SociéTé Des Produits Nestlé SA v Christian (No.12)

[2014] FCCA 2875

FEDERAL CIRCUIT COURT OF AUSTRALIA

SOCIÉTÉ DES PRODUITS NESTLÉ SA & ORS v CHRISTIAN (No.12) [2014] FCCA 2875

Catchwords:

PRACTICE AND PROCEDURE – Injunctive relief – whether previous orders made by the Court are capable of being complied with.

TRADEMARKS – Scope of injunctive relief – whether previous order restrains conduct otherwise not prohibited by the Trade Marks Act 1995 (Cth) – whether a person infringes a registered trade mark by promoting or offering on a website accessible to persons in Australia the sale of goods outside Australia by reference to a trade mark that if used in connection with the supply of goods or services in Australia would constitute infringement of a registered trade mark.

Legislation:

Federal Circuit Court Rules 2001 (Cth), rr.16.05(2)(d), 16.05(2)(e)
Trade Marks Act 1995 (Cth), ss.4, 120

Aristoc Ltd v Rysta Ltd [1945] AC 68 at 102
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Jackson & Co v Napper; In re Schmidt’s Trade-Mark (1886) 35 Ch D 162
Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569
Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402
Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025
Société Des Produits Nestlé SA & Anor v Christian & Anor (No.6) [2014] FCCA 2368

First Applicant: SOCIÉTÉ DES PRODUITS NESTLÉ SA

Second Applicant: NESTLÉ AUSTRALIA LTD
(ACN 000 011 316)

Third Applicant: PREMIER NUTRITION CORPORATION

Respondent: JAMES WILLIAM CHRISTIAN

File Number: SYG 3214 of 2013

Judgment of: Judge Manousaridis

Hearing date: 25 November 2014

Delivered at: Sydney

Delivered on: 9 December 2014

REPRESENTATION

Counsel for the Applicants: Ms J.M. Beaumont

Solicitors for the Applicants: Banki Haddock Fiora

Respondent appeared by videoconference.

ORDERS

1. Post Foods Australia Pty Limited is joined as an applicant.

2. Order 2 of the orders made on 3 September 2014, as varied by the orders made on 17 October 2014, is further varied by adding after the word “promoting” the words “for sale”.

3. Order 3(3C) of the orders made on 17 October 2014 is set aside.

4. The respondent by himself, or by his employees or agents, is restrained from operating or using the website to which the domain name resolves (Website) to promote, supply, sell, or otherwise deal with supplements and therapeutic products under or by reference to the A-SASHI Word Mark or the First A-SASHI Device Mark or the Second A-SASHI Device Mark (as these terms are defined in the orders made on 3 September 2014) (A-SASHI marks) unless:

   (a)the Website is set to block the sale or supply into Australia of goods or services in relation to which any one of the A-SASHI marks is used; and

   (b)the Website is set to cause the checkout page on the Website to state that goods in relation to which any one of the A-SASHI marks is used are shipped only within the United States of America or some other place other than Australia; and

   (c)the Website contains no reference to Australia including any address in Australia.

5. Each party bear its or his own costs in relation to the matters disposed of by these orders.

FEDERAL CIRCUIT COURT
OF AUSTRALIA
AT SYDNEY

SYG 3214 of 2013

SOCIÉTÉ DES PRODUITS NESTLÉ SA

First Applicant

NESTLÉ AUSTRALIA LTD (ACN 000 011 316)

Second Applicant

PREMIER NUTRITION CORPORATION

Third Applicant

And

JAMES WILLIAM CHRISTIAN

Respondent

REASONS FOR JUDGMENT

Introduction

1. On 3 September 2014, I held that the respondent, Mr Christian, had infringed trade marks owned by the first applicant, and made a number of orders.[1] Order 3 of those orders was as follows:

   By 10 September 2014 the first respondent take down from the websites to which the domain name and the domain name resolve, and take down from the Facebook account at any content which displays the sign “A-SASHI” and either of the First A-SASHI Device Mark and the Second A-SASHI Device Mark.

   [1] Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025

2. On 17 October 2014, order 3 of the orders made on 3 September 2014 was replaced by three orders, one of which was order 3(3C).[2] That order provided as follows:

   By 31 October 2014 the first respondent restrict the countries in which the website to which the domain name resolves can be viewed to block the site from IP addresses in Australia.

   [2] Société Des Produits Nestlé SA & Anor v Christian & Anor (No.6) [2014] FCCA 2368

3. On 31 October 2014 there came before me an application in a case filed by Mr Christian seeking, among other things, a stay of order 3(3C). The ground on which Mr Christian applied for the stay was that it is not technically feasible to comply with the order. On 31 October 2014 I extended the time for complying with order 3(3C), made directions for the filing of evidence on that issue, and set down for hearing at 10.15 am on 25 November 2014 the question of whether it is technically feasible for Mr Christian to comply with order 3(3C).

4. On 18 November 2014 Mr Christian filed an application in a case seeking an order that Mr Christian be authorised to issue subpoenas to a number of persons, and an order that order 3(3C) of the orders I made on 17 October 2014 be set aside. I arranged to have this application listed for interlocutory hearing at 10.15 am on 25 November 2014.

5. On 24 November 2014 Mr Christian filed another application in a case. In that application, Mr Christian seeks orders that Post Foods Australia Pty Limited be joined as an applicant to the proceedings, that Mark Christian be removed as a respondent, that the hearing of the application in a case filed on 18 November 2014 to set aside order 3(3C) be adjourned to a date to be fixed for the purpose of allowing time for discovery of documents from subpoenas, and that the date for complying with order 3(3C) be extended to a date to be fixed. I also listed this application in a case for hearing at 10.15 am on 25 November 2014.

6. On 25 November 2014 I heard and determined against Mr Christian his application for an adjournment of his application to set aside order 3(3C) of the orders I made on 17 October 2014. I then heard all other applications. During the course of the hearing, the applicants consented to my ordering that Mark Christian be removed as a party.

7. In these reasons, therefore, I deal with three issues. The first is whether it is technically feasible to comply with order 3(3C). The second is whether I should set aside order 3(3C). And the third is whether Post Foods Australia Pty Limited should be joined as an applicant.

Is it technically feasible to comply with order 3(3C)?

1. I first consider the evidence that was adduced on this issue.

Evidence

1. The evidence on which Mr Christian initially relied for contending he could not comply with order 3(3C) is contained in an email Mr Christian annexed to his affidavit of 29 October 2014. On the basis of that email, Mr Christian deposed as follows:[3]

   On 17 October 2014 the Court made order 3(c) [sic] which I cannot technically comply with because I have since been advised by Shopify, the ecommerce platform used for hosting the A-Sashi Vitamins online store, that it is unable to block IP addresses’ in Australia from accessing the A-Sashi Store; annexed to this affidavit and marked “B” is email communication between Shopify and myself. Shopify is a global market leader ecommerce platform which hosts over 100,000 online stores and has received US$122M in funding to date. In attempt to comply with order 3(c) [sic] the A-Sashi Vitamins store settings have already been set to restrict the sale of goods to Australia.

   [3] Affidavit of J W Christian, 29.10.2014, [5]

2. In response to Mr Christian’s affidavit, the applicants rely on an affidavit of Mr Michael Mulligan made on 10 November 2014. Mr Mulligan is a website developer and IT specialist, having worked in those fields since 2002.[4] For the past five years, Mr Mulligan has conducted his own website development business under the name “Ambit”.[5] Mr Mulligan has built seven websites for customers of Ambit on the Shopify platform and Ambit is listed as a recommended expert on the Shopify website.[6] The word “Shopify” refers to an e-commerce platform that provides web-based software and hosting designed to simplify the start-up and maintenance of a business website for selling products online.[7]

   [4] Affidavit of M R Mulligan, 10.11.2014, [3]

   [5] Affidavit of M R Mulligan, 10.11.2014, [4]

   [6] Affidavit of M R Mulligan, 10.11.2014, [9]

   [7] Affidavit of M R Mulligan, 10.11.2014, [10]

3. In his affidavit, Mr Mulligan seeks to demonstrate that it is possible to restrict the countries in which a website on the Shopify platform can be viewed to block the site from IP addresses in Australia. He seeks to demonstrate this by describing the steps he has taken to set up a Shopify website and then prevent access to that site from IP addresses situated in Australia. Mr Mulligan took the following steps.

4. First, Mr Mulligan set up a demonstration site on the Shopify platform with a particular address. A demonstration site is the initial format that a website on the Shopify platform is set to. It allows a website developer to work on the initial set-up of a site more easily.[8]

   [8] Affidavit of M R Mulligan, 10.11.2014, [13]

5. Second, on 6 November 2014 Mr Mulligan visited the “Shopify Manual” section of the Shopify website and downloaded a document titled “Getting a visitor’s location (i.e. country) using JavaScript”. That document addresses a limitation of the Shopify platform, namely, its inability to “expose your customer’s location or IP address in Liquid” (Instructions Document).[9] The document says that this can only be obtained using JavaScript and it presents two options.[10]

   [9] Liquid is an open-source, Ruby-based template language created by Shopify.

   [10] Affidavit of M R Mulligan, 10.11.2014, [14], Annexure “C”

6. Third, using the instructions contained in the Instructions Document Mr Mulligan downloaded, Mr Mulligan did the following:[11]

   a)In the “Themes” section of the demonstration site, Mr Mulligan clicked on the link “Edit HTML/CSS”.

   b)In the section to which the clicking led, Mr Mulligan added the code set out in paragraph 15(b) of his affidavit. The instructions he included in the section were taken from the Instructions Document. The function of that code is to check the IP address of every person who accesses a page of the website. If the IP address of the person accessing the site is an address within Australia, it automatically redirects the person to a nominated page of the demonstration website.

   c)Mr Mulligan then went to another page of the demonstration site, and renamed it the “Australia Page”. This is the page to which persons with IP addresses in Australia who visit the demonstration website are directed.

   d)Mr Mulligan added a code to the home page of the demonstration site to show a user, when accessing the home page, where they are accessing the site from. This is not a necessary step to block a Shopify website from Australian IP addresses.

   [11] Affidavit of M R Mulligan, 10.11.2014, [15]

7. Mr Mulligan then tested the impact that these changes would make to persons accessing the demonstration website from IP addresses outside Australia and, based on the matters he sets out in his affidavit, satisfied himself that persons with IP addresses outside Australia would be able to access the demonstration website.[12]

   [12] Affidavit of M R Mulligan, 10.11.2014, [16]

8. Based on these steps, Mr Mulligan concludes that “it is possible to restrict the countries in which a website on the Shopify platform can be viewed to block the site from IP addresses in Australia”,[13] that “any Shopify website could be restricted in this way”,[14] and that the steps Mr Mulligan took, and which he described in his affidavit, “could be as easily implemented and [could be] just as effective whether they were done during the initial set-up stage of a Shopify website, or on an existing Shopify website”.[15] Mr Mulligan further said that it took him approximately thirty minutes to implement the blocking of the demonstration site from IP addresses in Australia, and test that the redirection had worked.[16]

   [13] Affidavit of M R Mulligan, 10.11.2014, [17]

   [14] Affidavit of M R Mulligan, 10.11.2014, [18]

   [15] Affidavit of M R Mulligan, 10.11.2014, [19]

   [16] Affidavit of M R Mulligan, 10.11.2014, [20]

9. Mr Christian has filed an affidavit affirmed on 18 November 2014, in response to that of Mr Mulligan. Mr Christian has not, however, put on any affidavit from the author of the email Mr Christian attaches to his affidavit of 29 October 2014, or from any other person, that responds to Mr Mulligan’s affidavit. Instead, Mr Christian deposes that on 3 November 2014 he identified “a Shopify recommended top expert named Shopify Ninjas” and “enquired if it is possible to block IP addresses from Australia”. Mr Christian says he “was advised that it is not possible to block but there is a way in theory to point or re-direct IP addresses”.[17] In support of that assertion, Mr Christian has annexed emails he exchanged with Tristan King on 3 November 2014.[18] The first email is one from Mr Christian to Mr King:

   [17] Affidavit of J W Christian, 18.11.2014, [5]

   [18] Affidavit of J W Christian, 18.11.2014, [5], annexure “B”

   Please advise if it is possible to block our Shopify store ( from IP addresses in Australia.

   If it is possible please provide a quote and approximate timeline.

10. Mr King responded with the following email:

    In theory yes, you could point it to another website that says, “You are blocked” or similar. Do you have another website to point to?

    If you like, you can use our plugin and install it yourself: hhtp:// we can set it up for you at a cost of $200, 2 business days.

11. Mr Christian then sent the following email to Mr King:

    Thanks for your reply.

    I don’t have another website to point to, so perhaps a pop-up message instead saying “Shipping is not available to Australia”?

    If possible please provide a quote and approximate timeline.

12. Mr King responded as follows:

    Thanks for the update. We have a minimum 5-hour block for development. I’d estimate this to take 2-3 hours. Do you have anything else you’d like help with on your store that could use a little more time?

    Our rate is $120/hr, so to do this plus some other changes would be 5 x $120 = $600.

    Just let me know if you’d like to go ahead, I can also give some suggestions on common developments if you’d like.

13. Mr Christian also annexed to his affidavit an exchange of emails from another Shopify expert, Mr Matthew Robinson of “Seventyfour Design”.[19] The first email was sent by Mr Christian and is as follows:

    Please advise if it is possible to block our Shopify store ( from IP addresses in Australia.

    I’ve been advised by Scott Moorhouse from the Shopify guru team that there isn’t a way Shopify are able to block IP addresses from accessing a shop.

    If it is possible to custom code JavaScript into our store to restrict certain IP addresses please provide a quote and approximate timeline.

    [19] Affidavit of J W Christian, 18.11.2014, [7], annexure “G”

14. Mr Robinson responded with the following email, also on 11 November 2014:

    You would need a network admin person to do it and it would most likely take a bit of time and a lot and people [sic] could still access the site via proxies. It could be done by an external service but I can’t do this sorry. If they are worried about spammers/attackers then they can set up a members system where only those with accounts can access the site but this takes a little while to set up. If you don’t want to ship to Australia I would suggest using prohibitively high shipping rates to Australian IPs.

    I hope this helps.

15. Mr Christian also claims Mr Mulligan has no expertise that qualifies him to give any opinion about any website that operates on the Shopify platform. Mr Christian says that Mr Mulligan is a designer, not a developer. Mr Christian cross-examined Mr Mulligan and put to him that Mr Mulligan does not qualify or, at least, if he were now to apply to be a Shopify expert, he would not qualify.

Is it feasible?

1. Whether or not it is feasible for Mr Christian to comply with order 3(3C) of the orders I made on 17 October 2014 largely turns on whether I accept the evidence of Mr Mulligan. And I do accept his evidence.

2. Even if Mr Mulligan is not a Shopify expert, he carried out procedures which have the effect of preventing persons with an IP address in Australia from accessing a website built on the Shopify platform. Mr Christian has not put on any evidence that casts any doubt on any part of Mr Mulligan’s affidavit. In particular, and as I note above, although Mr Christian sought the opinions of two Shopify experts, he did not request those persons to comment on the procedures Mr Mulligan described he undertook.

3. Second, the email exchanges between Mr Christian and Mr King and Mr Christian and Mr Robinson which Mr Christian annexed to his affidavit also show that it is feasible to make adjustments on the A-Sashi Vitamins webpage that would prevent persons having an IP address in Australia from accessing the website.

4. In my opinion, therefore, it is feasible for Mr Christian to comply with order 3(3C).

Should order 3(3C) be set aside?

1. Mr Christian raised a number of arguments for setting aside order 3(3C). The essential ground on which Mr Christian submits the order should be set aside, however, is that it is too broad. Mr Christian submits he has implemented settings on the website to block the sale of goods to Australia. The settings have been changed to now cause the A-Sashi Vitamins checkout page to state that A-Sashi Vitamins goods are only shipped to the United States of America. Mr Christian also says that he has removed all reference to Australia from the website, and has listed an address only in the United States of America. Mr Christian further says that when a search is conducted on Google, the result displays the word “Shipping Orders within USA only”.

2. The question that arises is whether Mr Christian’s current operation of the website would constitute an infringement of the MUSASHI trade marks. If not, then, to the extent order 3(3C) prevents Mr Christian from operating the website in that manner, the order will be broader than is necessary to prevent infringement of the MUSASHI trade marks.

3. In my reasons for judgment of 3 September 2014, I considered what constituted an infringement of a trade mark within the meaning of s.120 of Trade Marks Act 1995 (Cth) (the Act). I there said (omitting references):[20]

   First, to infringe a trade mark a person must use a “sign”, and he or she must use the sign “as a trade mark”. “Sign” is defined to include any combination of “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”. And “trade mark” is defined to mean a “sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.

   Second, to use “a sign” “as a trade mark” means to use the sign “as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”. Thus, to use the language of s.17 of the Act, the claimed infringer must use the claimed infringing mark to distinguish goods or services dealt with or provided in the course of trade by the claimed infringer from goods and services so dealt with or provided by any other person.

   [20] Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025 at [33] and [34]

1. What I did not explicitly state in these passages is that the infringing conduct must take place in the territories specified in s.4 of the Act (which, for simplicity, I will refer to as Australia). That is so because s.4 of the Act in terms states that the Act applies to Australia. Therefore, the question I must consider is whether Mr Christian’s current operation of the website involves him using the A-SASHI name or mark in Australia. That, in turn, requires me to consider the meaning of the concept of use of a trade mark in a particular place.

2. That question was considered in Jackson & Co v Napper; In re Schmidt’s Trade-Mark.[21] The issue in that case was whether there had been a user by the applicant of a certain mark in England before a particular date. Stirling J considered that the issue turned on the correct answer to the question: “what is meant by the user of a trade-mark in England”.[22] His Lordship held that a “trade mark has been used in England if you find that the articles marked with it have been actually vendible articles in the market in England”.[23] His Lordship held that where a foreign firm had supplied goods bearing its trade mark to English retailers who then put the goods up for sale in England, there was a user of the mark on the goods in England but where the applicant supplied goods to orders from English traders who were intending to export the goods to other countries, there was no user of the mark in England in respect of these goods.

   [21] (1886) 35 Ch D 162. My discussion of this case draws heavily on Colman, W J “Use of a Trade Mark in Australia: Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited” (1968) 6(1) Sydney Law Review 52

   [22] ((1886) 35 Ch D 162 at page 178

   [23] (1886) 35 Ch D at page 179

3. That a mark had to be used in relation to vendible goods or services in the course of trade before such use could be held to constitute an infringement of a registered trade mark was confirmed by the plurality in E & J Gallo Winery v Lion Nathan Australia Pty Ltd.[24] The plurality said that “the reference in s 17 to “the course of trade” encompasses the idea that use of a trade mark is use in respect of “vendible articles””;[25] and that a “mark is used only if it is used “in the course of trade””.[26]

   [24] (2010) 241 CLR 144

   [25] (2010) 241 CLR 144 at [44], citing Jackson & Co v Napper; (1886) 35 Ch D 162 at 179 per Stirling J; Aristoc Ltd v Rysta Ltd [1945] AC 68 at 102 per Lord Wright.

   [26] (2010) 241 CLR 144 at [44], citing Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, affirmed on appeal in Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569.

4. In my opinion, displaying a mark on a website accessible by persons in Australia in relation to goods or services that are not available for sale or supply in Australia does not constitute a use of that mark in Australia. It does not constitute the use in Australia of the mark “in respect of “vendible articles””. It cannot, therefore, constitute an infringement of a trade mark registered under the Act.

5. It follows that Mr Christian’s operating the webpage at in the manner he describes in paragraph 9 of his affidavit of 18 November 2014 does not constitute a use of the A-SASHI mark as a trade mark in Australia, and is not an infringement of the MUSASHI trade marks. Order 3(3C), therefore, to the extent it prevents Mr Christian from operating the webpage at in the manner he describes in paragraph 9 of his affidavit, goes beyond that which is necessary to prevent Mr Christian infringing the MUSASHI trade marks.

6. This, next, leads me to consider order 2(a) of the orders I made on 3 September 2014.[27] That order restrains Mr Christian from “importing into, and selling, offering for sale or promoting supplements and therapeutic products in Australia, under or by reference to the A-SASHI Word Mark or the First A-SASHI Device Mark or the Second A-SASHI Device Mark”. On a literal reading, order 2(a) restrains Mr Christian from promoting in Australia the sale of his A-SASHI branded goods anywhere in the world. In my opinion, that possible interpretation of order 2 can be, and should be removed, by including after the word “promoting” the words “for sale” to make it clear that the promotional activities that Mr Christian is restrained from engaging in relates to the sale in Australia of his A-SASHI branded goods.

   [27] Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025

7. I propose, therefore, to set aside order 3(3C) and replace it with an order restraining Mr Christian from operating the webpage at in a manner other than the manner he describes in paragraph 9 of his affidavit. I also propose to amend order 2(a) in the manner I have already indicated.

8. Before I leave this part of my reasons of judgment, I should identify what I consider to be the source of my power to make the orders I propose to make. There are at least three sources. The first is the liberty to apply that I reserved on 3 September 2014. Second, there is r.16.05(2)(d) of the Federal Circuit Court Rules 2001 (Cth) (Rules) which grants the Court power to set aside an injunction. Third, there is r.16.05(2)(e) of the Rules which empowers the Court to set aside an order that does not reflect the intention of the Court. The intention of the orders that were made on 3 September and 17 October 2014 was to restrain conduct which the Act prohibits. I have found that order 3(3C) is capable of operating, and in the circumstances of this case, does in fact operate, to restrain conduct that is not prohibited by the Act.

Joinder of Post Foods Australia Pty Limited

1. In his application in a case filed on 24 November 2014, Mr Christian sought an order that Post Foods Australia Pty Limited be joined as an applicant in the proceedings. I have been informed that Post Foods Australia Pty Limited is a company associated with Premier Nutrition Corporation who is now the owner of the MUSASHI trade marks. The ground on which Mr Christian seeks the joinder – which is not opposed – is that his Honour Justice Yates in the appeal Mr Christian has filed made an order joining both Premier Nutrition Corporation and Post Foods Australia Pty Limited as parties to the appeal.

2. At the hearing on 25 November 2014, Mr Christian opposed my making an order joining Post Foods Australia Pty Limited as a party because he submitted that the applicant’s lawyers should have sought to add Post Foods Australia Pty Limited as a party on 31 October 2014 when they applied to have Premier Nutrition Corporation joined as a party. Mr Christian did, however, acknowledge that it was logical that I add Post Foods Australia Pty Limited as a party. I propose to so order.

Costs

1. I also propose to order that each party bear its or his own costs in relation to the issues I have decided in these reasons for judgment.

I certify that the preceding forty-one (41) paragraphs are a true copy of the reasons for judgment of Judge Manousaridis

Associate: 

Date:  9 December 2014