondly, the fact of the Chinese Judgment is relevant to the fourteenth respondent Mr Yulin Wang’s claims during his cross‑examination – which took place after the date of the Chinese Judgment – that Mr Emilio Wang is merely “under review as a suspect” and thus is not in prison or detention. I note in this regard, however, Mr Li’s concession this morning to the contrary - that it is a fact that Mr Emilio Wang is in detention. I accept that the Chinese Judgment is relevant to Mr Wang’s claims.
Thirdly, the applicants seek to rely on the Chinese Judgment to establish that no issue estoppel arises in relation to matters alleged in this proceeding from the criminal conviction in China the subject of the Chinese Judgment. I am satisfied that the Chinese Judgment may be relied upon for this purpose.
Fourthly, the applicants seek to rely on the Chinese Judgment to show that no damages were recovered or are recoverable by the applicants in the proceeding the subject of the Chinese Judgment. Whilst this is apparent from the face of the Chinese Judgment, Mr Di Francesco has submitted this morning that there may be some possibility of future recoverability further to the Chinese Judgment, and that if that recovery transpires the applicants should inform the Court and parties so that no double recovery occurs. In the event that the applicants do obtain recovery, I expect them to inform the Court and the represented parties accordingly, as Mr Di Francesco has foreshadowed.
In [21] of the applicants’ outline of submissions, the applicants submit that the Chinese Judgment refers to documents being:
(a)records of conversations between Mr Emilio Wang and “Shigao Pan” in relation to punishing Ms Amoroso;
(b)communications between Mr Skelin and Ms Weiwei (Sarah) Lin in which Mr Skelin purports to be a right holder, including sending the letter of authorisation;
(c)communications between Mr Skelin and Mr Emilio Wang in relation to developing the Chinese market; and
(d)records of discussions between Mr Skelin and Ms Lin in relation to the production of the eye cream,
and that none of these documents have been produced or adduced by Mr Skelin in this proceeding.
In relation to sub-paragraph (a) above, I am satisfied that the Chinese Judgment refers to documents recording conversations between Mr Emilio Wang and “Shigao Pan” in relation to punishing Ms Amoroso, as set out on page 19 of Exhibit FC‑2, a translation of page 2 of the Chinese Judgment, in the first clause of the sentence: “Combined with the conversation record between Kefei (Emilio Wang) and Shigao Pan in relation to punishing Sonia ...” I note that documents in evidence in this proceeding disclose that “Shigao Pan” is Mr Skelin’s Chinese name or alias.
Otherwise, I am not satisfied that the places in the Chinese Judgment identified by the applicants in support of the matters set out in sub-paragraphs (b)‑(d) above evidence documents before the Shanghai Court. In sum, I accept counsel for the sixth respondent Mr Le Plastrier’s submission that in each of the three identified respects (in sub‑paragraphs (b)‑(d) above), objectively looking at the corresponding parts of the Chinese Judgment identified by the applicants, what is set out is, first, an argument, secondly, depends on the testimony of the accused who is established as being a criminal and convicted as such, and thirdly, that in each instance looking at the part of the Chinese Judgment, I cannot be satisfied that there is identified a document.
If the Chinese Judgment is to be admitted for any purpose, Mr Di Francesco seeks to tender or rely on paragraph [4] of the record of evidence contained at pages 6 and 7 of the Chinese Judgment (pages 23 and 24 of Exhibit FC‑2). I am satisfied that paragraph [4] identifies and records evidence as described in the first three lines of [4] of the Chinese Judgment. Mr Di Francesco submits that AVP is not seeking to rely on the conclusions or findings of the Shanghai Court. Accordingly, there will be a s 136 Evidence Act limitation on the use that paragraph [4] of the Chinese Judgment can be used in this proceeding.
With the above qualifications and limitations I admit the Chinese Judgment. The affidavits identified above in [1] are read in the proceeding.
I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird. Associate:
Dated: 20 December 2022
SCHEDULE OF PARTIES
<SYG 2771 of 2019> Applicants
First Applicant:
SELF CARE CORPORATION PTY LTD
ACN 132 213 113Second Respondent:
SELF CARE IP HOLIDNGS PTY LTD
ACN 134 308 151Respondents
First Respondent:
GREEN FOREST INTERNATIONAL PTY LTD
ACN 607 602 988Second Respondent:
YAOAN (ERIC) CHEN
Third Respondent:
YILIN TRADING PTY LTD
ACN 626 244 479Fourth Respondent:
FREEZEFRAME CHINA CO PTY LTD ACN 621 016 975
Fifth Respondent:
KEFEI (EMILIO) WANG
Sixth Respondent:
PASCAL SKELIN
Seventh Respondent:
EPAQ INTERNATIONAL PTY LTD ACN 608 870 588
Eighth Respondent:
QUANJIAN PTY LTD
Ninth Respondent:
YIPING YANG
Tenth Respondent:
TAOYU PAN
Eleventh Respondent:
KEFEI (IVAN) WANG
Twelfth Respondent:
ZUREN INTERNATIONAL PTY LTD
Thirteenth Respondent:
SIQI HUO
Fourteenth Respondent:
MR YULIN WANG
Fifteenth Respondent:
E-GO CHANNEL PTY LTD
Sixteenth Respondent:
AUSTRALIAN VITAMIN PLUS PTY LTD
Seventeenth Respondent:
YAN (CYNTHIA) LI
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