Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 16)
[2024] FedCFamC2G 738
•15 August 2024
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 16) [2024] FedCFamC2G 738
File number(s): SYG 2771 of 2019 Judgment of: JUDGE BAIRD Date of judgment: 15 August 2024 Catchwords: INTELLECTUAL PROPERTY – CONTRACT – Applicants allege contract (agency agreement) – breach of contract by fourth and seventh respondents – applicants allege tortious interference by the first, second, third, fifth, sixth, eighth, twelfth, fifteenth, sixteenth and seventeenth respondents, including as joint tortfeasors, with the contractual relations between the first applicant and the fourth and seventh respondent – inducing or procuring breaches of contracts – preventing or hindering the performance of contracts – applicants seeking compensatory damages for breach of contract and inducing breach of contract – applicants seeking equitable damages including reimbursement for the difference between the standard wholesale price and the price given based on the representations of the respondents
COPYRIGHT – Applicants allege copyright infringement, including liability as joint tortfeasors – applicants allege wrongful conduct of the respondents in relation to the manufacture, distribution, marketing, sale and supply of counterfeit freezeframe products in both Australia and China – applicants allege wrongful conduct of the respondents regarding the purchase for resale, sale, supply, and distribution of products in both Australia and China – applicants seeking compensatory damages in the alternative to an account of profits – damage to value of intellectual property – harm to applicants’ reputation and goodwill – applicants seeking additional damages under s 115(4) of the Copyright Act 1968 (Cth)
TRADE MARKS – Trade mark infringements in Australia – applicants allege infringement of applicants’ Australian registered freezeframe trade marks with regard to counterfeit freezeframe products – liability as joint tortfeasors – counterfeit products – trade mark infringements in China – infringements of applicants’ Chinese registered freezeframe trademarks – liability as joint tortfeasors – applicants seeking compensatory damages – diminution in the value of applicants’ freezeframe registered trademarks in both Australia and China – applicants seeking additional damages under s 126(2) of the Trade Marks Act 1995 (Cth) – additional damages for malicious trade mark infringement and under serious circumstances under Article 63 of the China Trade Mark Law
PASSING OFF – Applicants allege the respondents engaged in passing off in respect of counterfeit freezeframe products – liability for passing-off as joint tortfeasors – representations that the respondents were authorised to distribute freezeframe products in Australia – applicants seeking compensatory damages – applicants seeking exemplary damages
AUSTRALIAN CONSUMER LAW (ACL) – Applicants allege misleading or deceptive conduct in contravention of the ACL – representations as to the authenticity of counterfeit freezeframe products – representations regarding the sole and authorised distribution of freezeframe products in China – representations regarding the authorisation of distribution of freezeframe products in Australia – representations regarding the capacity and capability of selling large quantities of freezeframe products at high margins – breach of duty of care or liability as joint tortfeasors arising from the representations – misleading and deceptive conduct arising from the representations – breach of duty of care or liability as joint tortfeasors by silence – applicants seeking compensatory damages
BREACH OF CONFIDENCE – Applicants allege breach of confidential information – knowing involvement or assistance in breaches of confidence – obligation of confidence arising from contractual relations between the parties and pursuant to a Non-Disclosure Agreement – applicants seeking compensatory damages
BREACH OF FIDUCIARY DUTIES – Applicants allege breach of fiduciary duties arising from the contended relationships of confidence and agency – accessorial liability for breaches of fiduciary duties – applicants seeking compensatory damages – applicants seeking additional pecuniary relief based on the profits that the respondents derived from the supply of freezeframe products in Australia
NEGLIGENT MISSTATEMENT – Applicants allege negligent misstatement – duty to exercise reasonable care in making representations – applicants seeking compensatory damages – applicants seeking equitable damages including reimbursement for the difference between the standard wholesale price and the price given based on the representations of the respondents
CROSS-CLAIM – First, second, fifteenth and seventeenth respondents bring cross claim against the first applicant alleging misleading and deceptive conduct by silence in contravention of s 18 of the ACL – held cross-claim not made out
Legislation: Competition and Consumer Act 2010 (Cth)
Copyright Act 1968 (Cth) ss 32, 36, 37, 38, 92, 115
Evidence Act 1995 (Cth) ss 69, 136, 140, 190
Trade Marks Act 1995 (Cth) ss 4, 20, 120, 122, 122A, 126
Cases cited: ACCC v Michigan Group Pty Ltd [2002] FCA 1439
ACCC v Woolworths Group Ltd (2020) 281 FCR 108; [2020] FCAFC 162
Allstate Life Insurance Co v Australia and New Zealand Banking Group Ltd [1995] FCA 1368; (1995) 58 FCR 26
Anchorage Capital Master Offshore Ltd v Sparkes (No 3); Bank of Communications Co Ltd v Sparkes (No 2) [2021] NSWSC 1025
Apand Pty Ltd v The Kettle Chip Co Pty Ltd (1994) 52 FCR 474; (1994) 30 IPR 337
Bathurst Regional Council v Local Government Financial Services Pty Ltd (No 5) [2012] FCA 1200
Bill Acceptance Corp Ltd v GWA Ltd (1983) 78 FLR 171; (1983) 1 IPR 496; 50 ALR 242
Blatch v Archer (1774) 1 Cowp 63; (1774) 98 ER 969
BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363; (1976) 51 ALJR 254
Bodum v DKSH Australia Pty Limited [2011] FCAFC 98; (2011) 280 ALR 639; (2011) 92 IPR 222
Brambles Holdings Ltd v Bathurst City Council (2001) 53 NSWLR 153; [2001] NSWCA 61
British South Africa Co v Companhia de Moçambique [1893] AC 602
Brookfield Multiplex Ltd v Owners Corp Strata Plan 61288 [2014] HCA 36; (2014) 254 CLR 185
Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60; (2004) 218 CLR 592
Chandra v Perpetual Trustees Victoria [2007] NSWSC 694; (2007) 13 BPR 24
Communications, Electrical, Electronic, Energy, Information, Postal, Plumbing & Allied Services Union of Australia v Australian Competition and Consumer Commission [2007] FCAFC 132; (2007) 162 FCR 466
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302
ConAgra; In-N-Out Burgers Inc v Hashtag Burgers Pty Ltd [2020] FCA 193; (2020) 150 IPR 73
Converse Inc v Conley (UK) Limited [2012] EWPCC 24
Cummings v Lewis (1993) 41 FCR 559
Daebo Shipping Co Ltd v The Shop Go Star
Demagogue Pty Ltd v Ramensky & Anor (1992) 110 ALR 608
Donau Pty Ltd v ASC AWD Shipbuilder Pty Ltd [2018] NSWSC 1273
Electricity Generation Corporation v Woodside Energy Limited (2014) 251 CLR 640; [2014] HCA 7
Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; (2016) 118 IPR 239
GC NSW Pty Ltd v Galati [2020] NSWCA 326
General Newspapers Pty Ltd v Telstra Corp (1993) 45 FCR 164; (1993) 117 ALR 629
Geneva Laboratories Limited v Prestige Premium Deals Pty Ltd (No 5) [2017] FCA 63; 122 IPR 279
Girchow Enterprises Pty Ltd v Ultimate Franchising group Pty Ltd [2023] FCA 420
Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82; (1984) 55 ALR 25
Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514; (2020) 159 IPR 186
HIH Insurance Limited (in liquidation) & Anor v Adler [2007] NSWSC 633
Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd [2018] FCAFC 105; (2018) 264 FCR 422
Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348; (1992) 111 ALR 577; (1992) 25 IPR 65
Janssen-Cilag Pty Limited v Pfizer Pty Ltd (1992) 37 FCR 526; 109 ALR 638
Jedis Ltd v Vodafone NZ Limited [2012] NZHC 2448
Jones v Dunkel [1959] HCA 8; (1969) 101 CLR 298
Kane’s Hire Pty Ltd v Anderson Aviation Australia Pty Ltd [2023] FCA 381
Kingsgrove RSL v Spasevski [2002] NSWCA 342
KK Sony Computer Entertainment Co v Van Veen [2006] FCA 1787; (2006) 71 IPR 79
Lanzer v Australian Broadcasting Corporation [2021] FCA 1283
LED Technologies Pty Ltd v Roadvision Pty Ltd (2012) 199 FCR 204; [2012] FCAFC 3
Lehrmann v Network Ten Pty Limited (Trial Judgment) [2024] FCA 369
Lucasfilm Ltd v Ainsworth [2012] 1 AC 208; (2011) 92 IPR 647; [2011] UKSC 39
Masters v Cameron (1954) 91 CLR 353, 360-362; [1954] HCA 72
Moti v The Queen [2011] HCA 50; (2011) 245 CLR 456
Mount Bruce Mining Pty Limited v Wright Prospecting Pty Limited (2015) 256 CLR 104; [2015] HCA 37
Neat Holdings Pty Ltd v Karajan Holdings Pty Ltd [1992] HCA 66; (1992) 110 ALR 449
New Aim Pty Ltd v Leung [2022] FCA 722
Objectivision Pty Ltd v Visionsearch Pty Ltd [2014] FCA 1087; (2014) 108 IPR 244
Optus Networks Pty Ltd v Telstra Corporation Ltd (2010) 265 ALR 281; [2010] FCAFC 21
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191
Perre v Apand Pty Ltd [1999] HCA 36; (1999) 198 CLR 180
Placer Development Ltd v the Commonwealth (1969) 121 CLR 353
Potter v Broken Hill Pty Co Ltd [1906] HCA 88; (1906) 3 CLR 479
Prestige Lifting Services Pty Ltd v Williams [2015] FCA 1063; 333 ALR 674
Qantas Airways Ltd v Gama [2008] FCAFC 69; (2008) 167 FCR 537
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491; (1990) 17 IPR 1
Regie Nationale des Usines Renault v Zhang [2002] HCA 10; (2002) 210 CLR 491
Rhone-Poulenc v Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477
Roberts-Smith v Fairfax Medica Publications Pty Limited (No 41) [2023] FCA 555 at [96]-[110]
Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 9) [2021] FCCA 1866
Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 14) [2023] FedCFamC2G 868
Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 3) [2021] FCCA 1277
Skinner v Redmond Family Holdings Pty Ltd [2017] NSWCA 329; (2017) 123 ACSR 593
State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) (2021) 164 IPR 420; [2021] FCA 137
Sully v English [2022] VCSA 184
Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157; (2002) 234 FCR 549; (2002) 55 IPR 354
Tepko Pty Ltd v Water Board [2001] HCA 19; (2001) 206 CLR 1
TS Production LLC v Drew Pictures Pty Ltd [2008] 80 IPR 548; (2008) 172 FCR 433; (2008) 80 IPR 548
Unilever Australia Ltd v Beiersdorf Australia Ltd [2018] FCA 2076
Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd (2020) 150 IPR 11; [2020] FCA 82
Verrocchi v Direct Chemist Outlet Pty Ltd (2016) 247 FCR 570; [2016] FCAFC 104
Wright v Gasweld Pty Ltd
Yorke v Lucas [1985] HCA 65; (1985) 158 CLR 661
Young Investments Group Pty Ltd v Mann [2012] FCAFC 107; 293 ALR 537
Division: Division 2 General Federal Law Number of paragraphs: 2180 Date of last submission/s: 22 January 2024 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 2022,5‑6 September 2023, 11 and 13 September 2023 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 Heery KC with Mr D Parish Solicitor for the First, Second, Fifteenth and Seventeenth Respondents: H + H Lawyers Solicitor for the Third Respondent: No appearance by or on behalf of the third respondent Solicitor for the Fourth Respondent: No appearance by or on behalf of the fourth respondent Solicitor for the Fifth Respondent: No appearance by or on behalf of the fifth respondent Counsel for the Sixth Respondent: Mr G Sirtes SC with Mr B Le Plastrier Solicitor for the Sixth Respondent: Gear and Co Lawyers Solicitor for the Seventh Respondent: No appearance by or on behalf of the seventh respondent Solicitor for the Eighth Respondent: No appearance by or on behalf of the eighth respondent Solicitor for the Ninth and Fourteenth Respondents: Mr S Li, Viska Lawyers and Advisors Solicitor for the Tenth Respondent: No appearance by or on behalf of the tenth respondent Solicitor for the Eleventh Respondent: No appearance by or on behalf of the eleventh respondent Solicitor for the Twelfth and Thirteenth Respondents: Ms Siqi Huo appeared on behalf of 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 ORDERS
SYG 2771 of 2019 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: SELF CARE CORPORATION PTY LTD
First Applicant
SELF CARE IP HOLDINGS PTY LTD
Second Applicant
AND: GREEN FOREST INTERNATIONAL PTY LTD
First Respondent
YAOAN (ERIC) CHEN
Second Respondent
YILIN TRADING PTY LTD (and others named in the Schedule)
Third Respondent
ORDER MADE BY:
JUDGE BAIRD
DATE OF ORDER:
15 AUGUST 2024
THE COURT DECLARES THAT:
1.Each of the following respondents have engaged in misleading and/or deceptive conduct under s 18 of the Australian Consumer Law (ACL) or were involved in and are liable for the contraventions alleged in the Further Amended Statement of Claim dated 13 May 2021 (FASOC):
(a)the first respondent, Green Forest International Pty Ltd;
(b)the second respondent, Mr Yaoan (Eric) Chen;
(c)the third respondent, Yilin Trading Pty Ltd;
(d)the former fourth respondent, Freezeframe China Co Pty Ltd (in liquidation);
(e)the fifth respondent, Mr Kefei (Emilio) Wang;
(f)the sixth respondent, Mr Pascal Skelin;
(g)the seventh respondent, EPAQ International Pty Ltd;
(h)the eighth respondent, Quanjian Pty Ltd;
(i)the eleventh respondent, Mr Keifei (Ivan) Wang;
(j)the fifteenth respondent, E‑Go Channel Pty Ltd; and
(k)the seventeenth respondent, Ms Yan (Cynthia) Li.
2.Each of the following respondents have infringed or are liable for infringing the Self Care AU Trade Marks (as defined in [26] of the FASOC) and the Self Care IP AU Trade Marks (as defined in [27] of the FASOC) (collectively, the Trade Marks) in Australia:
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)the sixteenth respondent, Australian Vitamin Plus Pty Ltd (AVP Pty Ltd); and
(l)Yan Li.
3.Each of the following respondents have engaged in passing‑off or are liable for passing‑off:
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)AVP Pty Ltd; and
(l)Yan Li.
4.Each of the following respondents have infringed or alternatively authorised or are otherwise liable for the infringement of the Applicants’ copyright in the Freezeframe product packaging as identified in paragraphs [31] of the FASOC:
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)AVP Pty Ltd; and
(l)Yan Li.
5.Each of the following have breached their fiduciary duties to the applicants:
(a)EPAQ International Pty Ltd;
(b)Freezeframe China Co Pty Ltd;:
(c)Emilio Wang; and
(d)Pascal Skelin.
6.Each of the following were knowingly involved in, provided knowing assistance in, procured or induced breaches of fiduciary duty owed by EPAQ International and Freezeframe China Co to the applicants:
(a)Emilio Wang; and
(b)Pascal Skelin.
7.Each of the following respondents breached their duties of confidence to the applicants and are liable for breaches of confidence to the applicants:
(a)Emilio Wang;
(b)Pascal Skelin;
(c)EPAQ International Pty Ltd; and
(d)Freezeframe China Co Pty Ltd.
8.Each of the following respondents breached their duty to exercise reasonable care in making representations to the applicants:
(a)Emilio Wang;
(b)Pascal Skelin;
(c)EPAQ International Pty Ltd; and
(d)Freezeframe China Co Pty Ltd.
9.Further to paragraph [8] above, each of the following respondents are liable as joint tortfeasors for breaches of duty by EPAQ International Pty Ltd and Freezeframe China Co to exercise reasonable care in making representations to the applicants:
(a)Emilio Wang; and
(b)Pascal Skelin.
THE COURT ORDERS THAT:
Permanent Injunctions
10.Each of the following respondents be permanently restrained from supplying, offering to supply, offering for sale or selling counterfeit freezeframe products not supplied to them by the applicants or authorising others to do so without the licence or approval of the applicants:
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)AVP Pty Ltd; and
(l)Yan Li.
Destroy and Delivery Up
11.Each of the following respondents deliver up to the applicants, or destroy (at the applicants’ election) any infringing products bearing the applicants’ Trade Marks or embodying the applicants’ copyright works:
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)AVP Pty Ltd; and
(l)Yan Li.
12.Each of the following respondents take all necessary steps to deliver up to the applicants’ copies of all original documents and certificates relating to registrations for freezeframe products with the Chinese Food and Drug Administration (CFDA):
(a)Emilio Wang;
(b)Pascal Skelin;
(c)EPAQ International Pty Ltd; and
(d)Quanjian Pty Ltd.
Damages and costs
13.The following respondents pay the applicants damages pursuant to s 82 of the ACL:
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd; and
(k)Yan Li.
14.The following respondents pay the applicants damages pursuant to s 126 of the Trade Marks Act 1995 (Cth)(TM Act):
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)AVP Pty Ltd; and
(l)Yan Li.
15.The following respondents pay the applicants damages pursuant to s 115(2) of the Copyright Act 1968 (Cth)(Copyright Act):
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)AVP Pty Ltd; and
(l)Yan Li.
16.The following respondents pay the additional damages pursuant to s 126(2) of the TM Act and s 115(4) of the Copyright Act:
(a)Green Forest International Pty Ltd;
(b)Yaoan Chen;
(c)Yilin Trading Pty Ltd;
(d)Freezeframe China Co Pty Ltd;
(e)Emilio Wang;
(f)Pascal Skelin;
(g)EPAQ International Pty Ltd;
(h)Quanjian Pty Ltd;
(i)Ivan Wang;
(j)E‑Go Channel Pty Ltd;
(k)AVP Pty Ltd; and
(l)Yan Li.
17.The respondents pay to the applicants interest pursuant to s 211 of the Federal Circuit and Family Court of Australia Act 2021 (Cth) on the amounts ordered above.
18.Subject to orders 19, 20, and 24 the respondents pay the applicants’ costs of the proceeding.
19.In respect of the ninth respondent, Ms Yiping Yang, and the fourteenth respondent, Mr Yulin Wang:
(a)they jointly and severally pay Self Care Corp AUD$6,710,735.00, together with interest and costs; and
(b)otherwise, the applicants’ claims against them be dismissed and there be no order as to costs.
20.No costs are payable by:
(a)Taoyu Pan, the tenth respondent;
(b)Zuren International Pty Ltd, the twelfth respondent; and
(c)Ms Siqi Huo, the thirteenth respondent.
21.The matter be referred to a Registrar of the Court to determine the apportionment of the Quantum for each of the claims made out against:
(a)the EPAQ parties (being, Emilio Wang, Pascal Skelin, Yilin Trading Pty Ltd, EPAQ International Pty Ltd, Quanjian Pty Ltd, and Ivan Wang);
(b)the Green Forest parties (being, Green Forest International Pty Ltd, Yaoan Chen, E‑Go Channel Pty Ltd and Yan Li); and
(c)AVP Pty Ltd.
22.The reasons for these orders be published only to the legal representatives of those parties who have entered into a current confidentiality regime.
23.Within 14 days the parties advise the Court and each other whether any information in the reasons for these orders should be removed from the main body of the reasons into a confidential annexure, or whether they are content for the reasons for these orders to be published generally.
THE COURT DISMISSES:
24.The applicant’s claims against the following respondents:
(a)Taoyu Pan;
(b)Zuren International Pty Ltd; and
(c)Siqi Huo.
25.The amended cross claim as against the cross-respondent/first applicant.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
A INTRODUCTION
[1]
Participation of respondents in the proceeding
[8]
The final hearing
[11]
‘Relevant period’
[13]
Currency of witnesses’ evidence
[14]
B THE PARTIES
[15]
The applicants and the freezeframe products
[15]
The applicants
[15]
The freezeframe brand in overview, early history
[19]
Freezeframe trade marks and copyright works
[23]
Freezeframe Logo
[26]
Freezeframe REVITALEYES
[28]
The respondents
[34]
Overview of respondents joinder and some procedural history
[34]
Three groups of respondents
[39]
The Green Forest parties (first, second, fifteenth and seventeenth respondents)
[40]
Green Forest parties dealings with freezeframe products
[49]
The EPAQ parties
[53]
Identification of the EPAQ parties
[53]
Individual respondents comprised in the EPAQ parties
[63]
Emilio Wang (fifth respondent)
[63]
Chinese Judgment and Chinese Appeal Judgment
[70]
Emilio Wang’s limited participation in the proceeding
[71]
Mr Pascal Skelin (sixth respondent)
[75]
Ms Yiping Yang and Mr Yulin Wang (ninth and fourteenth respondents)
[85]
Ms Yiping Yang
[89]
Ms Yang’s properties
[91]
Mr Yulin Wang
[97]
Taoyu Pan (tenth respondent)
[103]
Kefei (Ivan) Wang (eleventh respondent)
[105]
Ms Siqi Huo (thirteenth respondent)
[110]
Ms Huo and Zuren International Pty Ltd
[115]
Corporate respondents within the EPAQ parties
[121]
Yilin Trading Pty Ltd (third respondent)
[121]
Freezeframe China Co Pty Ltd (in liquidation) (formerly, the fourth respondent)
[126]
EPAQ International Pty Ltd (seventh respondent)
[133]
Quanjian Pty Ltd (eighth respondent)
[138]
Zuren International Pty Ltd (twelfth respondent)
[142]
Other EPAQ parties (not being respondents)
[144]
Quanjian Holdings Pty Ltd (Quanjian Holdings)
[144]
EPAQ International Holdings Pty Ltd (EPAQ Holdings)
[146]
Freezeframe Co Ltd (Freezeframe HK)
[152]
Other EPAQ parties
[154]
Australian Vitamin Plus Pty Ltd (AVP) (sixteenth respondent)
[155]
AVP dealings in freezeframe products
[162]
C OVERVIEW OF SELF CARE’S PLEADED CASE
[168]
Self Care’s pleaded freezeframe intellectual property rights, products, and reputation
[170]
Pleaded conduct of the EPAQ parties
[177]
Representations made by Mr Skelin and Emilio Wang to Self Care
[178]
Contracts and actions based on the representations
[181]
Counterfeits manufactured and sold by EPAQ parties
[195]
Unauthorised sale of freezeframe products by EPAQ parties
[201]
Other causes of action against EPAQ parties
[202]
Removal of proceeds from the jurisdiction
[203]
Pleaded conduct of the Green Forest Parties
[206]
Counterfeit freezeframe products
[206]
Genuine freezeframe products
[209]
Causes of action against Green Forest parties
[214]
Pleaded conduct of AVP
[215]
Counterfeit freezeframe products
[215]
Genuine freezeframe products
[219]
Causes of action against AVP
[224]
Relief sought by Self Care
[226]
Overview of pecuniary relief sought, and forensic accountants expert evidence
[228]
Forensic accountants expert evidence introduction and procedural history
[232]
Forensic accountants joint expert conference
[235]
Forensic accountants expert conclave and aides-memoire
[237]
Mr Skelin’s position re forensic accountant expert evidence
[241]
Remaining participating respondents did not participate in expert conclave
[243]
Pecuniary relief options provided by Ross Report
[245]
Period of loss confined for compensatory damages
[250]
Period of loss is not confined re other pecuniary relief
[253]
Overview of quantum sought by Self Care
[255]
D OVERVIEW OF GREEN FOREST PARTIES’ CROSS-CLAIM
[261]
Overview of quantum sought on Cross-claim
[264]
E THE EVIDENCE AND FACTUAL FINDINGS
[265]
The standard of proof
[265]
Inferences available – Jones v Dunkel; Blatch v Archer
[280]
Statements of the evidence are findings of fact
[287]
A note on quoted documentary evidence
[289]
Confidentiality claims and confidentiality orders
[293]
The terms ‘daigou’ explained
[296]
THE WITNESSES AT HEARING
[297]
Self Care’s witnesses
[297]
Ms Amoroso
[297]
Self Care’s other witnesses
[301]
Participating respondents’ witnesses
[312]
Green Forest parties’ witnesses
[317]
AVP’s witnesses
[320]
Yang/Wang parties and their witnesses
[322]
Ms Huo and her witness
[326]
F FINDINGS OF FACT: SELF CARE AND EPAQ PARTIES
[329]
(1) SELF CARE’S FREEZEFRAME BUSINESS (2014 – 2016)
[331]
August 2016 non-exclusive distribution arrangements for Chinese ecommerce platforms
[338]
Self Care’s 2016 presentation to Australian Customs
[340]
(2) SELF CARE AND EPAQ PARTIES’ DEALINGS (2016 – 2019)
[346]
August 2016 to February 2017 – Self Care and EPAQ parties initial dealings
[347]
August 2016 – Ms Amoroso meets Mr Skelin and his business associates and companies
[347]
23 August 2016 – first meeting between Ms Amoroso and Mr Skelin
[366]
Self Care Corp and EPAQ International sign non-disclosure agreement
[375]
Some terms of the NDA
[377]
26 August 2016 meeting at Self Care’s offices
[379]
August 2016 – Proposal for EPAQ International Opening Order
[381]
1 September 2016 – Seabirds Platform letter
[389]
September – October 2016 – Opening Order discussions and approval
[394]
Self Care says Agency Agreement commences
[416]
October 2016 – Next steps following placement of the Opening Order
[418]
Opening Order tax invoice dated 11 October 2016
[424]
Preparations for import of freezeframe products; promotions and planning for China launch
[429]
Ms Amoroso
[435]
November – December 2016 – ‘Further steps’ and preparation for Tianjin launch event
[440]
December 2016 Seabirds freezeframe launch, Tianjin China
[447]
Proposal for Seabirds private label range
[458]
December 2016 – Outstanding issues
[459]
Mr Skelin raises the spectre of counterfeits in China, proposes Shenzen Goodyear solution
[471]
January 2017 – Seabirds O2O retail stores – instore freezeframe boutiques discussed
[475]
February 2017 – Self Care Corp letter for the EPAQ/ Seabirds website
[476]
February 2017 – EPAQ International second order for freezeframe products
[479]
Take-down of website ‘freeze-frame.net’
[482]
March 2017 – Further development in Self Care and EPAQ relationship
[484]
China representative office and new business plan for freezeframe in China
[488]
March 2017 emails
[490]
Mr Skelin’s proposal for ‘bricks and mortar’ retail stores in China
[496]
March 2017 – EPAQ parties complaints about AGG selling into China
[496]
Self Care decides on China representative office, pricing for EPAQ International
[496]
Self Care issues email addresses for China office staff
[499]
Name of Freezeframe China Office
[504]
Mr Skelin’s use of designation ‘Chairman’ of Self Care Corp
[506]
Self Care March 2017 letter to selected customers
[516]
Conclusion – March 2017 emails and March 2017 letter
[532]
Self Care Corp and EPAQ International’s relationship from March 2017
[535]
EPAQ parties press Self Care to cease selling to AGG
[536]
Freezeframe company names
[543]
April 2017 – Regular WIP meetings are instigated
[553]
Self Care reiterates China office not Self Care’s exclusive or sole distributor
[555]
May 2017 – Self Care raises further issue about Ivan Wang
[558]
Obtaining CFDA registrations and China Trade Mark registrations (2016 – 2019)
[559]
CFDA registration for freezeframe products
[561]
Purpose of CFDA registrations
[561]
(i) 2016 – recommendations for and initiation of CFDA process
[564]
(ii) Mr Skelin proposes Power of Attorney appointing Hangzhou Xinshi
[566]
(iii) December 2016 – Self Care executes Hangzhou Xinshi Power of Attorney
[567]
(iv) CFDA process requires agreement with CIRS
[571]
(v) Self Care Corp, Hangzhou Xinshi and CIRS communications
[573]
(vi) Disclosure of confidential information during CFDA process
[575]
(vii) Mr Skelin proposes contract with CIRS for CFDA process
[577]
(viii) Self Care signs contract with CIRS and Hangzhou Xinshi
[581]
(ix) Further communications about CFDA process, sharing confidential information
[584]
(x) EPAQ China directs CFDA registration of freezeframe products under ‘Fu Rui Zi’
[587]
(xi) July – August 2018 - some CFDA registrations obtained
[592]
(xii) Late 2018 and 2019 – Unsuccessful attempts to amend CFDA registrations
[594]
(xiii) January 2019 – EPAQ proposes change of responsible party for CFDA registrations
[597]
(xiv) January to April 2019 – CFDA name change – HYPERWHITE dossier not returned
[601]
Self Care Corp cannot rely on CFDA registrations (in incorrect name)
[605]
Self Care’s Freezeframe China Trade Mark
[607]
(i) May–July 2017 – Self Care chooses name, applies to register China trade mark
[607]
(ii) May 2018 – Self Care China trade mark 25643861 (‘Fu Ri Fei’) accepted
[614]
Mr Skelin’s requests for information about China Trade Mark – Discussion
[620]
Pirate China Trade Mark applications – Freezeframe transliterations
[621]
Mid-2017 – Further development of Self Care and EPAQ parties relationship
[624]
EPAQ parties press for price control of freezeframe products
[625]
June 2017 Self Care Letters to China platforms
[634]
2017 Packaging quote from Shenzhen Goodyear
[636]
July 2017 – EPAQ parties object to Self Care supplying other export customers (AGG)
[645]
EPAQ claims AGG has ‘FF fake website’ and is stealing brand
[651]
July 2017 – Mr Skelin expresses concerns about Priceline sales to daigous
[655]
Self Care states concerns about EPAQ parties’ low sales volumes
[663]
Mr Skelin requests 2017 letters of authorisation re China platforms
[665]
China office – Ms Amoroso reminds Mr Skelin approval is required for marketing
[669]
August 2017 – 2017 Letters of Authorisation to Freezeframe HK (China Platforms)
[671]
August – December 2017 – Self Care and EPAQ parties’ communications and concerns
[677]
Self Care and EPAQ parties’ strategy meeting 1 August 2017
[677]
August 2017 – Self Care adopts EPAQ proposal, increases prices, limits sales to Priceline
[680]
Pricing policy – discounts, rebates, 10% price increase replaces interim pricing strategy
[683]
August 2017 – early 2018 – Other communications between Self Care and EPAQ parties
[690]
Mr Skelin’s further requests for product artwork and related information
[691]
Requests for empty product cartons, and that Shenzhen Goodyear print packaging
[692]
Batch stamping
[697]
Enquiry about anti-counterfeit technology
[698]
EPAQ releases video without Self Care’s approval; China team WeChat posting
[701]
Mr Skelin and Emilio Wang raise sale prospect of freezeframe China business
[705]
January 2018 – Freezeframe China Co begins to purchase freezeframe products
[710]
Early 2018 – Self Care and EPAQ parties’ discussions about various matters
[714]
Freezeframe websites – further warnings about fake websites
[715]
Progress on China platform websites
[721]
EPAQ parties’ follow up enquiries about Self Care’s China trade marks
[724]
Mr Skelin’s involvement in Self Care Corp’s anti-counterfeiting strategy
[726]
April through June 2018
[733]
Scan freezeframe App release
[733]
April 2018 – Media announcement re Scan freezeframe App
[734]
Mr Skelin impugns New Zealand distributor
[739]
March 2018 – EPAQ claims AGG is making fake RE and shipping via Australia
[742]
March to May 2018 – Self Care and EPAQ parties communications
[746]
EPAQ experiences stock shortages, Mr Skelin gets involved in Self Care’s production
[746]
Launch of new REVITALEYES tube design
[752]
April 2018 Market Announcement introducing new RE tube packaging
[755]
April 2018 – Self Care concerns about low-priced parallel imported stock in New Zealand
[758]
May 2018 meeting – terms of sales to the China platforms via Freezeframe HK
[763]
May 2018 meeting – Draft ‘FF Agreement with FFC’
[771]
EPAQ 2018 draft agreement – ‘Strategic Alliance Deed’
[774]
Feedback on EPAQ’s draft document
[782]
EPAQ 2018 draft agreement – terms relevant to existing arrangement
[790]
May to July 2018 – Mr Skelin receives information relevant to manufacture and supply
[794]
June 2018 – Identification of Counterfeits supplied by Quanjian Pty Ltd
[800]
July 2018 Term Sheet – further discussion about proposed Strategic Alliance
[811]
October 2018 – further draft Terms Sheets
[819]
June – August 2018 – 2018 Letters of Authorisation (China Platforms)
[824]
Mid 2018 – Pricing for products destined for Kaola
[827]
July 2018 – Mr Skelin says 200,000 more fake products on market
[830]
July to September 2018 – Self Care and EPAQ parties’ continued dealings
[832]
July 2018 – new outer carton for Revitaleyes, customer announcement for China
[832]
Mr Skelin obtains artwork, information about CFDA approved products
[837]
and Scan freezeframe App
[837]
August 2018 – 2018 Letter of Authorisation to Freezeframe HK
[846]
Commercial issues between Self Care and EPAQ parties in the second half of 2018
[850]
Issues relating to Self Care’s Flagship store on Tmall
[857]
Freezeframe HK’s non-payment of invoices for stock purchased for Kaola
[867]
October – December 2018 – Mr Dunn and Mr Skelin’ communications
[877]
EPAQ parties renege on purchasing freezeframe products as forecast
[877]
New packaging announcement for full range of freezeframe products and updated Scan App
[890]
EPAQ International/Freezeframe HK Powers of Attorney to EPAQ parties
[895]
Dealings between Self Care and EPAQ in early 2019
[900]
Mr Skelin’s 1 February 2019 ‘Agenda’ email
[906]
Mr Skelin’s 22 February 2019 ‘Key points’ email
[924]
February–March 2019 – new pricing model for EPAQ parties’ future orders
[925]
Freezeframe China Co Market Development Rebate Addendum
[926]
Tmall store issues continue
[929]
Quanjian is unhappy
[936]
Mr Skelin’s 9 April 2019 ‘long list’ email (Mr Skelin’s ‘musings’)
[940]
4 March 2019 – Self Care Corp’s final invoice to Freezeframe China Co
[942]
Mr Skelin’s communications to himself during February 2019 and April 2019
[945]
February 2019 – Mr Skelin emails himself Self Care documents, and deletes trail
[945]
Mr Skelin’s emails to himself on 1 and 22 February, and 9 April 2019
[949]
Mr Skelin’s 9 April 2019 email
[956]
July 2019 – Counterfeit products found in Hong Kong, low price product for sale in Australia
[957]
September 2019 – Self Care issues termination letter and revokes Letters of Authorisation
[963]
September – November 2019 – Scan freezeframe App verification issues, switched off
[971]
October 2019 – Self Care commences this proceeding
[974]
Summary of Self Care supply of freezeframe products to EPAQ parties (2016 – 2019)
[975]
(3) SELF CARE’S FREEZEFRAME BUSINESS POST-EPAQ
[978]
Self Care’s freezeframe products distribution channels as at February 2021
[978]
Self Care would not have dealt with EPAQ parties if had known what transpired
[980]
(4) FACTUAL FINDING – SELF CARE AND EPAQ PARTIES
[991]
G THE AGENCY AGREEMENT
[993]
(1) Agency Agreement – legal principles
[994]
Intention to create legal relations
[1005]
(2) The parties’ submissions
[1007]
(3) Agency agreement - discussion and consideration
[1016]
(4) Green Forest’s submission on the March 2017 emails and March 2017 letter
[1029]
Discussion and consideration
[1035]
Further conclusions on March 2017 letter and emails
[1058]
(5) Was the Agency Agreement breached?
[1061]
(6) Breach of the Agency Agreement - Inducement
[1064]
Consideration of Mr Skelin’s involvement in conduct of the EPAQ parties and liability
[1071]
H FIDUCIARY DUTIES – ACCESSORIAL LIABILITY FOR BREACH
[1082]
Accessorial liability for breach of fiduciary duties - principles
[1083]
J REVITALEYES PRODUCT PACKAGING – 2014 TO 2019
[1090]
K SELF CARE’S INTELLECTUAL PROPERTY RIGHTS
[1100]
Self Care’s trade marks
[1104]
Freezeframe Logo
[1106]
Freezeframe copyright works
[1107]
Self Care’s exclusive and valuable reputation in the freezeframe products
[1113]
L TRADE MARK AND COPYRIGHT INFRINGEMENTS
[1116]
Copyright infringement
[1116]
Infringement of copyright in Australia – relevant provisions
[1116]
Relief for infringement of copyright
[1117]
Additional damages
[1123]
Trade mark infringement – relevant legal principles
[1127]
Relief for infringement of trade mark
[1137]
Trade Mark Law and Copyright Law in China
[1139]
Jurisdictional Issues concerning Chinese trade mark law and copyright law
[1141]
Subsequent comments on ‘Potter’ in Australian courts
[1144]
Interpretation of ‘Potter’ in the UK and NZ
[1148]
Jurisdiction of Courts (Foreign Land) Act
[1153]
L ACL AND NEGLIGENT MISSTATEMENT
[1157]
(1) NEGLIGENT MISSTATEMENT
[1158]
(2) ACL – MISLEADING OR DECEPTIVE CONDUCT
[1169]
Silence as misleading or deceptive conduct
[1181]
Misleading representations as to future matters
[1183]
Recoverable damages for contravention of the ACL
[1191]
Statements to third party consumers as misleading or deceptive conduct
[1194]
Accessorial Liability: Persons ‘involved’ in a contravention
[1195]
(3) CONSIDERATION
[1201]
N BREACH OF CONFIDENCE
[1211]
Breach of confidence by Mr Skelin
[1219]
O PASSING OFF
[1225]
P JOINT TORTFEASOR (INCLUDING COMMON DESIGN) LIABILITY
[1236]
Q SELF CARE’S COUNTERFEIT CLAIMS
[1240]
(1) THE CLAIMS AGAINST MR SKELIN AND EPAQ PARTIES
[1240]
Additional Skelin and Wang evidence
[1241]
Seven Documents admitted on reopening
[1245]
(2) CLAIMS AGAINST THE GREEN FOREST PARTIES (BOXES)
[1279]
Green Forest submissions on the Boxes
[1286]
Box 1 – July 2019
[1290]
Sample units from Box 1 given to suppliers of components and to technical experts
[1302]
Ms Qian’s investigations and purchases of Boxes 2 and 3, China Agent Order
[1310]
Initial investigations of Green Forest by investigator Ms Qian
[1310]
Purchase and delivery of Box 2
[1317]
Subsequent handling of Box 2 - sample units provided to technical experts
[1324]
What Ms Qian did next
[1330]
China Agent Box – order and purchase
[1347]
Counterfeit REVITALEYES products
[1370]
Notices to Admit and Notices to Dispute counterfeits (the Boxes)
[1370]
Counterfeits - Self Care tear down analysis and technical expert evidence
[1479]
(3) THE CLAIMS AGAINST AVP
[1479]
Evidence of counterfeit AVP product in stock (AVP Inventory)
[1479]
Conclusions on the counterfeit claims
[1490]
R GREEN FOREST PARTIES – RELEVANT FACTS AND EVENTS
[1495]
(1) Genuine freezeframe products case against the Green Forest parties
[1495]
(2) Counterfeit freezeframe products case against the Green Forest parties
[1501]
(3) Green Forest witnesses and their testimony
[1508]
Mr Chen and Ms Li’s oral testimony
[1510]
Delineation of roles between Mr Chen and Ms Li
[1517]
(4) Green Forest parties’ dealings with freezeframe products
[1523]
21 September 2016 to 21 June 2017 – Jatenergy Limited and Zhong Kang Australia Pty Ltd
[1523]
Jatenergy packing slips
[1527]
June 2017 to October 2019 – Overview of Green Forest dealings with freezeframe products
[1529]
Green Forest parties’ dealings with EPAQ parties
[1531]
October 2016 to May 2017 – Communications between Ms Li, Mr Chen, and Ivan Wang
[1531]
May 2017 – Meeting between Mr Chen, Ms Li and Ivan Wang
[1542]
25 May 2017 – Business card provided by Ivan Wang
[1544]
21 June 2017 – Green Forest first order of freezeframe products from EPAQ
[1552]
July to August 2017 - Promotional Events organised and/or attended by Mr Chen
[1557]
Third livestream / Priceline Beecroft Event
[1569]
28 August 2017 – Business card provided by Mr Skelin
[1571]
November 2017 – Mr Chen receives video of Ms Amoroso and Mr Skelin
[1578]
March 2018 to July 2018 – Mr Chen’s further dealings with EPAQ parties
[1585]
March/April 2018 – General trade authorisation
[1585]
24 July 2018 – Mr Chen seeks clarification about trade mark holder of freezeframe
[1586]
Freezeframe HK - Letters of Authorisation
[1587]
Letters of authorisation held by Green Forest
[1594]
ILS Records/ Report
[1599]
AVP entries on the ILS Record / Report
[1623]
Personal liability of Mr Chen and Ms Li
[1624]
CFDA Approval
[1628]
June 2018 – double printed batch number
[1630]
23 July 2018 – Green Forest receives invoice from Yilin Trading
[1636]
February 2019 to March 2019 – Green Forest’s initial dealings with Sean Liao
[1638]
March and April 2019 – Green Forest invoiced by Yilin Trading
[1644]
Green Forest purchase order FF0304
[1644]
March 2019 – REVITALEYES order from DDS
[1647]
Yilin Trading invoice to Green Forest (ref FF0304)
[1648]
Green Forest purchase order (ref FF0401)
[1650]
April 2019 – REVITALEYES order from DDS
[1655]
May 2019 – Shanghai China Beauty Expo
[1656]
May 2019 – the Alves Purchase Contract & JT(HK) Purchase Contract
[1658]
Green Forest’s initial dealings with Zuren (through Sean Liao)
[1667]
12 June 2019 Letter of Authority (‘Power of Attorney’)
[1670]
Green Forest’s July 2019 order
[1672]
Green Forest purchase order (Invoice ID: 1001)
[1673]
E-Go Channel purchase order (INV-0053) (ref FF1002)
[1677]
Green Forest purchase order (FF-0053-Yilin Trading)
[1678]
Green Forest’s process receiving product shipments
[1679]
Green Forest’s use of the SCAN Application
[1680]
Dealing with the risk of counterfeit products
[1685]
The Green Forest parties’ cross-claim
[1692]
Steps taken by Self Care Corp to clothe the EPAQ parties with indicia of authenticity
[1696]
Self Care Corp’s submissions
[1697]
S AVP
[1709]
Introduction
[1709]
Overview of Mr Wu, Ms Ma and Ms Bella Chen’s affidavit evidence
[1717]
Agreed Fact
[1718]
AVP’s shareholders and officers
[1719]
AVP’s purchases of freezeframe products from EPAQ parties
[1726]
The oral testimony of the AVP witnesses
[1731]
AVP dealings with EPAQ parties
[1736]
Early to Mid-2018 – Mr Wu’s communications with Higo and Dynamic
[1736]
April 2018 WeChats – Mr Wu’s initial communications with Ivan Wang
[1741]
May 2018 WeChats
[1743]
21 May 2018 - AVP’s first order from Freezeframe HK
[1756]
August 2018 WeChats – changes to freezeframe packaging
[1759]
28 August 2018 - Freezeframe HK’s request to AVP to pay to a different account
[1760]
September 2018 – Communications between Ms Ma and Ivan Wang
[1765]
October & September 2018 – invoices from Yilin Trading
[1767]
Various documents sent from Ms Xiangyang to Mr Wu
[1773]
The 2018 Letter of Authorisation
[1786]
AVP’s general trade business
[1791]
Mr Wu’s Communications with Sean Liao
[1802]
October 2019 - AVP’s alleged purchase of 10,464 counterfeit freezeframe products
[1803]
Documents relating to the October 2019 purchase
[1806]
Mr Wu’s dealings involvement in AVP in October 2019
[1814]
November 2019 – Ivan Wang requests storage of freezeframe products at AVP’s warehouse
[1818]
Party submissions as to the authenticity of the various consignment documents
[1823]
AVP’s order from Higo
[1837]
AVP’s belief as to Freezeframe HK’s scope of authority
[1841]
Ivan Wang
[1842]
Freezeframe HK
[1844]
Conclusions on claims against AVP
[1848]
T EMILIO WANG
[1852]
U IVAN WANG
[1853]
Interactions with AVP
[1864]
Ivan Wang
[1865]
Ivan Wang
[1866]
Conclusion on Ivan Wang
[1868]
V YANG /WANG PARTIES
[1869]
Self Care’s claim against the Yang/Wang parties
[1869]
What Ms Yang and Mr Yulin Wang say
[1877]
Shanghai Yuyi and Shanghai Yilin – involvement of Yang/Wang parties
[1892]
Involvement in the Pirate Trade Marks and thus trade in counterfeit freezeframe products
[1903]
A comment on the submissions
[1906]
The oral testimony of the Yang/Wang witnesses
[1915]
Yang/Wang parties involvement in removing funds and transferring to China
[1921]
Yang/Wang’s withdrawals to transfer funds to China
[1935]
Yang Accounts
[1938]
EPAQ party transfers to Yang Account 2 (January 2017 – December 2019)
[1954]
The Yang properties – financial position
[1973]
The Withdrawals of funds
[1984]
Removing funds from Australia to China
[1986]
Conclusion on claims against Yang/Wang parties
[1999]
Mr McGinn’s expert evidence
[2006]
W SELF CARE’S CLAIMS AGAINST ZUREN AND SIQI HUO
[2013]
Zuren – setting up the company and bank account
[2017]
Ms Huo’s explanation for setting up Zuren; Ms Jinlin Li’s evidence
[2021]
Payments to Zuren from EPAQ parties and Green Forest
[2029]
References in Quanjian Pty Ltd’s records to Zuren and Ms Huo
[2031]
Ms Huo’s response
[2034]
Green Forest’s dealings with Zuren
[2037]
Zuren conclusions
[2040]
Payments into Ms Huo’s Westpac Choice Bank account
[2043]
Ms Huo’s marriage to Emilio Wang and position as daughter-in-law
[2049]
Preliminary steps to divorce Emilio Wang
[2052]
Ms Huo’s ‘assistance’ to Yang/Wang parties
[2061]
Ms Huo conclusions
[2067]
Motor vehicles leased by Quanjian Pty Ltd (atf Quanjian Family Trust)
[2073]
X TAOYU PAN
[2081]
Y OVERALL CONCLUSIONS ON LIABILITY
[2083]
Self Care: Causes of action – established
[2083]
(1) The EPAQ party respondents
[2084]
(2) The Green Forest party respondents
[2089]
(3) AVP
[2090]
Self Care: Causes of action - not established
[2091]
(1) As against the EPAQ party respondents
[2092]
(2) As against the Green Forest parties
[2097]
(3) As against AVP
[2098]
Green Forest parties – Cross-claim
[2099]
Z RELIEF - QUANTUM
[2100]
NON-PECUNIARY RELIEF
[2101]
RELIEF - QUANTUM
[2102]
Overview
[2102]
NON-PECUNIARY RELIEF
[2102]
RELIEF - QUANTUM
[2103]
Overview
[2103]
Critiques of the Expert Reports
[2109]
Respondents’ response to the expert reports
[2114]
Green Forest’s response
[2114]
AVP’s response
[2120]
Mr Skelin’s response
[2129]
Non-compliance with applicable codes concerning expert evidence
[2131]
Deficiencies in the methodology of the report
[2136]
The expert confusing his role with that of the Court
[2141]
Wrong opinions borne out of sloppy, inadequate reasoning
[2144]
Quantum of Compensatory Damages
[2147]
(i) Contract Claim
[2148]
Second element of “Contract Claim – Alternative 1”: Lost sales in China claim (Marketing Spend Claim)
[2152]
First element of “Contract Claim – Alternative 2”: Losses incurred in reliance on the terms of the Agency Agreement
[2154]
Determination on Contract Claim (breach of contract and inducing breach of contract)
[2159]
(ii) Misleading and Deceptive Conduct/Negligent Misstatement Claim
[2161]
Determination on Misleading and Deceptive Conduct/Negligent Misstatement Claim
[2164]
(iii) Fiduciary Duties Claim
[2166]
(iv) Infringements Claim
[2167]
Additional damages
[2170]
(v) Harm to Self Care’s Reputation and Goodwill Claim and (vi) Equitable Damages
[2171]
Referral for Apportionment
[2173]
AA DISPOSITION
[2175]
AB CONFIDENTIAL INFORMATION IN JUDGMENT
[2179]
REASONS FOR JUDGMENT
JUDGE BAIRD
A INTRODUCTION
In this proceeding the applicants, Self Care Corporation Pty Ltd (Self Care Corp) and Self Care IP Holdings Pty Ltd, (collectively, Self Care) allege breaches of contract, infringements of their intellectual property rights – trade marks and copyright – in relation to Self Care’s skincare cosmeceutical range of freezeframe products (also referred to in the course of the proceeding as the ‘freezeframe Products’), authorisation of those infringements, passing off, breaches of confidence, breaches of fiduciary duties, misleading or deceptive conduct in contravention of the Australian Consumer Law (ACL), schedule 2 to the Competition and Consumer Act 2010 (Cth) (CCAct), and negligent misstatement by the respondents.
The alleged wrongful conduct of the respondents comprises variously:
(a)the manufacture, distribution, marketing, sale and supply of alleged counterfeits of freezeframe products in Australia and in China;
(b)the purchase for resale, sale, supply and distribution of genuine freezeframe products in Australia and in China inconsistently with the rights and/or limitations on rights of distribution granted by Self Care, and/or in breach of an agency agreement; and
(c)conduct in relation to registrations of freezeframe products with the Chinese Food and Drug Administration (CFDA)[1].
[1]From 1 September 2018, the CFDA was renamed National Medical Products Administration (NMPA): affidavit of Daniel Plane 3.12.2020 (Plane 1), [36]: Court Book (CB) (main) tab 50, p660 ff. At least in the email and text messages adduced in evidence in this proceeding, however, the former name and acronym continued to be used
In addition to allegations of direct liability, Self Care alleges common designs, involvement in, and being knowingly concerned in the infringements and breaches by the respondents, in the event they are not directly liable.
This proceeding commenced with an urgent application filed on 25 October 2019 for ex parte interlocutory relief against the first to sixth respondents following Self Care’s discovery that suspected counterfeit freezeframe products were being supplied in the Australian market by the first respondent, who had obtained the product from parties associated with a former distributor of the applicants.
Self Care brings the proceeding against 17 respondents, of whom 9 actively participated in the final hearing, namely:
(a)the first respondent, Green Forest International Pty Ltd, the second respondent, Mr Yaoan (Eric) Chen, the fifteenth respondent, E‑Go Channel Pty Ltd, and the seventeenth respondent, Ms Yan (Cynthia) Li (collectively, the Green Forest parties);
(b)the sixth respondent, Mr Pascal Skelin;
(c)the ninth respondent, Ms Yiping Yang, and her husband the fourteenth respondent, Mr Yulin Wang (together, the Yang/Wang parties);
(d)the thirteenth respondent, Ms Siqi Huo (also known as Kirstin Wang), who is also the sole director and shareholder of the twelfth respondent, Zuren International Pty Ltd; and
(e)the sixteenth respondent, Australian Vitamin Plus Pty Ltd (AVP).
Where I consider it necessary or convenient in the course of these reasons to refer to these 9 respondents collectively, I refer to them as the participating respondents.
The participating respondents deny the allegations.
The Green Forest parties defensively bring a cross‑claim against Self Care Corp for misleading and deceptive conduct by silence in contravention of the ACL, which Self Care Corp defends.
Participation of respondents in the proceeding
Save for Ms Huo, the participating respondents were legally represented at hearing and in the numerous, and substantial, interlocutory applications brought in the proceeding (both those brought prior to the final hearing, and those brought during the hearing), as they considered relevant to them or their interests. Ms Huo appeared during the hearing and represented herself and, incidentally, Zuren, by video conference/ audio‑visual link (AVL) from Brisbane.
Two respondents participated briefly in the first phase of the proceeding in December 2019 and January 2020, but not thereafter: the fifth respondent, Mr Kefei (Emilio) Wang, and the former fourth respondent, Freezeframe China Co Pty Ltd. Emilio Wang placed himself into bankruptcy on 29 January 2020[2], and on about 31 January 2020, or within days thereafter, departed Australia for China from whence he has not returned. Freezeframe China Co entered into liquidation on a creditors’ voluntary winding up on 14 January 2020 at the behest of Emilio Wang, and Mr Skelin (and Self Care alleges, Mr Yulin Wang[3]). The tenth respondent, Mr Taoyu Pan, filed a notice of appearance and was legally represented in the period 25 August 2020 to 22 June 2021, including filing a defence[4], but has not thereafter participated in the proceeding.
[2]Emilio Wang filed for bankruptcy on 29 January 2020, completing and submitting a Debtor’s petition and statement of affairs. A trustee in bankruptcy was appointed to the estate of Emilio Wang that day
[3]As I explain below, on the documentary evidence, Self Care’s allegation is not established, to the contrary
[4]Mr Taoyu Pan’s defence lodged 3 September 2020 responds to Self Care’s Amended Statement of Claim filed 24 July 2020. He denies the entirety of the Claim. A Notice of Withdrawal of Lawyer was filed on 23 June 2021
The other respondents have not appeared or participated in the proceeding. I list the non‑participating respondents at [56], and further describe the respondent parties – both participating and non‑participating – next, below in the section titled ‘The respondents’ at Part B, [34] – [167].
The final hearing
After a number of substantial and other interlocutory applications, the joinder of additional parties, and several delays including as a consequence of lockdowns and interruptions in response to the COVID‑19 pandemic, the final hearing commenced on 2 August 2021, under lockdown conditions conducted remotely by AVL, and continued in part over 11 hearing days in the period to 20 August 2021. It was then adjourned part‑heard. Thereafter, the hearing continued in several tranches during 2021 and 2022, variously by video conference, in person, and as a hybrid.[5] On 2 December 2022, at the conclusion of a week of oral closing submissions, and after 36 days of hearing, I reserved the proceeding for judgment.
[5]Among the disclosed locations from which the witnesses gave oral evidence and were cross examined include Sydney, Melbourne, Perth and Brisbane, and internationally, Hong Kong, Shanghai, Beijing, Barcelona and Finland
In the third quarter of 2023, in the circumstances I describe in Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 14) [2023] FedCFamC2G 868 (Self Care (No 14)), I granted leave to Self Care to re‑open and admitted further documentary evidence (the Seven Documents, more about which later), and the represented parties thereafter filed supplementary written closing submissions.
‘Relevant period’
In these reasons, unless the context otherwise requires, I refer to the period 1 July 2016 to December 2019 as the relevant period – being the period in which a substantial part of the facts and circumstances with which the pleaded case is concerned occurred, although the removal of funds from the jurisdiction by the Yang/Wang parties took place in 2020, and an alternative account of profits case alleged against the Green Forest parties and against AVP extends into 2020.
Currency of witnesses’ evidence
In these reasons the parties’ and witnesses’ business activities, employment, witnesses’ roles, residence, the currency of rights held and the like are generally stated as at the dates they state in their affidavits or if stated as at the dates of their oral evidence, those dates, unless otherwise stated or the context makes clear. For instance, in their evidence the parties’ commercial activities are generally described as they were conducted pre‑COVID‑19, and during the first years of the pandemic.
B THE PARTIES
The applicants and the freezeframe products
The applicants
The first applicant, Self Care Corp, is an Australian personal care consumer product company that develops, manufactures, distributes and markets cosmeceutical skincare products many of which are distributed and sold under the primary brand name ‘freezeframe’ (as I have defined at [1] above, freezeframe products). It is the operating company for the Self Care business.
The second applicant, Self Care IP, is the intellectual property holding company for certain trade marks relating to the business of Self Care Corp, and the licensor of certain trade marks to Self Care Corp.
Self Care Corp was registered with Australian Securities and Investment Commission (ASIC) on 14 July 2008, and Self Care IP was registered with ASIC on 24 November 2008. Generally, in these reasons I refer to the applicants collectively as Self Care, save where I consider it necessary or more appropriate to distinguish between them.
Self Care is based in Sydney, New South Wales. Ms Sonia Amoroso is the founder, the sole director and secretary and the beneficial owner of each of Self Care Corp and Self Care IP. Self Care Corp and Self Care IP are each 100% owned by Ms Amoroso’s family trust. Ms Amoroso is the chief executive officer (CEO) of Self Care Corp and has been CEO for most of the time since it was incorporated in July 2008. Ms Amoroso swore 11 affidavits read at final hearing, and was the central witness of fact for Self Care. Whilst Ms Amoroso was cross‑examined by each of the legally represented participating respondents (other than Mr Skelin)[6], that cross‑examination served primarily to confirm her evidence. Her evidence was mostly either unchallenged in cross‑examination, or uncontradicted.
[6]Ms Amoroso was cross‑examined by each of the legally represented participating respondents (other than Mr Skelin) on 11, 13, 19 and 20 August 2021 over the course of 10 calendar days in the first tranche of the hearing in August 2021
The freezeframe brand in overview, early history
Self Care launched freezeframe as a skincare cosmeceuticals brand in 2009, with the first freezeframe branded product – freezeframe with INHIBOX – launched in Australia in around July 2009. Since then, Self Care Corp has developed, launched and marketed the range of freezeframe products, and is responsible for all business and trading activity in Australia and internationally for the freezeframe products. As the founder of freezeframe, Ms Amoroso is the ‘face’ of the freezeframe brand. She is personally involved in and appears in, all live and recorded video marketing relating to freezeframe in Australia, including all Key Opinion Leader’ (KOL) influencer events in Australia.
Cosmeceuticals are skincare products that contain active ingredients such as peptides and vitamins. They are applied topically as creams, lotions, balms, serums, gels and like formulations, and are perceived as anti‑aging products because of the active ingredients they contain. As cosmeceuticals, the promotional material for the freezeframe products emphases the clinical results the products have achieved as indicated by the product claims. Ms Amoroso’s evidence is that the target consumer of the freezeframe products is a consumer who is looking for these results.
The freezeframe products are developed, manufactured and packaged in Australia[7]. They are distributed, offered for sale and sold in Australia via large national pharmacy retail chains Priceline and Chemist Warehouse, other mainstream pharmacies, the gift store souvenir channel, and online through Self Care’s dedicated website for the freezeframe products at the domain (freezeframe Website) and other online retailers, and exported for sale through authorised distributors. As at the commencement of the proceeding, Self Care Corp supplied the three major pharmaceutical wholesalers in Australia – being API, Sigma and Symbion.
[7]Save that certain components of the packaging are sourced from overseas suppliers (see further below in the context of Self Care’s counterfeit case)
[8]In addition, the domain was owned by Self Care Corp, and for a period from late 2017, automatically redirected to the freezeframe Website: Amoroso 1, [41]: CB 302
Since 2010, freezeframe products have been distributed by or on behalf of Self Care outside Australia, including in China (mainland China and Hong Kong), Singapore and the United Kingdom. The first sales of freezeframe products in China occurred in 2014 – essentially without Self Care’s knowledge, by daigou sellers reselling freezeframe products in China. As the brand became known from those initial activities, Self Care began selling freezeframe products in China. In broad terms, daigou sellers are individuals and entities who purchase goods in Australia and send them to end customers in China; see further below at [296].
Freezeframe trade marks and copyright works
The name ‘FREEZE FRAME’, and other of the freezeframe products’ names, including ‘freezeframe revitalEYES’ are protected by Australian registered trade marks owned by one or other of Self Care Corp and Self Care IP. Self Care Corp applied to register FREEZE FRAME as a trade mark on 23 January 2009. The FREEZE FRAME trade mark was registered on 13 November 2009 as Australian registered trade mark 1282081 in class 3, including for ‘cosmetics’ and ‘anti‑aging creams’. Inter alia, Self Care IP owns Australian registered trade mark 1530543 for freezeframe revitalEYES registered with effect from 19 December 2012 in class 3, including for ‘cosmetic eye gels’; ‘eye moisturisers for cosmetic use’; ‘eye wrinkle lotions’; ‘cosmetics’; ‘skincare cosmetics’; ‘anti‑wrinkle cream’; ‘anti‑aging creams …’.
In addition, Self Care Corp is the registered proprietor of a number of Chinese registered trade marks for the names of freezeframe products, including the Chinese character mark 芙日菲, freezeframe transliteration fu ri fei.
Self Care claims copyright in, and ownership of, literary and artistic works embodied in freezeframe products’ packaging including logo, artwork, and product inserts, and depictions on its website and in other advertising and marketing materials.
Freezeframe Logo
In connection with the freezeframe products Self Care uses the following freezeframe Logo comprising text and cube device in two configurations:
The freezeframe Logo has been consistently used with the freezeframe brand, since 2009 in the form of the text component (created in 2009), and with the cube device and composite logo – that is, as depicted above – since 2012. Since approximately April 2018, the freezeframe Logo has been depicted primarily in a metallic deep red colour on the freezeframe products and their packaging.[9] Self Care has in place detailed brand guidelines in relation to the freezeframe brand to ensure consistency, a key feature of which is the freezeframe Logo.
[9] Amoroso 1, [34], [36]
Freezeframe REVITALEYES
One of the freezeframe products, and a key product at issue in the proceeding, is a clinical skincare eye solutions product called freezeframe REVITALEYES. Self Care launched REVITALEYES in 2011.
As at the commencement of this proceeding, REVITALEYES was Self Care’s most successful freezeframe product, and was and had been since 2016 the number 1 selling ‘eye cream’ in Australian pharmacies, and either the number 1 or number 2 pharmacy skincare product overall in the >5,000 products category. Self Care’s marketing for REVITALEYES emphasises the clinical results the product delivers for the effective treatment of wrinkles, chronic puffiness and serious dark circles based on its active ingredients including three peptides, and vitamin C.[10]
[10] Amoroso 1, [50]
The freezeframe REVITALEYES product is a gel like balm (also described in the evidence as a ‘clinical gel cream’). As a single‑step eye gel product, and also because it is in a tube, not a bottle pump or jar, it is a ‘relatively unique’ product [11]. The formula for REVITALEYES has never changed.
[11]Amoroso 10, [74]
REVITALEYES is supplied in a tube with an airless pump tube dispenser, each tube individually packaged in a cardboard box or carton, and as manufactured and supplied by Self Care until early 2019 also including in the carton a product leaflet, on each of which components (tube, carton and leaflet) are depicted trade marks and copyright works in which Self Care asserts ownership. I describe the REVITALEYES packaging components in greater detail at [1090].
As will be apparent in the course of these reasons, the evidence of respondents’ dealings in counterfeit freezeframe products is primarily concerned with products purporting to be genuine REVITALEYES products.
None of the evidence of Self Care’s business in the freezeframe products, its growth and development, distribution, sales and marketing, that I have summarised above (and that I expand upon later in these reasons), was ultimately challenged in any way by any of the respondents. I return to these and Self Care’s freezeframe intellectual property rights as are relevant to this proceeding, and its trade and reputation in the freezeframe products and brand in Australia and China further below (including at [171] and following, and in relation to Self Care’s Chinese trade marks, at [614] and following [1113]).
The respondents
Overview of respondents joinder and some procedural history
As I have said, the proceeding was commenced on an urgent basis on 25 October 2019 initially seeking ex parte relief against the first to sixth respondents.
Interlocutory orders made by the Court that day – as thereafter varied or extended (October 2019 Orders), included for the provision of Norwich Pharmacal affidavits (in substance requiring disclosure of all freezeframe products relevant respondents had dealt with, their locations, customers and suppliers, and so requiring the identification of other potential parties to be joined to the proceeding if their role in the alleged infringements was identified), disclosure of information by those respondents, and delivery up of devices for forensic imaging by an independently engaged forensic computer expert (Mr Rod McKemmish), and thereafter for investigation and reporting.
The seventh respondent, EPAQ International Pty Ltd was joined in November 2019. It has never participated in the proceeding.
On 23 July 2020, the eighth to sixteenth respondents were joined in the proceeding (including the Yang/Wang parties, who had earlier been subject to third party restraining and asset freezing orders made against them, Zuren and Ms Huo, and AVP). On 10 March 2021, Ms Li was joined as the seventeenth respondent.
The respondents are presently subject to interlocutory orders in substance restraining them from dealing in freezeframe products without Self Care’s leave, dealing in counterfeit freezeframe products, and from destroying certain documents or records.
Three groups of respondents
Broadly, and as reflected in Self Care’s pleaded case, the respondents may be characterised in three groups of entities and individuals:
(a)the Green Forest parties;
(b)the EPAQ parties (the third to fourteenth respondents, which grouping also includes other non‑party entities and individuals, as I describe below); and
(c)AVP.
The Green Forest parties
The Green Forest parties are the Australian based companies Green Forest and E‑Go Channel, and two of their directors, Mr Yaoan (Eric) Chen and Ms Yan (Cynthia) Li.
Green Forest is a Sydney based company which carries on the distribution, sales and marketing of popular consumer goods. Green Forest focuses on health and beauty products which are known to be Australian. It supplies to Australian and Chinese sub‑distributors, retailers and consumers, and co-operates with leading companies in mainland China in their online platforms or new concept retail stores. It has business associations with approximately 400 gift shops in Australia and 20 shops and pharmacies in Hong Kong. The gift shops in Australia are generally owned or operated by Chinese‑Australian people, and target their sales to Chinese or Chinese‑Australian customers. Thus, Green Forest sells to daigous, and could itself be considered a sizeable daigou business.
Green Forest was incorporated in August 2015. Jatenergy Limited (subsequently renamed Jatcorp Limited) acquired a 50% shareholding in Green Forest in August 2018 from Mr Chen and Ms Li. Brighten Stone Pty Ltd, the trustee for the Y&Y Chen Family Trust, now holds the remaining 50% share in Green Forest.
Prior to August 2018, Green Forest’s registered office was in the Sydney suburb of Carlingford. Relevantly, from August 2018 until 17 September 2019, Green Forest conducted its business from its office and warehouse at Brodie Steet, Rydalmere, New South Wales, which was also its registered office. Since 17 September 2019, it has conducted business from its office and warehouse at Boorea Street, Lidcombe, New South Wales, which is also its registered office.
E‑Go Channel was incorporated in July 2016, and since about September 2017 has been a wholly owned subsidiary of Green Forest. E‑Go Channel has its registered office and business premises at the same location as Green Forest.
E‑Go Channel operates a retail business dealing with health food and other products in Australia. In the course of its business, E‑Go Channel occasionally purchases stock from, or returns part of their purchases of stock back to, Green Forest.
Mr Chen and Ms Li co‑founded each of Green Forest and E‑Go Channel. They are the two shareholders of Brighten Stone. Mr Chen first came to Australia from China in 2008 at the age of 24 to study a master’s degree in accounting and finance. Ms Li first came to Australia from China in 2009 at the age of 22. They are married.
Mr Chen is the managing director of Green Forest. Mr Chen has been a director of Green Forest since incorporation in 2015, and of E‑Go Channel since shortly after incorporation in 2016.
Ms Li was a director of Green Forest from incorporation in 2015 until 17 February 2021, and of E‑Go Channel from incorporation in July 2016 until 2 June 2021. Ms Li resigned from her director positions at the direction of Jatcorp. Thereafter she continued to be paid a salary by Green Forest, as an employee[12].
[12] Second affidavit Cynthia Li 22.06.2021 (Li 2) [12]: CB (main) tab 134
Green Forest parties dealings with freezeframe products
Between 21 September 2016 and 21 June 2017, Green Forest purchased and distributed freezeframe products sourced from Jatenergy and Zhong Kang Australia Pty Limited, the latter having been introduced to Mr Chen by Mr Wilton Yao, a director of Jatenergy.
For two years, from June 2017 until October 2019, Green Forest sourced freezeframe products from ‘EPAQ’, purchasing freezeframe products through Kefei (Ivan) Wang (the eleventh respondent), initially from Quanjian Pty Ltd (the eighth respondent), then Yilin Trading Pty Ltd (the third respondent). In mid‑2019 Green Forest placed one order for freezeframe products which was invoiced by Zuren International Pty Ltd (the twelfth respondent), liaising in respect of that last order with Liao (Sean) Zhiang (also named in the evidence variously as Liao Zhi’ang, and Sean Liao), each of whom are among the EPAQ parties. Between June 2017 and March 2019 Green Forest purchased 295,000 freezeframe products from these EPAQ parties.
From January 2017, E‑Go Channel purchased freezeframe products from Green Forest and on‑sold those products. However, on 26 October 2019, Mr Chen caused E‑Go Channel to place an order for 20,871 units of REVITALEYES from Yilin Trading, and paid a deposit of $20,000 by EFT to Yilin Trading. It placed the order through Ivan Wang. Upon being served with the October 2019 Court Order restraining Green Forest and Mr Chen’s dealings in freezeframe products, Mr Chen cancelled the order. On 4 November 2019, E‑Go Channel received a refund of the $20,000 deposit from Yilin Trading. Except for this order, all other orders of freezeframe products were purchased by E‑Go Channel from Green Forest.
Mr Chen and Ms Li each gave evidence at hearing and each was cross‑examined.
The EPAQ parties
Identification of the EPAQ parties
The designation ‘the EPAQ parties’ is a term of convenience, used as a shorthand term to collectively refer to the third to fourteenth respondents and other non‑party corporate entities and individuals Self Care identifies in the Further Amended Statement of Claim (FASOC)[13] and says are related and associated entities and individuals.
[13] Further Amended Statement of Claim dated 13 May 2021 (FASOC)
Self Care submits the central protagonists of the EPAQ parties are Emilio Wang and Mr Skelin. Emilio Wang, and Mr Skelin, are, or were as at the commencement of the proceeding and for at least some time thereafter, business associates, operating through several companies in Australia, in mainland China and in Hong Kong. From Australia, they operated their business relating to freezeframe products principally through the seventh respondent, EPAQ International, and over time in Australia and China also through the former fourth respondent, Freezeframe China Co, and non‑parties EPAQ Holdings, and Freezeframe HK (defined at [56] and [57] below).
Self Care alleges that each of the corporate entities comprised in the EPAQ parties – both respondent parties and non‑party entities – was managed and operated by the individuals comprised in the EPAQ parties – both respondents and non‑party individuals – which individuals Self Care alleges are individual associates of Emilio Wang and Mr Skelin. These entities and individuals are incorporated or resident variously in Australia, Hong Kong or mainland China. Included in the term ‘the EPAQ parties’ are several family members of Emilio Wang.
In the pleaded case, and as at least Self Care and Green Forest have used the term at hearing[14], the term ‘the EPAQ parties’ collectively, first, refers to the following respondents (some of whom I have already identified in these reasons, and for convenience identify again here)[15]:
[14]AVP uses the phrase ‘EPAQ Group’
[15]FASOC [88] and [89]. Excepting Emilio Wang and Mr Skelin, the identified respondents and non‑parties are defined in the FASOC as Corporate Associates, in the case of companies, and Individual Associates, in the case of individuals
(a)the third respondent, Yilin Trading Pty Ltd;
(b)the former fourth respondent, Freezeframe China Co Pty Ltd (in liquidation) (since 15 January 2020, see [9] above);
(c)the fifth respondent, Mr Kefei (Emilio) Wang;
(d)the sixth respondent, Mr Pascal Skelin;
(e)the seventh respondent, EPAQ International Pty Ltd (to be distinguished from the non‑party EPAQ International Holdings Pty Ltd (ACN 620 875 667), see immediately below);
(f)the eighth respondent, Quanjian Pty Ltd (to be distinguished from the non‑party Quanjian Holdings Pty Ltd (ACN 618 996 722), see immediately below);
(g)the ninth respondent, Ms Yiping Yang;
(h)the tenth respondent, Mr Taoyu Pan;
(i)the eleventh respondent, Mr Kefei (Ivan) Wang;
(j)the twelfth respondent, Zuren International Pty Ltd;
(k)the thirteenth respondent, Ms Siqi Huo; and
(l)the fourteenth respondent, Mr Yulin Wang.
In addition to the above respondents, secondly, the grouping ‘the EPAQ parties’ includes non‑party entities and individuals that Self Care contends are associated with Emilio Wang and Mr Skelin, and who are referred to in the pleadings and evidence. These include:
the following Australian incorporated companies:
(a)Quanjian Holdings Pty Ltd (ACN 618 996 722);
(b)EPAQ International Holdings Pty Ltd (ACN 620 875 667) (EPAQ Holdings), and
the following mainland Chinese and / or Hong Kong incorporated companies:
(c)Freezeframe Co., Ltd (Hong Kong CR[16] 2533049) (Freezeframe HK);
(d)Alves Co., Ltd (Hong Kong CR 2240811);
(e)Freshme Industrial (International) Co,. Limited (Hong Kong CR 2436218);
(f)Shanghai Yilin Trading Co., Ltd;
(g)Shanghai Yuyi Network Technology Co., Ltd;
(h)EPAQ Brand Management (Shanghai) Co., Ltd;
(i)Hangzhou Xinshi Culture Communication Co., Ltd;
(j)Hangzhou Yangmaijia Technology Co., Ltd (Unified Social Credit Number 91330104MA28X9X451), also referred to in FASOC, Glossary, as ‘Yangmaijia Technology Co., Ltd’[17];
(k)Yate Yiying International Trading (Tianjin) Co., Ltd;
(l)Shenzhen/Guangzhou Aisining International Co., Ltd, and
[16] Company registration number
[17]See Self Care’s Closing, Annexure E, p15; Exhibit DP‑1 pp459‑545; CB (main) p7303-7389. While the Credit Number can be found there, there is no way of telling if it is actually the Credit Number for Hangzhou Yangmaijia or a Credit Number at all, because it is all in Mandarin/Cantonese
the following individuals apparently resident in mainland China and / or Hong Kong:
(m)Liao (Sean) Zhiang (whom I generally refer to as Sean Liao in these reasons);
(n)Yang Dingqing (Emilio Wang’s cousin);
(o)Yixiang Yang (Emilio Wang’s uncle and Ms Yang’s older brother);
(p)Yifa Yang (apparently Emilio Wang’s uncle and Ms Yang’s brother);
(q)Yili Yang (Yixiang Yang’s daughter, and Ms Yang’s niece).
The Australian non‑party entities are primarily relevant to conduct in or emanating from Australia. Save for Sean Liao (active in trading with the Green Forest parties and AVP, and relevant to conduct in both Australia and China), the Hong Kong and Chinese non‑party entities and individuals are primarily relevant to conduct in China.
Each of Emilio Wang and Mr Skelin is or was a director of each of Freezeframe China Co, EPAQ International, EPAQ Holdings, and Freezeframe HK, and each held directorships independently of the other in various other EPAQ parties, as I outline below.Self Care contends that each of Emilio Wang and Mr Skelin was involved in the day to day management and operations of each of those, and other, corporate EPAQ parties.
Self Care alleges that Emilio Wang and Mr Skelin exercised such influence or control over the corporate EPAQ parties – both respondents and non‑parties – that they were each a de facto or shadow director of those EPAQ parties (to the extent that they were not formally appointed directors), or in a common design with each of them.[18]
[18] FASOC [91]
Whilst convenient, I consider that the grouping of the third to fourteenth respondents together and including non‑parties in the designation ‘the EPAQ parties’ may tend to obscure or overly simplify the roles and relationships of various of those respondents and non‑parties so grouped. Further, those participating respondents included in the designation ‘the EPAQ parties’ dispute that characterisation, and deny the relationships, associations and wrongful conduct Self Care alleges. Accordingly, whilst I use the term ‘the EPAQ parties’ in these reasons, as I consider relevant I also refer to several respondents within that grouping individually, or under sub‑groupings, such as Mr Skelin, Emilio Wang, Ms Yang and Mr Yulin Wang (Emilio’s Wang’s parents, who I also refer to as the Yang/Wang parties), Zuren, and Ms Huo. In addition, in the chronology of their dealings and relationship with Self Care (not limited to Ms Amoroso) as appears to me convenient I also refer to the 5 of Mr Skelin, Emilio Wang, EPAQ International, Freezeframe China Co and Freezeframe HK collectively, and in various sub‑group permutations, as ‘EPAQ parties’ (that is, without the definite article).
Below, I briefly describe, first, the individual respondents and their relevant offices and corporate interests, and thereafter, some of the corporate respondents comprised in the EPAQ parties group.
Individual respondents comprised in the EPAQ parties
Emilio Wang (fifth respondent)
Emilio Wang is a Chinese citizen, born in China in 1986, and in the relevant period and until about 2020, resident in Australia. He is the son of Ms Yang and Mr Yulin Wang, and the husband – or former husband – of Ms Huo, with whom he has a young son, who was under two years old when the proceeding was commenced. Since late January or early February 2020, Emilio Wang has been living in China. He is presently in prison.
Emilio Wang came to Australia in around 2006[19], when he was about 21 years old, to study for an undergraduate degree at the Queensland University of Technology (QUT). To the best of his father’s recollection, Emilio Wang completed an undergraduate degree in computer science at QUT. Emilio Wang started to travel to China frequently in or about late 2013. In August 2014, Emilio Wang married Ms Huo. From mid‑2016, they resided at 287C Kenmore Road, Figtree Pocket, Queensland (Figtree Pocket property), a property purchased in Ms Yang’s name. Thereafter until early 2020, Emilio Wang travelled and lived between China and Australia, but was mostly in China. ASIC records variously record Emilio Wang has having three Australian addresses (in Brisbane and surrounds), including as a director of Freezeframe China Co:
(a)at Unit 5803, 43 Herschel Street, Brisbane Queensland 4000 (current as at the commencement of the proceeding, and from 10 August 2017, and see following paragraphs below), and
(b)at the Cooper Crescent property (defined below), and
(c)at the Figtree Pocket property.
[19]According to the basic questionnaire for divorce application completed by Ms Huo: Exhibit 48, tabs 116.9 and 116.10
Emilio Wang is or was at material times the sole director or a director of each of:
(a)the third respondent, Yilin Trading[20];
(b)the former fourth respondent, Freezeframe China Co[21], which company is also the registrant of the domain name freezeframe.net.au, of which Emilio Wang is the registrant contact person[22];
(c)the seventh respondent, EPAQ International (see further, at [133]);
(d)EPAQ Holdings[23]; and
(e)Freezeframe HK[24].
[20]Emilio Wang was the sole director and secretary of Yilin Trading from incorporation on 18 May 2018; strike off action commenced 11 December 2019; his notice of resignation was filed 6 February 2020. As at 13 May 2020, Yilin Trading’s registered office was c/- Ms Yang at 188 Cooper Crescent, Rochedale, Queensland, also recorded in ASIC records as its principal place of business, and Emilio Wang’s address as director. Yilin Trading’s sole shareholder was Quanjian Holdings, address 287C Kenmore Road, FigTree Pocket, Queensland: MJW‑16, pp213-215; CB (main), pp2498-2500
[21]Freezeframe China Co was incorporated 10 August 2017, and has a paid up capital of $1,500,100. Its sole shareholder is EPAQ Holdings. Emilio Wang and Mr Skelin were both directors from incorporation until Mr Skelin ceased directorship on 16 January 2020. Emilio Wang ceased directorship on 6 February 2020. Pursuant to a creditors’ voluntary winding up on 14 January 2020; from 14 January 2020, appointed liquidator is Daniel Jean Civil. Notification of resolution winding up the company was filed with ASIC on 15 January 2020: MJW‑33, pp15-18; CB (main) pp6742-6744 ASIC Current and Historical Extract as at 3 December 2020
[22] Williams 26 [11]; CB (main) Tab 108 MJW‑33 pp120-121
[23]EPAQ Holdings was incorporated on 3 August 2017. Emilio Wang and Mr Skelin were each appointed a director of EPAQ Holdings from 3 August 2017. Mr Skelin ceased to be a director on 16 January 2020. Until 7 January 2020, the registered office was Level 18, 201‑207 Kent Steet, Sydney. Since 16 January 2020, the registered office has been 188 Cooper Crescent, Rochedale, Queensland
[24]Freezeframe HK’s registered office is in Hong Kong. As at 9 May 2019, Emilio Wang and Mr Skelin were the directors of Freezeframe HK, and Freezeframe China Co was the sole shareholder. According to the Annual Return up to 9 May 2019, electronically signed by PIN on 13 June 2019 apparently by Emilio Wang, prior to 9 May 2018, Emilio Wang held 100% shareholding, and on 9 May 2018 he transferred all 10,000 shares he held in Freeezeframe HK to Freezeframe China Co: Exhibit MWO‑1, pp2-10; CB (main) Tab 63, p1148‑1156
I interpose here to record that Self Care did not authorise or the EPAQ parties (whether Emilio Wang or Freezeframe China Co, or any other EPAQ party) to obtain the domain name freezeframe.net.au. Ms Amoroso’s evidence is that it was only in August 2019 that she first became aware that the domain name was registered, and then in circumstances where Self Care was investigating the supply of counterfeit freezeframe products in Australia and China.
In addition, Emilio Wang is, or was during the relevant period, the legal representative and executive officer of each of Shanghai Yilin (from 12 October 2019, prior to which his father, Mr Yulin Wang was its legal representative and 90% shareholder), Shanghai Yuyi Network (from 15 October 2019, prior to which his mother, Ms Yang, was its legal representative and 90% shareholder), and Hangzhou Yangmaijia (from 24 August 2017 to 28 November 2018).
Emilio Wang was a founding shareholder of EPAQ International together with Mr Skelin and Mr Andrew Brown (see [79] below). Emilio Wang was the sole shareholder in Freezeframe HK prior to 9 May 2018, according to returns filed by him or on his behalf. From 12 October 2019, he became 90% shareholder in Shanghai Yilin, in lieu of his father, Mr Yulin Wang. From 15 October 2019 he became 90% shareholder in Shanghai Yuyi, in lieu of his mother, Ms Yang. Mr Yixiang Yang has held the 10% balance of shares in each of Shanghai Yilin and Shanghai Yuyi since they were incorporated (on 18 December 2018, and 1 April 2019 respectively).
Self Care contends that Emilio Wang was involved in the day to day management and operations of each of those companies, and also of the eighth respondent Quanjian Pty Ltd, and the twelfth respondent, Zuren.
Chinese Judgment and Chinese Appeal Judgment
On 31 August 2022, the People’s Court of Yangpu District, Shanghai convicted Emilio Wang of the crime of counterfeiting Self Care’s registered freezeframe trade marks in China, and sentenced him to a fixed term of imprisonment of three years and six months, and a fine of RMB 1.75 million: First instance criminal judgment of the People’s Court of Yangpu District, Shanghai (2021) Hu 0110 Xing Chu No. 1018, and English translation (Chinese Judgment)[25]. On 10 March 2023, the Third Intermediate People’s Court of Shanghai Municipality ruled on the appeal proceeding filed by Emilio Wang from the first instance Chinese judgment, dismissing the appeal, and upholding the first instance decision: Third Intermediate People’s Court of Shanghai Municipality Criminal Judgment (2022) Hu 03 Xing Zhong 67, and its English translation (Chinese Appeal Judgment)[26]. So far as I am aware, Emilio Wang remains imprisoned in China.
[25]Exhibit FC-2; see Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 12) [2022] FedCFamC2G 1030 (Self Care (No 12)); see also Self Care Corporation Pty Ltd v Green Forest International Pty Ltd (No 14) [2023] FedCFamC2G 868 (Self Care (No 14))
[26]Exhibit SG-2 to affidavit of Ms Shihui (Kelly) Guo affirmed 15 June 2023; see Self Care (No 14)
Emilio Wang’s limited participation in the proceeding
As I adverted to above, Emilio Wang participated in the proceeding briefly, and instructed lawyers to appear for him, from mid‑December 2019 until late January 2020[27]. On applications by Self Care in December 2019, the Court made asset freezing and disclosure orders against Emilio Wang (and Mr Skelin, Yilin Trading, Freezeframe China Co, and EPAQ International, the First Freezing Orders). Emilio Wang provided an asset disclosure affidavit in late December 2019, and a Norwich Pharmacal affidavit on his own behalf and on behalf of Yilin Trading on 29 January 2020. In late and partial compliance with the Court’s orders, Emilio Wang delivered up certain storage devices (but not all his devices) for examination by Self Care’s forensic computer expert, Mr McKemmish.
[27]Counsel appeared for Emilio Wang on 17 December 2019, when orders were made against Emilio Wang. A Notice of Withdrawal as Lawyer was filed on behalf of Emilio Wang on 18 February 2020
Lastly, I do not propose to award any amounts for harm to Self Care’s Reputation and Goodwill, or as Equitable Damages; the first because I am not satisfied that I can make an informed choice of the harm with the jurisdiction, and so would be plucking a figure from the air, and the second (Equitable damages), because it would be to duplicate the quantum I have awarded under the Contract Claim – Alternative 2.
This claim is rejected on the basis that the claim is made up of the Margin Reimbursement Claim, which is the same amount as the ‘Foregone Revenue claim’ component comprised in the ‘Reliance claim’ arising from the breach of contract claims and/or the negligent misstatement claims.
Referral for Apportionment
Finally, I am not in a position to calculate the apportionment of the Quantum I have determined for each of the above claims among the parties being:
(a)EPAQ parties (Emilio Wang (Fifth Respondent), Mr Skelin (Sixth Respondent), Yilin Trading (Third Respondent), EPAQ International (Seventh Respondent), Quanjian Pty Ltd (Eighth Respondent), and Ivan Wang (Eleventh Respondent));
(b)Green Forest parties (First, Second, Fifteenth and Seventeenth respondents); and
(c)AVP party (Sixteenth Respondent).
This task will be referred to a Registrar of this Court to undertake, with such assistance from Mr Ross and Mr Rundle as the Registrar deems fit. This referral does not extend to any further hearing as submissions from the parties unless the Registrar requires.
AA DISPOSITION
I have concluded that Self Care has established its claims in large part, but not in whole against most, but not all respondents.
I will make declarations, order permanent injunctions and make other orders, and pre-judgment interest accordingly.
On the matter of quantification of damages to be awarded further to my conclusions in PART Z, I will refer the calculations to the Registrar as I have said.
To the extent that Self Care has made out its claim, I will order the respondents found liable pay the costs attributable to the claim(s) on which Self Care succeeded against the respondent.
AB CONFIDENTIAL INFORMATION IN JUDGMENT
As I have said above, at hearing some of the parties claimed confidentiality in certain parts of their evidence, and I made an order maintaining those claims of confidentiality. In the course of these reasons I have referred to certain of that confidential material, and whilst some of those references are set it out in Confidential Annexures to these reasons, I have not in all cases done so.
Accordingly, in the first instance I publish these reasons on a confidential basis to the legal representatives of those participating parties who have entered into a current confidentiality regime. I direct the parties to advise the Court and the other relevant parties within 14 days whether they are content with the disclosures that are made in the body of these reasons of their information that is subject to the confidentiality orders, or whether any of that information should be removed from the main body of the reasons into a confidential annexure. To the extent that a party seeks that references to confidential information be restricted from general distribution, the party is to provide a schedule clearly identifying by paragraph and content the part over which confidentiality is to be maintained.
I certify that the preceding two thousand one hundred and eighty (2180) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird. Associate:
Dated: 15 August 2024
SCHEDULE A
SELF CARE’S TRADE MARKS
PART 1
1A AUSTRALIAN REGISTERED TRADE MARKS
(i) Registered in the name of Self Care Corporation Pty Ltd
Trade Mark
Number
Type
Class
Priority date
Freeze Frame
1282081
Word
3[795]
23 Jan 2009
1297383
Fancy
3[796]
5 May 2009
freezeframe instant lash
1532775
Word
3[797]
11 Jan 2013
freezeframe TUMMY TUCK
1760096
Word
3[798]
21 Mar 2016
freezeframe LIP INJECTION
1765463
Word
3[799]
18 Apr 2016
freezeframe REVITAL DAY & NIGHT
1765835
Word
3[800]
20 Apr 2016
freezeframe WRINKLE BLOCK
2033812
Word
3[801]
29 Aug 2019
freezeframe BLEMISH BOMB
2033838
Word
3[802]
29 Aug 2019
freezeframe MAGNALASH
2033846
Word
3[803]
29 Aug 2019
freezeframe BODY BLUR
2118540
Word
3[804]
9 Sept 2020
[795]Cosmetics; cosmetics for personal use; cosmetics for use on the skin; cosmetics preparations; biological products used as components in cosmetics; cosmetics in the form of creams; cosmetics in the form of lotions; skincare cosmetics; anti-aging creams
[796]Biological products used as components in cosmetics; cosmetics; cosmetics for personal use; cosmetics for use on the skin; cosmetics in the form of creams; cosmetics in the form of lotions; cosmetics preparations; skincare cosmetics; anti-aging creams
[797]Adhesives for affixing artificial eyelashes; Adhesives for affixing false eyelashes; Artificial eyelashes; Cosmetic preparations for eyelashes; Cosmetic products for eyelashes; Cosmetics for eyelashes; False eyelashes; Eyelash care products; Cosmetics in the form of mascara; Mascara
[798]After shower creams; Body creams (cosmetics); Cosmetic creams; Cosmetics in the form of creams; Creams for firming the skin; Creams for toning the skin; Day creams; Dermatological creams (other than medicated); Night creams (cosmetics); Non-medicated creams for personal care; Non-medicated creams for the body; Nourishing creams (cosmetics); Skin care creams (cosmetic); Skin creams (cosmetic); Toning creams (cosmetic); Cosmetic preparations for slimming purposes; Slimming aids (cosmetic), other than for medical use; Slimming preparations (cosmetic), other than for medical use; Slimming products (cosmetic), other than for medical use; Skin toners; Skincare cosmetics; Skincare preparations (cosmetic); Adhesives for cosmetic purposes; Cosmetic preparations for skin care; Cosmetic preparations for use on the body; Cosmetic preparations for use on the skin; Cosmetic products for skin care; Cosmetic skin care products; Cosmetics; Cosmetics for personal use; Cosmetics for use on the skin; Cosmetics in the form of lotions; Cosmetics preparations; Lotions for cosmetic purposes; Skin care lotions (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Skin lotions (cosmetic)
[799]Lip gloss; Lip glosses; Lipsticks; Non-medicated creams for the lips; Non-medicated lip balms; Non-medicated lip care preparations; Non-medicated lip salves; Sun protectors for lips (cosmetics); Anti-wrinkle cream; Creams for wrinkles; Anti-aging creams; Anti-ageing creams; Beauty creams; Cosmetic creams; Cosmetics in the form of creams; Facial creams (cosmetic); Non-medicated creams for the face; Skin care creams (cosmetic); Skin creams (cosmetic)
[800]Anti-ageing creams; Anti-aging creams; Anti-wrinkle cream; Tints (cosmetics); Cosmetic goods for care of the skin; Cosmetic preparations for skin care; Cosmetic products for skin care; Cosmetic skin care products; Cosmetics for the treatment of dry skin; Creams for toning the skin; Moisturising skin creams (cosmetic); Skin creams (cosmetic); Skin toners; Face foundation creams; Foundation cream; Skin foundation; Bases for make-up; Foundation make-up; Make-up preparations; Skin care creams (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Barrier creams; Barrier creams for the skin; Base cream; Beauty creams; Creams for wrinkles; Day creams; Moisturising creams (cosmetic); Night creams (cosmetics); Toning creams (cosmetic); Skincare cosmetics; Skincare preparations (cosmetic)
[801] Anti-aging creams, not medicated
[802]Cosmetic acne cleansers; Cosmetic acne creams; Skincare preparations (cosmetic); Cleansing facial masks; Cleansing masks; Cosmetics in the form of gels; Cosmetic skin care products
[803]Beauty care preparations; Beauty products; Products for beauty care; Colour cosmetics for the eyes; Cosmetic preparations; Cosmetic preparations for eyelashes; Cosmetic preparations for use on the face; Cosmetic products for eyelashes; Cosmetics for eyelashes; Cosmetics for personal use; Cosmetics in the form of mascara
[804]Body creams (cosmetics); Bronzing creams; Cosmetic creams for firming the skin; Cosmetic creams for toning the skin; Cream for skin whitening; Foundation cream; Moisturising creams (cosmetic); Non-medicated creams for hydrating the skin; Non-medicated creams for lightening the skin; Non-medicated creams for moisturising the skin; Non-medicated creams for the body; Skin creams (cosmetic); Skin whitening creams; Toning creams (cosmetic); Cosmetic preparations for slimming purposes; none of the foregoing including mascara
(ii) Registered in the name of Self Care IP Holdings Pty Ltd
Trade Mark
Number
Type
Class
Priority date
freezeframe Wrinkle Filler
1375223
Word
3[805]
30 Jul 2010
1376564
Fancy
3[806]
9 Aug 2010
freezeframe revitalEYES
1530543
Word
3[807]
19 Dec 2012
freezeframe science meets beauty
1552846
Word
3[808]
1 May 2013
freezeframe BB BLUR
1637686
Word
3[809]
30 Jul 2014
freezeframe PROTOX
1653383
Word
3[810]
20 Oct 2014
freezeframe FLASH WHITE
1680059
Word
3[811]
17 Mar 2015
[805]Cosmetics; cosmetics for personal use, cosmetic for use on the skin; cosmetics in the form of creams; cosmetics in the form of lotions; cosmetic preparations; skincare cosmetics; anti-aging creams; topical anti ageing preparations
[806]Cosmetics; cosmetics for personal use, cosmetic for use on the skin; cosmetics in the form of creams; cosmetics in the form of lotions; cosmetic preparations; skincare cosmetics; anti-aging creams; topical anti ageing preparations
[807]Cosmetic eye gels; Eye make-up; Eye moisturisers for cosmetic use; Eye wrinkle lotions; Lotion for the eyes (non-medicated); Non-medicated creams for the eyes; Cosmetics; Cosmetics in the form of creams; Cosmetics in the form of gels; Cosmetics in the form of lotions; Cosmetics preparations; Skincare cosmetics; Anti-wrinkle cream; Anti-ageing creams; Anti-aging creams; Beauty care preparations; Beauty care products; Moisturisers (cosmetics); none of the foregoing being hair care products, or for use on the hair
[808]Body creams (cosmetics); Cosmetic eye gels; Cosmetic preparations; Cosmetic preparations slimming purposes; Cosmetic products for skin care; Cosmetics; Cosmetics for bronzing the skin; Cosmetics for eyelashes; Cosmetics in the form of nail polish; Cosmetics in the form of powders; Anti-ageing creams; False eyelashes; Foundation make-up; Make-up products; Mascara
[809]Anti-sun preparations (cosmetics); Colour cosmetics for the skin; Cosmetics; Cosmetics for personal use; Cosmetics for use on the skin; Cosmetics in the form of creams; Cosmetics in the form of lotions; Cosmetics preparations; Skincare cosmetics; Sun barriers (cosmetics); Sun protecting creams (cosmetics); Sun protection products (cosmetics); Sun screen preparations (cosmetics); Tints (cosmetics); Anti-aging creams; Cosmetic moisturisers; Cosmetic preparations for tanning the skin; Facial moisturisers (cosmetic)
[810] Anti-ageing serum, anti-wrinkle serum
[811]Anti-sun preparations (cosmetics); Cosmetics; Skincare cosmetics; Sun blocking cream (cosmetics); Sun screen preparations (cosmetics); Cream for skin whitening
1B CHINESE REGISTERED TRADE MARKS
(i) Registered in the name of Self Care Corporation Pty Ltd (FASOC [29])
Trade Mark
Number
Class
Priority date
Status
Freeze Frame
G1115655
3[812]
2 Dec 2011
Registered
(FU FU AO)
25643859
3[813]
2 Aug 2017
Registered
25643860
3[814]
2 Aug 2017
Registered
(FU RI FEI)
25643861
3[815]
2 Aug 2017
Registered
freezeframe
31579204
3[816]
13 June 2018
Registered
[812](Subclass 0306) Cosmetics; cosmetics for personal use; cosmetics for use on the skin; cosmetic preparations; cosmetics in the form of creams; cosmetics in the form of lotions; skincare cosmetics; anti-aging creams
[813](Subclasses 0301-0310) Cosmetics for animals; Stain removers; Cosmetics; Dentifrices; Air fragrances preparations; Polishing preparations; Grinding preparations; Ethereal oils; Cleansing milk for toilet purposes; Scented wood
[814] (Subclasses 0301‑
[815](Subclasses 0301-0310) Cosmetics for animals; Stain removers; Cosmetics; Dentifrices; Air fragrances preparations; Polishing preparations; Grinding preparations; Ethereal oils; Cleansing lotions; Scented wood
[816](Subclasses 0301; 0306) Make‑up removing preparations; shaving preparations; sun‑tanning preparations [cosmetics]; Cosmetics preparations for skin care; Preparations for cleaning; Cosmetics preparations for baths; Make‑up preparations; Cosmetics preparations for eyelashes; Cosmetic preparations for slimming purposes; Bleaching preparations [decolorants] for cosmetic purposes; Aloe vera preparations for cosmetic purposes; Sunscreen preparations; Collagen preparations for cosmetic purposes; Herbal cosmetics; Cosmetics creams; Skin whitening creams; Balms other than for medical purposes; Anti‑wrinkle cream; Cosmetics; Cosmetics for personal uses; Cosmetics for skins; Lotion cosmetics; Skincare cosmetics
1C SELF CARE’S UNREGISTERED TRADE MARK RIGHTS
[see FASOC, [30]]
PART 2
2A OTHER REGISTERED TRADE MARKS, PENDING TRADE MARKS, AND TRADE MARK APPLICATIONS
(i) Australian registered trade mark of Self Care Corp:
Trade Mark
Registered Number
Type
Class
Priority date (filing date)
1280519
Figurative
3[817]
12 Jan 2009
[817]Anti-sun preparations (cosmetics); body creams (cosmetics); cosmetics; cosmetics for personal use; cosmetics for use on the skin; cosmetics preparations; moisturisers (cosmetics); skincare cosmetics; anti-aging creams; cosmetics in the form of creams; cosmetics in the form of lotions
(ii) Australian registered trade mark of Self Care IP Holdings Pty Ltd:
Trade Mark
Registered Number
Type
Class
Priority date (filing date)
ReviTaleyes
1670996
Word
3[818]
27 Jan 2015
[818]Bases for make-up; eye make-up; foundation make-up; make-up; make-up powder; make-up preparations; make-up products; anti-sun preparations (cosmetics); colour cosmetics for the eyes; colour cosmetics for the skin; cosmetic acne cleansers; cosmetic face and body cleansers and scrubs; cosmetic acne creams; cosmetic eye pencils; cosmetic goods for care of the skin; cosmetic moisturisers; cosmetic pencils; cosmetic preparations for use on the face; cosmetic preparations for use on the skin; cosmetic products for eyebrows; cosmetic products for eyelashes; cosmetic products for protection against the sun; cosmetics; cosmetics for eyebrows; cosmetics for eyelashes; cosmetics for personal use; cosmetics for protecting the skin from sunburn; cosmetics for use on the skin; facial care products (cosmetic); facial care products in the form of creams (cosmetic); facial care products in the form of lotions (cosmetic); hair care products including shampoos, conditioners, serums, creams, lotions and balms; hair styling preparations; lotions for cosmetic purposes; moisturisers (cosmetics)for the face and body; moisturising lotions (cosmetic)for the face and body; moisturising preparations (cosmetic); moisturising skin creams (cosmetic); moisturising skin lotions (cosmetic); night creams (cosmetics); non-medicated cosmetic preparations; non-medicated cosmetics; skin balms (cosmetic); skin care creams (cosmetic); skin care lotions (cosmetic); skin care preparations (cosmetic); skin care products (cosmetic); skin creams (cosmetic); skin lotions (cosmetic); skincare cosmetics; skincare preparations (cosmetic); sun barriers (cosmetics); sun blocking preparations (cosmetics); sun protection products (cosmetics); sun screening preparations (cosmetics); sun skin care products (cosmetics); non-medicated creams for personal care; beauty care preparations; beauty care products; products for beauty care; cosmetic preparations for skin care; cosmetic products for skin care; cosmetic skin care products; non-medicated products for skin care; non-medicated skin care beauty products; non-medicated skin care products; shaving products including shaving foam, cream and gel; skin care creams (cosmetic); skin care lotions (cosmetic); skin care preparations(cosmetic); skin care products (cosmetic); toothpaste and non-medicated teeth whitening products
(iii) Australian trade mark application in the name of Self Care Corp:
Trade Mark
Number
Type
Class
Priority date
freezeframe GLOW GETTER
2033080
Word
3[819]
27 Aug 2019
Status: Lapsed: Not accepted 14 May 2021
freezeframe INSTANT V-LIFT
2033841
Word
3[820]
29 Aug 2019
Status: Lapsed: Not accepted 14 May 2021
[819]Skincare cosmetics; Skincare preparations (cosmetic); Cosmetic moisturisers; Facial moisturisers (cosmetic); Moisturisers (cosmetics); Non-medicated moisturisers; Anti-ageing creams, not medicated; Anti-aging creams, not medicated; Anti-wrinkle cream; Cleansing facial masks; Facial care products (cosmetic); Facial masks (cosmetic); Facial oil; Facial wipes impregnated with cosmetics; Non-medicated facial lotions (cosmetic); Beauty gels; Cosmetic eye gels; Cosmetics in the form of gels; Gel eye masks; Moisturising gels (cosmetic); Collagen preparations for cosmetic purposes; Cosmetic creams; Cosmetic creams for firming the skin; Cosmetic creams for toning the skin; Cosmetic creams for wrinkles; Cosmetic goods for care of the skin; Cosmetic masks; Cosmetic preparations for skin care; Cosmetic products for skin care; Cosmetic skin care products; Cosmetics for the treatment of dry skin; Cosmetics in the form of creams; Cosmetics in the form of non-medicated lotions; Facial creams (cosmetic); Moisturising creams (cosmetic); Night creams (cosmetics); Serum (cosmetic preparations); Skin balms (cosmetic); Skin care creams (cosmetic); Skin care oils (cosmetic); Skin care preparations (cosmetic); Skin care products (cosmetic); Skin creams (cosmetic)
[820]Skincare cosmetics; Skincare preparations (cosmetic); Cosmetic creams for firming the skin; Cosmetic creams for toning the skin; Cosmetic preparations for cleansing the skin; Cosmetic preparations for skin care; Cosmetic preparations for use on the face; Cosmetic preparations for use on the skin; Cosmetic products for skin care; Cosmetic skin care products; Cosmetics in the form of gels; Cosmetics in the form of oils; Eye masks (cosmetic); Facial creams (cosmetic); Facial masks (cosmetic); Facial moisturisers (cosmetic); Moisturising skin creams (cosmetic); Night creams (cosmetics); Serum (cosmetic preparations); Anti-wrinkle cream; Cosmetic creams for wrinkles; Anti-ageing creams, not medicated
SCHEDULE B
SELF CARE CORP’S FREEZEFRAME COPYRIGHT WORKS[821]
[821]FASOC [31] and [30], and AOS Annexure B, Part D [1]-[7]
(Source: FASOC [31])
Packaging of, and advertising material for, the freezeframe products including:
(d)the freezeframe Logo;
(e)the literary works embodied in the packaging of the freezeframe products, including on the product tubes, external cardboard packaging and product inserts, being detailed product claims and descriptions;
(f)the artistic works embodied in the packaging of the freezeframe products, including on the product tubes, external cardboard packaging and product inserts, being the artwork, design elements and layout of the packaging and the illustrations and photographs on the product inserts;
(g)the literary works embodied in Self Care Corp’s website and in other advertising for the freezeframe products, being detailed product claims and descriptions and other written website content, including web articles; and
(h)the artistic works embodied in Self Care Corp’s website and in other advertising for the freezeframe products, being photographs, illustrations and the artwork, design elements and layout of the website.
Specifically, being [The following is as set out in Self Care’s opening submissions in Annexure B, Part D ‘Key Copyright Works’]
(8)freezeframe Logo[822]
[822]Amoroso 1, [31]-[35]: CB (main) Tab 12; Amoroso 5, [14]: CB (main) Tab 41
(9)freezeframe Logo in Chinese[823]
[823]Amoroso 1, [31]-[35]: CB (main) Tab 12; Amoroso 5, [14] CB (main) Tab 41
Left image: China copyright registration no. 01121526[824]
[824]SMEA‑8, pp57‑59: CB(main) Tab 92 pp3551‑3553
Right image: China copyright registration no. 00795592[825]
[825]FASOC [30]; SMEA‑8, pp54-56; CB (main) Tab 92 pp3548‑3550
(10)freezeframe ‘Science Meets Beauty’ logo[826]
[826]Amoroso 5, [14]: CB (main) Tab 41
(China copyright registration no.01121527)[827]
[827]SMEA‑8, pp60, 62‑64: CB (main) Tab 92 pp3554, 3556-3558
(11)Self Care logo[828]
[828]Amoroso 5, [14]: CB (main) Tab 41
(China copyright registration no. 00795591)[829]
[829]SMEA‑8, pp65‑67: CB (main) Tab 92 pp3559‑35561
(12)Packaging of freezeframe products
(a)Artistic works embodied in packaging designs (dielines)[830] and in products inserts (leaflets)[831]
[830] Amoroso 5, [13] CB (main) Tab 41
[831] Amoroso 1, [36(b)] CB (main) Tab 12
(b)Literary works embodied in product claims and other written material on packaging
(c)Associated published editions of the above artistic and literary works.
(13)Advertising material for freezeframe Products
(a)Artistic works embodied in Self Care’s website and in other advertising for the freezeframe Products (design elements, layout, artwork, photographs)
(b)Literary works embodied in Self Care’s website and in other advertising for freezeframe Products) product claims, descriptions, written content)
(c)Associated published editions of the above artistic and literary works.
(14)Self Care’s business stationery
(a)Self Care letterhead (artistic work)[832]example:
[832] Exhibit SMEA 1, pp104-106 CB (main) Tab 54 pp812‑814
(b)Self Care business cards (artistic work) example[833]:
[833]Amoroso 7, [31] CB (main) Tab 173; Exhibit SMEA‑13, pp22-23 CB (main) Tab 174 pp15252‑15253 [see generally Amoroso 5, [9]-[12] CB (main) Tab 41]
SCHEDULE C
[SMEA-1, pp81‑82: CB (main) tab 54, pp789‑790]
CONFIDENTIAL ANNEXURE – ITEMS A, B, C, D, & E
Item A
A. Indicia pursuant to which Ms Amoroso identified counterfeits in June 2018 – the June 2018 product:
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
Item B
B. Description of deductions from product price to Kaola, from spreadsheet created by Ms Amoroso setting out her understanding of Kaola’s structure:
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
Item C
C. China Agent Box – indicia of counterfeit product
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
Item D
D. AVP counterfeit REVITALEYES product indicia
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
Item E
E. Ms Yang’s bank account numbers:
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
CONFIDENTIAL ANNEXURE – TECHNICAL EXPERT EVIDENCE
A. Confidential paragraphs of Ms Fung’s evidence
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
B. Confidential paragraphs of Dr Roughan’s evidence
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
C. Confidential paragraphs of Dr Cordina’s evidence
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
D. Confidential paragraphs of Ms Draheim’s evidence
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
E. Confidential paragraphs of Mr Bartolo’s evidence
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
F. Confidential paragraphs of Mr Leskela’s evidence
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
G Confidential paragraphs of Mr Revert’s evidence
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
CONFIDENTIAL ANNEXURE - FINANCIAL ACCOUNTANT EXPERTS
[The contents of this confidential annexure have been redacted pursuant to order made on 10 September 2024.]
SCHEDULE OF PARTIES
SYG 2771 of 2019 Respondents
Fourth Respondent:
FREEZEFRAME CHINA CO PTY LTD
Fifth Respondent:
KEFEI (EMILIO) WANG
Sixth Respondent:
PASCAL SKELIN
Seventh Respondent:
EPAQ INTERNATIONAL PTY LTD
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:
YULIN WANG
Fifteenth Respondent:
E-GO CHANNEL
Sixteenth Respondent:
AUSTRALIAN VITAMIN PLUS PTY LTD
Seventeenth Respondent:
YAN (CYNTHIA) LI
[571](2.12.2022) T2323.20‑23
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