Sony Computer Entertainment Australia Pty Ltd v Angrainni

[2000] FCA 355

FEDERAL COURT OF AUSTRALIA

Sony Computer Entertainment Australia Pty Ltd v Angrainni

[2000] FCA 355

INTELLECTUAL PROPERTY – ex parte application for interlocutory relief – goods which infringe the applicants’ registered trade marks seized by the Australian Customs Service – infringement proceedings commenced by the applicants under s 137 of the Trade Marks Act 1995 (Cth) – whether the appropriate order under s 137(2), which contemplates an order “preventing the goods from being released”, is an order directed to the Australian Customs Service restraining it from releasing the relevant goods, or an order directed to the designated owner of the goods restraining that person from receiving or collecting the goods

Trade Marks Act 1995 (Cth), s 137

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED v JENNY ANGRAINNI

N 156 OF 2000

LEHANE J
17 MARCH 2000
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 156 OF 2000

BETWEEN:	SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED APPLICANT
AND:	JENNY ANGRAINNI RESPONDENT
JUDGE:	LEHANE J
DATE OF ORDER:	17 MARCH 2000
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.Leave be granted to the applicants to file in Court their notice of motion dated 17 March 2000.

2.        The requirements of order 19 rule 3 be dispensed with in relation to that motion.

3.        The notice of motion be returnable instanter.

4.Upon the applicants giving the usual undertaking as to damages, the Chief Executive Officer of the Australian Customs Service be restrained, until further order of the Court, from releasing to the designated owner the goods referred to in paragraph 6 of the application.

5.Upon the applicants giving the usual undertaking as to damages, the respondent be restrained, until further order of the Court, from collecting from the Australian Customs Service the goods referred to in paragraph 6 of the application.

6.The respondent and the Chief Executive Officer of the Australian Customs Service be notified as soon as practicable by the applicants of the terms of the above orders.

7.The matter be relisted before the Court at 9.30 am on Thursday, 23 March 2000.  Liberty to apply on 24 hours notice.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 156 OF 2000

BETWEEN:	SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED APPLICANT
AND:	JENNY ANGRAINNI RESPONDENT

JUDGE:	LEHANE J
DATE:	17 MARCH 2000
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. This is an application ex parte for relief of the kind contemplated by s 137 of the Trade Marks Act 1995 (Cth). The first applicant claims to be the registered proprietor and the second applicant to be the authorised user of two registered trade marks. The applicants have given to the Chief Executive Officer of the Australian Customs Service (the Customs Service) a notice of objection to importation, under s 132(1) of the Act, in relation to goods that infringe those marks.

2. The evidence is that the Customs Service has seized certain goods; and that they are goods in respect of which the trade marks are registered and which have applied to them, or in relation to them, a sign which is substantially identical with, or deceptively similar to, one or both of the registered marks. The Customs Service has accordingly given a notice of seizure to the applicants under s 134 and the applicant has commenced infringement proceedings, and notified the Customs Service of them, under s 137.

3. I am satisfied, on the basis of evidence which has been filed in court and read, and to a degree sufficient to justify the grant of ex parte interlocutory relief, that the applicants are entitled to an order on an interim basis of the kind contemplated by s 137(5). That section provides that if, after three weeks from the day on which the infringement proceedings (that is, these proceedings) were brought, there is not in force at any time an order of the Court preventing the goods from being released, the Customs Service must release the goods to their designated owner (here, the respondent). Subsection (6) then provides that, if the Court orders that the goods be released, the Customs Service must, subject to a qualification which has no bearing on this application, comply with the order.

4. The question which arises is one relating to the form of the order which is appropriate and the party against whom the order should be made.  I have been informed from the bar table that the applicants’ lawyers have been unable to find any authority as to whether the appropriate order, in circumstances such as these, is one directed to the Customs Service restraining it from releasing the relevant goods or, on the other hand, one directed to the designated owner restraining that person from receiving or collecting the goods.

5. The problem arises because the provision appears to contemplate what would more naturally be an order against the Customs Service but, on the other hand, clearly contemplates also that the Customs Service will not be a party to the infringement proceedings.  Subsection (1) of the section provides that an objector, in this case the applicants, may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Customs Service.  Subsection (2) provides that the Court may, on the application of a person, allow the person to be joined as a defendant to the action and must in any event allow the Customs Service to appear and be heard.  Thus my comment that the provision contemplates that the Customs Service will not be a party to the proceedings: if it were, then it would not require specific statutory authority to appear and be heard.

6. Ordinarily, in proceedings to which the Customs Service was not a party, it might be thought inappropriate that an injunction or other order should be directed to it.  On the other hand, the Court has power, in appropriate circumstances, to make orders directly binding persons who are not parties.  The question in this case is whether such an order is contemplated by the Act and, if so, whether such an order is appropriate.  The only substantial clue which the Act itself gives is to be found in the terms of subs (5), to which I have referred, which contemplate an order of the Court “preventing the goods from being released.”

7. Thus, the legislature had in mind an order preventing release; and because the Customs Service is the only person or body in a position to release the goods, such an order would more naturally be directed to it rather than to the prospective recipient of the goods (if released), in this case the respondent.

8. Because the section explicitly requires that notice of such a proceeding be given to the Customs Service and explicitly gives the Customs Service the right to appear and be heard, it seems to me that it is appropriate – indeed it may, from the point of view of the Customs Service, be preferable – that the Customs Service be directly restrained from releasing the goods rather than simply be put on notice that another party has been restrained from receiving them.

9. For those reasons I think it is both within the power of the Court and appropriate to make an order directed to the Customs Service.  Equally, however, in my view, an order may be made directed to the respondent, the prospective recipient of the goods.  That is so, I think, on the basis that there is evidence in support of a claim that the respondent, having already infringed the registered marks by importing the goods, proposes to take delivery of them from the Customs Service in order to engage in activities which will involve further infringements. 

10. Accordingly, I think, an order directed to the respondent restraining her from receiving the goods is a particular form of injunction restraining threatened infringement and, in my view, the evidence justifies me in making such an order.  For those reasons, I propose to make each of the orders sought by the applicants.  I note that the applicants give, in relation to each of the injunctions sought, the usual undertaking as to damages.  Each of the injunctions is expressed to continue until further order, but I contemplate that the matter will be brought back before the Court in the near future.  When it is next before the Court, the question of the continuation of the injunctions can be dealt with.

11. Accordingly, the orders of the Court are that:

    1.Leave be granted to the applicants to file in Court their notice of motion dated 17 March 2000.

    2.        The requirements of order 19 rule 3 be dispensed with in relation to that motion.

    3.        The notice of motion be returnable instanter.

    4.Upon the applicants giving the usual undertaking as to damages, the Chief Executive Officer of the Australian Customs Service be restrained, until further order of the Court, from releasing to the designated owner the goods referred to in paragraph 6 of the application.

    5.Upon the applicants giving the usual undertaking as to damages, the respondent be restrained, until further order of the Court, from collecting from the Australian Customs Service the goods referred to in paragraph 6 of the application.

    6.The respondent and the Chief Executive Officer of the Australian Customs Service be notified as soon as practicable by the applicants of the terms of the above orders.

    7.The matter be relisted before the Court at 9.30 am on Thursday, 23 March 2000.

    8.The parties have liberty to apply on 24 hours notice.

I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lehane.

Associate:

Dated:             24 March 2000

Counsel for the Applicant:	S Dowling
Solicitor for the Applicant:	Allen Allen & Hemsley
Date of Hearing:	17 March 2000
Date of Judgment:	17 March 2000