Sony Corporation v Costaneo - [2012] FCA 153

FEDERAL COURT OF AUSTRALIA
Sony Corporation v Costaneo [2012] FCA 153

Citation: Sony Corporation v Costaneo [2012] FCA 153

Parties: SONY CORPORATION v ALESSANDRO COSTANEO (ALSO KNOWN AS ALEX CONSTANO OR ALESSANDRO CONSTANTO)

File number(s): NSD 1724 of 2011

Judge: YATES J

Date of judgment: 27 February 2012

Catchwords: TRADE MARKS – infringement – seizure of goods and forfeiture to the Commonwealth pursuant to s 137 of the Trade Marks Act 1995 (Cth) – default judgment

Legislation: Trade Marks Act 1995 (Cth) ss 133, 134, 137
Federal Court Rules 2011 rr 5.02, 5.22, 5.23, 10.24, 11.06, 16.07, 16.32

Date of hearing: 27 February 2012

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 20

Solicitor for the Applicant: Mr P Kerr of Allens Arthur Robinson

Counsel for the Respondent: The respondent did not appear

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1724 of 2011

BETWEEN:
SONY CORPORATION
Applicant

AND:
ALESSANDRO COSTANEO (ALSO KNOWN AS ALEX CONSTANO OR ALESSANDRO CONSTANTO)
Respondent

JUDGE:

YATES J

DATE OF ORDER:

27 FEBRUARY 2012

WHERE MADE:

SYDNEY

THE COURT:
1.Orders that default judgment be given against the respondent pursuant to r 5.23(2)(c) of the Federal Court Rules 2011.
2.Declares that the respondent has infringed the applicant’s registered trade mark no. 355450.
3.Declares that the respondent has infringed the applicant’s registered trade mark no. 355451.
4.Declares that the respondent has infringed the applicant’s registered trade mark no. 767856.
5.Declares that the respondent has infringed the applicant’s registered trade mark no. 767857.
6.Orders that the respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the applicant’s registered trade mark no. 355450.
7.Orders that the respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the applicant’s registered trade mark no. 355451.
8.Orders that the respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the applicant’s registered trade mark no. 767856.
9.Orders that the respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the applicant’s registered trade mark no. 767857.
10.Orders that those of the 120 User Manuals, 101 Notebook Style Computer – Soft Covers, 238 Stickers, 1 Roll of Serial Numbers and Bar Code Stickers, 99 Cardboard Packaging Boxes for Computers and 210 Stick on badges which were imported by the respondent and seized by the Australian Customs Service on 24 August 2011 and which bear any of the words or trade marks SONY or VAIO, be forfeited to the Commonwealth.
11.The respondent pay the applicant’s costs.

Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1724 of 2011

BETWEEN:
SONY CORPORATION
Applicant

AND:
ALESSANDRO COSTANEO (ALSO KNOWN AS ALEX CONSTANO OR ALESSANDRO CONSTANTO)
Respondent

JUDGE:

YATES J

DATE:

27 FEBRUARY 2012

PLACE:

SYDNEY

REASONS FOR JUDGMENT
(REVISED FROM TRANSCRIPT)

By interlocutory application filed on 13 February 2012 the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2012] FCA 153
Decision Date: 27 February 2012

CaseChat Overview and Summary

In Sony Corporation v Costaneo, Sony sought to protect its intellectual property against infringement by Costaneo. The dispute arose from allegations that Costaneo was selling counterfeit Sony products, leading to a legal action in the Federal Court of Australia. The central issue before the court was whether the alleged infringing goods could be seized and forfeited to the Commonwealth under section 137 of the Trade Marks Act 1995 (Cth), given that a default judgment had been entered against Costaneo.

The court had to determine the extent of its authority to order the seizure and forfeiture of goods in cases of trade mark infringement. The court examined the provisions of section 137 and considered whether the default judgment provided sufficient grounds for the court to exercise its power to order the forfeiture of the infringing goods. The court also needed to assess whether the forfeiture order was an appropriate remedy in the circumstances.

In its judgment, the court concluded that the default judgment entered against Costaneo did provide sufficient grounds for the court to order the seizure and forfeiture of the infringing goods. The court found that the Trade Marks Act 1995 (Cth) conferred the necessary authority to make such an order, and that the forfeiture of the infringing goods was an appropriate remedy in this case. The court noted that the default judgment indicated a clear case of trade mark infringement, and that the forfeiture of the infringing goods would effectively deter further infringement and protect Sony's intellectual property rights. The court thus ordered the seizure and forfeiture of the infringing goods to the Commonwealth.

Orders