Specsavers Pty Ltd v Buyinvite Pty Ltd (No 2)
[2012] FCA 292
•22 March 2012
FEDERAL COURT OF AUSTRALIA
Specsavers Pty Ltd v Buyinvite Pty Ltd (No 2) [2012] FCA 292
Citation: Specsavers Pty Ltd v Buyinvite Pty Ltd (No 2) [2012] FCA 292 Parties: SPECSAVERS PTY LTD (ACN 097 147 932) v BUYINVITE PTY LTD (ACN 134 648 589) and STEPHEN PATRICK COLES File number: NSD 389 of 2012 Judge: FOSTER J Date of judgment: 22 March 2012 Legislation: Australian Consumer Law, s 18, s 29 Date of hearing: 22 March 2012 Place: Sydney Division: GENERAL DIVISION Category: No Catchwords Number of paragraphs: 9 Counsel for the Applicant: Mr DB Studdy SC Solicitor for the Applicant: Minter Ellison Solicitor for the Respondents: Mr A Carney of Carneys Lawyers
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 389 of 2012
BETWEEN: SPECSAVERS PTY LTD (ACN 097 147 932)
Applicant
AND: BUYINVITE PTY LTD (ACN 134 648 589)
First RespondentSTEPHEN PATRICK COLES
Second Respondent
JUDGE:
FOSTER J
DATE OF ORDER:
22 MARCH 2012
WHERE MADE:
SYDNEY
THE COURT:
1.MARKS as MFI-1 in the proceeding the Short Minutes of Order dated 22 March 2012 handed up in Court today.
2.GRANTS leave to the respondents to file in Court the Notice of Address for Service nominating Carneys Lawyers, Solicitors dated 21 March 2012.
3.GRANTS leave to the applicant to file in Court the affidavit of Dennis Schubauer sworn on 22 March 2012 and the affidavit of Ken Taylor sworn on 12 March 2012.
4.DECLARES that the first respondent has, in trade or commerce:
(a)engaged in misleading or deceptive conduct or conduct that is likely to mislead or deceive in contravention of s 18 of the Australian Consumer Law;
(b)made false or misleading representations that goods are of a particular value in contravention of s 29(a) of the Australian Consumer Law; and
(c)made false or misleading representations that the respondents have a sponsorship, approval or affiliation in contravention s 29(h) of the Australian Consumer Law,
by making the representations “80% OFF Alex Perry Glasses” and “80% OFF Alex Perry Frames” in advertisements placed on the Internet.
5.ORDERS that, for so long as the applicant and its franchisees have the exclusive right to offer for sale in Australia Alex Perry branded spectacle frames or glasses, the second respondent be restrained from making the representation “80% OFF Alex Perry Glasses” or “80% OFF Alex Perry Frames” or any other representations suggesting that it offers for sale Alex Perry glasses or Alex Perry frames or that information relating to Alex Perry Glasses or Alex Perry Frames is available at the website that the second respondent forthwith take all steps necessary to prevent any Google Adword advertisement placed by the respondents, or either of them, being displayed in response to Google searches containing any of the key words “Alex Perry” or “Perry” in conjunction with the words “glasses” or “frames” or other words to similar effect.
7.ORDERS that Order 5 of the orders made on 13 March 2012 be vacated.
8.ORDERS that the respondents pay the applicant’s costs of and incidental to the proceeding.
9.ORDERS that the proceeding otherwise be dismissed.
10.ORDERS that the Exhibits be returned.
11.ORDERS that these orders may be entered forthwith.
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 389 of 2012
BETWEEN: SPECSAVERS PTY LTD (ACN 097 147 932)
Applicant
AND: BUYINVITE PTY LTD (ACN 134 648 589)
First RespondentSTEPHEN PATRICK COLES
Second Respondent
JUDGE:
FOSTER J
DATE:
22 MARCH 2012
PLACE:
SYDNEY
REASONS FOR JUDGMENT
The parties to this matter have resolved most of their differences on a final basis. A set of Short Minutes of Order has been handed up to me, which I shall mark MFI-1 and which contains eight paragraphs. Paragraphs 1, 3, 4, 5 and 7 are agreed. Paragraph 8 is unnecessary and I do not propose to make that order. The points of difference between the parties concern paragraphs 2 and 6.
Paragraph 2 contains a declaration, the form of which is not seriously in contest. Whether it should be made at all is the matter at issue. The solicitor for the respondents has submitted to me that I should not make such a declaration because it is unnecessary and because the applicant is adequately protected by the injunctions which I have already made and propose to make today.
Whilst the applicant may well be adequately protected by the injunctions, the Court does, from time to time, register its disapprobation of conduct by the making of a declaration. In the present case, the conduct at issue, according to the evidence, constituted serious breaches of the Australian Consumer Law and was of such a character that, consistent with the authorities, it is appropriate to make the declaration which the applicant seeks. I therefore propose to make that declaration. Subject to one or two minor changes, the form of declaration seems to me to be in order provided it is confined, as it is in the draft document in front of me, to the first respondent.
The second matter which is not agreed amongst the parties is the question of whether I should make an order for costs against the second respondent. As I understand the submissions made by the solicitor for the respondents, there is no issue but that the first respondent should pay the applicant’s costs of the proceeding. In this regard, I made an order for costs last week covering the period up to and including 13 March 2012. I will now vary that order so as to make the first respondent responsible for all of the applicant’s costs of and incidental to the proceeding.
That leaves the question of whether or not the second respondent should also be made responsible for costs. Senior Counsel for the applicant has drawn my attention to a number of communications passing between his instructing solicitors and the second respondent prior to the commencement of this proceeding and also subsequent to the commencement of this proceeding. I do not propose to place much weight upon the more recent communications made subsequent to the commencement of this proceeding because, in my view, the respondents have now moved quickly satisfactorily to address the claims made by the applicant with the consequence that the post-commencement date conduct does not, in my view, carry much weight on the question of whether I should make the second respondent also responsible for costs.
Concentrating on the material prior to the commencement of this proceeding, it does seem that the second respondent had carriage of the offending advertisements insofar as the first respondent is concerned and it seems relatively clear that the solicitors for the applicant gave fair warning of their concerns about the advertisements prior to the commencement of this proceeding. The responses made by the second respondent were, to say the least, rather high-handed. They were clearly non-responsive. An example is the email sent on 12 March 2012 at 11.14 am which appears at page 12 of the affidavit of Elisabeth Ailsa Koster, sworn on 13 March 2012, which is in the following terms:
Hi Elisabeth,
All words relating to Alex Perry have been taken off our account, despite Google advising us that there is actually no registered trademark lodged with them for protection.
I’ve just googled Alex Perry myself and nothing has come up.
Kindly stop wasting my time, the courts time and your client’s money.
Regards
--
Stephen Coles
Director, Co-Founder buyinvite.com.au I buyinvite.co.nzI think there is sufficient material in the evidence relied upon by the applicant to justify an order for costs against the second respondent on the basis that he, if not alone, certainly in conjunction with the other director of the first respondent, Mr Beveridge, took a substantial role in both organising the placement of the offending advertisements and in failing satisfactorily to deal with the complaints raised by the solicitors for the applicant about those advertisements.
It was put to me, on behalf of the second respondent, that his conduct was not deliberate or contumelious, but rather based upon a mistaken view of events and of the law. That may well be so, but nonetheless it seems to me that, in addition to holding the first respondent responsible, the second respondent also must be held responsible for what has occurred.
For these reasons, I propose to make an order for costs against both respondents.
I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Foster. Associate:
Dated: 26 March 2012
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