Speedo Holdings B.V. v Evans (No 2)

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FEDERAL COURT OF AUSTRALIA

Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227

Citation: Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227
Parties: SPEEDO HOLDINGS B.V. AND ANOR v DAVE EVANS
File number: NSD 1442 of 2011
Judge: FLICK J
Date of judgment: 3 November 2011
Catchwords: PRACTICE AND PROCEDURE – application for default judgment – no defence filed – default by respondent – satisfied of claim to relief – allegations in statement of claim deemed to have been admitted – discretion in favour of granting relief
Legislation: Australian Consumer Law (Cth) ss 18, 29(1)(g)
Competition and Consumer Act 2010 (Cth) Sch 2
Federal Court of Australia Act1976 (Cth) 31A
Federal Court Rules O 35A r 3, O 37 r 3, O 42 r 13, O 62 r 4, O 80 r 4
Federal Court Rules2011 rr 1.32, 4.12, 5.01, 5.02, 5.22, 5.23, 9.52, 9.55, 10.23, 10.24, 11.01, 16.32, 40.02, 41.09
Trade Marks Act1995 (Cth) s 120
Trade Practices Act1974 (Cth) ss 52, 53
Cases cited: ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577, considered
Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433, cited
Australian Building and Construction Commissioner v Abbott (No 3) [2011] FCA 340, cited
Australian Competition and Consumer Commission v 1Cellnet LLC [2005] FCA 856, considered
Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2006] FCA 1427, 236 ALR 665, considered
Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2007] FCAFC 146, 161 FCR 513, cited
Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) [2002] FCA 1487, 196 ALR 576, considered
Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) [2011] FCA 352, cited
Bank of Kuwait and the Middle East v Ship MV “Mawashi Al Gasseem” (No 2) [2007] FCA 815, 240 ALR 120, cited
Bucketts Road Business Services Pty Ltd v Phalona Pty Ltd [2008] FCA 57, cited
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, considered
CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170, considered
CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279, 128 FCR 408, referred to
Lawson v NSW Minister for Land and Water Conservation [2007] FCA 8, cited
Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388, considered
Macquarie Bank Ltd v Seagle [2005] FCA 1239, considered
Macquarie Bank Ltd v Seagle [2008] FCA 1417, considered
McKenzie v South Australia [2005] FCA 22, 214 ALR 214, cited
Microsoft Corporation v Short [2011] FCA 247, cited
Pearlman (Veneers) SA (Pty) Ltd v Bartels [1954] 3 All ER 659, considered
Rathner v Bendigo Skyrider Pty Ltd [2011] FCA 626, cited
Speedo Holdings B.V. v Evans [2011] FCA 1089, cited
Sumitomo Mitsui Banking Corporation v Sumitomo Mitsui Financial Group Pty Ltd…
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Details
Case
[2011] FCA 1227
Decision Date

CaseChat Overview and Summary

The case of Speedo Holdings B.V. v Evans (No 2) involved the applicants, Speedo Holdings B.V. and Speedo Australia Pty Ltd, seeking an interlocutory application for default judgment against the respondent, Mr Evans. The applicants sought relief for trademark infringement and related activities, including the registration and operation of domain names featuring the Speedo trademark. The respondent failed to file a defence or any affidavit evidence, leading to the applicants' application for default judgment under r 5.23(2)(c) of the Federal Court Rules 2011.

The legal issues before the court included whether the court could grant a default judgment without any defence being filed, and if so, what relief could be granted. The applicants argued that since the respondent was in default, the allegations in the statement of claim should be deemed admitted, and the court should grant the relief claimed. The court had to determine whether it was satisfied that the applicants were entitled to the relief claimed and whether granting such relief was in the interests of justice.

The court found that since the respondent had not filed any defence or evidence, the allegations in the statement of claim were deemed admitted. The court considered the principles applicable to granting relief under r 5.23(2)(c) and concluded that it was satisfied the applicants were entitled to the relief claimed. The court noted that it had jurisdiction to grant the relief and that it was appropriate to do so in the interests of justice. The court granted the applicants relief, including injunctive relief against trademark infringement, domain name registration and operation, and damages and costs.

The court's final orders included restraining the respondent from infringing the Speedo Marks, transferring domain names, and paying damages and costs to the applicants. The court also appointed a Registrar to handle the transfer of domain names if the respondent failed to comply.

Orders

Orders of the court

1. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from infringing the SPEEDO Marks.

2. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from registering any domain name containing the name SPEEDO, or a name substantially identical therewith or deceptively similar thereto.

3. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from operating any website at a domain name containing the name SPEEDO or a name substantially identical therewith or deceptively similar thereto, and which website features persons wearing swimwear and related offensive images and content, including the websites at the Infringing Speedo Domain Names.

4. The Respondent transfer to the Applicants or as the Applicants direct within 21 days:

(a) the registration of the Infringing Speedo Domain Names; and

(b) the registration of any other domain name registered in the Respondent’s name (including under any alias), or under the Respondent’s control or power, containing the name SPEEDO or a name substantially identical therewith or deceptively similar thereto.

5. If the Respondent does not comply with the order in terms of the previous paragraph 4, a Registrar of the Court be appointed to sign all necessary documents to transfer the domain names referred to in that paragraph to the Applicants or as the Applicants direct.

6. There be an inquiry into damages suffered by the Applicants or into the profits made by the Respondent in respect of the conduct the subject of this proceeding and that the Respondent pay to the Applicants any such amount determined in that inquiry.

7. The Respondent pay the Applicants’ costs.

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

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

No Defence or affidavit evidence has been filed by the Respondent. The Respondent, however, has forwarded to the Court a number of emails.DEFAULT JUDGMENT – RULE 5.23(2)(C) The Applicants, by way of Interlocutory Application dated 14 October 2011, seek an order pursuant to r 5.23(2)(c) and/or (d) of the Federal Court Rules 2011. Only r 5.23(2)(c) continues to assume any immediate relevance. Rules 5.22 and 5.23 provide in relevant part as follows: 5.22When a party is in defaultA party is in default if the party fails to:(a)do an act required to be done, or to do an act in the time required, by these Rules; or(b)comply with an order of the Court; or(c)attend a hearing in the proceeding; or(d)prosecute or defend the proceeding with due diligence.5.23Orders on default…(2)If a respondent is in default, an applicant may apply to the Court for:(a) …; or(b) …; or(c) if the proceeding was started by an originating application supported by a statement of claim, or if the Court has ordered that the proceeding continue on pleadings — an order giving judgment against the respondent for the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled; or(d) an order giving judgment against the respondent for damages to be assessed, or any other order; or(e) an order mentioned in paragraph (b), (c) or (d) to take effect if the respondent does not take a step ordered by the Court in the proceeding in the time specified in the order.Rule 5.23(1) provides for those circumstances in which it is the applicant that is in default; r 5.23(2) applies where it is the respondent that is in default. Note 1 to r 5.23 states that “[t]he Court may make any order that the Court considers appropriate in the interests of justice – see rule 1.32”. Rule 5.23 is the counter-part provision to Order 35A r 3 of the now repealed Federal Court Rules. Whereas the former Order 35A r 3(2) itself expressly conferred the discretionary power to make an order, that discretion is now to be found in r 1.32 of the Federal Court Rules 2011. Rule 5.23(2)(c), in particular, is the counter-part provision to the former Order 35A r 3(2)(c). The former r 3(2)(c) was in substantially similar terms, other than that r 3(2)(c)(ii) expressly required the Court to be satisfied that it had “power to grant” the relief sought. In Macquarie Bank Ltd v Seagle [2005] FCA 1239 at [23], 146 FCR 400 at 406 it was submitted that this phrase “required proof of two elements, being first evidence of proper service … and second jurisdiction to grant the final relief sought”. The deletion of those words in the current r 5.23(2)(c), it is respectfully considered, effects no difference – the Court could not be satisfied that the “applicant is entitled” to “relief” if it was not satisfied (inter alia) that a respondent had been served with the relevant documents and if it was not also satisfied that it had jurisdiction to grant the relief. A number of principles that have been established in respect to the former Order 35A r 3(2)(c) continue to be equally applicable to the current r 5.23(2)(c). Some of those principles of relevance to the present application are as follows.

Ratio Decidendi

Legal Principle Established

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