Sony Computer Entertainment Australia Pty Ltd v Ketsalee

[2001] FCA 1697

FEDERAL COURT OF AUSTRALIA

Sony Computer Entertainment Australia Pty Ltd v Ketsalee [2001] FCA 1697

TRADE MARKS – infringement – where goods seized by Australian Customs Service – where seized goods infringe first applicant’s registered trade marks – where applicants seek order under s 137 of Trade Marks Act 1995 – appropriate form of order

Trade Marks Act 1995 (Cth) ss 135, 137

Sony Computer Entertainment Australia Pty Ltd v Angrainni (2000) 48 IPR 49 cited

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD v PERMSAK “DEAN” KETSALEE

N 1487 OF 2001

EMMETT J
23 NOVEMBER 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1487 OF 2001

BETWEEN:

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183)
FIRST APPLICANT

KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT
SECOND APPLICANT

AND:

PERMSAK “DEAN” KETSALEE
RESPONDENT

JUDGE:

EMMETT J

DATE OF ORDER:

23 NOVEMBER 2001

WHERE MADE:

SYDNEY

UPON THE APPLICANTS GIVING THE USUAL UNDERTAKING AS TO DAMAGES THE COURT ORDERS THAT:

Until further order, the Chief Executive Officer of Customs be restrained from releasing to the designated owner, being the respondent, the 69 CD ROMs which use the second applicant’s registered trade marks numbers 642678 and 642679 and which were received by the Australian Customs Service on 5 October 2001.

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 1487 OF 2001

BETWEEN:

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183)
FIRST APPLICANT

KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT
SECOND APPLICANT

AND:

PERMSAK “DEAN” KETSALEE
RESPONDENT

JUDGE:	EMMETT J
DATE:	23 NOVEMBER 2001
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. I have before me an application for an order under s 137 of the Trade Marks Act 1995. Section 137 is concerned with actions for infringement of trade marks that have been notified to Customs, in respect of seized goods.

2. The application is made ex parte, although there is some indication that the respondent consents to the orders proposed.  The respondent was served in Australia.  While no notice of appearance has been filed, a form of notice of appearance bearing a signature purporting to be a signature of the respondent has been forwarded by facsimile communication to the solicitors for the applicants.  The notice of appearance, however, does not give an address for service, although the respondent's address appears in the document.  It is the address where he was served.  In the circumstances, I have been asked to proceed with the hearing of the interlocutory application ex parte.

3. Section 132(1) of the Trade Marks Act provides that the registered owner of a registered trade mark may give a notice in writing to the Chief Executive Officer of Customs objecting to the importation after the date of the notice of goods that infringe the trade mark. Section 132(2) contemplates that if the registered owner of the registered trade mark has not given a notice under s132(1), an authorised user of the trade mark, having power to give a notice, may ask the registered owner to give such notice in respect of the trade mark. Section 132(3) provides that if the registered owner does not comply with the request within the prescribed period the authorised user may give the notice to the Chief Executive Officer of Customs.

4. The first applicant is an Australian subsidiary of the second applicant.  The second applicant is a manufacturer and a distributor of the Sony PlayStation computer game console and the owner of Australian Registered Trade Marks, numbers 642678 and 642679 in class 9 for computer game players combined with CD ROM drives and the software therefor.

5. By letter of 5 September 1997, the second applicant authorised the first applicant to execute and lodge a notice under s 132 of the Trade Marks Act. By notice dated 8 October 1997, the first applicant purported, as an authorised user, to object to the importation of goods manufactured outside Australia that have applied to them, or in relation to them, a trade mark that is substantially identical with or deceptively similar to one or more of those trade marks listed in the notice. The two trade marks in question were set out in the schedule to the notice. The first applicant requested the Chief Executive Office of Customs to seize any such goods under s 132(2). I am satisfied that the first applicant had authority to give the notice on behalf of the second applicant, notwithstanding that it purported to do so as an authorised user.

6. The evidence before me indicates that the respondent has imported into Australia goods that bear the trade marks of the second applicant. Section 137 provides that an objector may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Chief Executive Officer of Customs.

7. The goods imported by the respondent have been seized and notice has been given of the seizure to the applicants.  The Act contemplates that the designated owner of any seized goods may any time before an objector starts an action for infringement of a notified trade mark in respect of the goods, consent to the goods being forfeited to the Commonwealth by giving notice in writing to that effect to the Chief Executive Officer of Customs.

8. The respondent purported to give such a consent to forfeiture pursuant to s 135. However, it was given after the commencement of this proceeding. There is evidence before me that the respondent does not oppose the order sought by the applicants pursuant to s 137(5). A form of consent order that appears to be signed by the same person who signed the consent to forfeiture that is also in evidence.

9. Section 137(5) provides that if, after three weeks from the day on which an action under s 137(1) is brought, there is not in force an order of the Court preventing the goods from being released, the Chief Executive Officer of Customs must release the goods to their designated owner. That section, on its face, operates notwithstanding the giving of notice under s 135. Section 137(6) contemplates that, if the Court orders that the goods be released, the Chief Executive Officer of Customs must comply with the order.

10. I am satisfied in the circumstances that an order should be made under s 137(3). The scheme of the provisions is slightly curious, for the reasons explained by Lehane J in Sony Computer Entertainment Australia Pty Ltd v Angrainni (2000) 48 IPR 49 at 50-51. Lehane J there expressed the view that it was appropriate that an order be made in terms directed to the Chief Executive Officer of Customs, notwithstanding that he is not a party to the proceeding.

11. The language of s 137(5) contemplates simply that there be an order preventing goods being released. If an order were made in those terms and brought to the attention of the Customs Service, any officer who, notwithstanding notice of that, caused goods to be released would, it seem to me, be liable to proceedings for contempt. Nevertheless, for the reasons indicated by Lehane J, it is probably desirable that any such order be directed to a specific officer. Accordingly, I propose to make the orders sought.

I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:             3 December 2001

Counsel for the Applicant:	Ms S Dowling
Solicitor for the Applicant:	Allens Arthur Robinson
Counsel for the Respondent:	No appearance
Date of Hearing:	23 November 2001
Date of Judgment:	23 November 2001