Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 2)
[2010] FCA 451
FEDERAL COURT OF AUSTRALIA
Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 2) [2010] FCA 451
Citation: Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 2) [2010] FCA 451 Parties: SPORTE LEISURE PTY LTD (ACN 008 608 919), GREAT WHITE SHARK ENTERPRISES LLC and LIFESTYLE BRANDS HOLDINGS LLC v PAUL'S INTERNATIONAL PTY LTD (ACN 128 263 561), PAUL'S RETAIL PTY LTD (SUBJECT TO DEED OF COMPANY ARRANGEMENT) (ACN 114 419 242), PW TRADING PTY LTD (ACN 103 736 027) (IN ITS OWN RIGHT AND AS TRUSTEE FOR PAUL'S WAREHOUSE DISCRETIONARY TRUST), PW RETAIL PTY LTD (ACN 128 572 574) (IN ITS OWN RIGHT AND AS TRUSTEE FOR PAUL'S WAREHOUSE DISCRETIONARY TRUST) and PAUL DWYER File number(s): NSD 335 of 2009 Judge: NICHOLAS J Date of judgment: 12 May 2010 Legislation: Trade Practices Act 1974 (Cth) ss 52, 53(c), 53(e)
Trade Marks Act 1995 (Cth) ss 120, 123
Federal Court of Australia Act 1976 (Cth) s 47A(1)Date of hearing: 7 May 2010 Date of last submissions: 7 May 2010 Place: Sydney Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 19 Counsel for the Applicants: RJ Webb SC Solicitor for the Applicants: James Beatty & Associates Counsel for the Respondents: R Cobden SC Solicitor for the Respondents: W Lawyers
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
BETWEEN: SPORTE LEISURE PTY LTD ACN 008 608 919
First Applicant / First Cross RespondentGREAT WHITE SHARK ENTERPRISES LLC
Second Applicant / Second Cross RespondentLIFESTYLE BRANDS HOLDINGS LLC
Third Applicant / Third Cross RespondentAND: PAUL'S INTERNATIONAL PTY LTD ACN 128 263 561
First RespondentPAUL'S RETAIL PTY LTD (SUBJECT TO DEED OF COMPANY ARRANGEMENT) ACN 114 419 242
Second Respondent / First Cross ClaimantPW TRADING PTY LTD ACN 103 736 027 (IN ITS OWN RIGHT AND AS TRUSTEE FOR PAUL'S WAREHOUSE DISCRETIONARY TRUST)
Third RespondentPW RETAIL PTY LTD ACN 128 572 574 (IN ITS OWN RIGHT AND AS TRUSTEE FOR PAUL'S WAREHOUSE DISCRETIONARY TRUST)
Fourth RespondentPAUL DWYER
Fifth Respondent / Second Cross Claimant
JUDGE:
NICHOLAS J
DATE OF ORDER:
12 MAY 2010
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The proceeding be fixed for further hearing commencing at 10:15 am on 5 July 2010, for 2 days.
2.The respondents’ notice of motion filed 5 May 2010 otherwise be dismissed.
3.The respondents pay the applicants’ costs thrown away by reason of the adjournment on an indemnity basis.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
BETWEEN: SPORTE LEISURE PTY LTD ACN 008 608 919
First Applicant / First Cross RespondentGREAT WHITE SHARK ENTERPRISES LLC
Second Applicant / Second Cross RespondentLIFESTYLE BRANDS HOLDINGS LLC
Third Applicant / Third Cross RespondentAND: PAUL'S INTERNATIONAL PTY LTD ACN 128 263 561
First RespondentPAUL'S RETAIL PTY LTD (SUBJECT TO DEED OF COMPANY ARRANGEMENT) ACN 114 419 242
Second Respondent / First Cross ClaimantPW TRADING PTY LTD ACN 103 736 027 (IN ITS OWN RIGHT AND AS TRUSTEE FOR PAUL'S WAREHOUSE DISCRETIONARY TRUST)
Third RespondentPW RETAIL PTY LTD ACN 128 572 574 (IN ITS OWN RIGHT AND AS TRUSTEE FOR PAUL'S WAREHOUSE DISCRETIONARY TRUST)
Fourth RespondentPAUL DWYER
Fifth Respondent / Second Cross Claimant
JUDGE:
NICHOLAS J
DATE:
12 MAY 2010
PLACE:
SYDNEY
REASONS FOR JUDGMENT
This proceeding is part heard before me. It was scheduled to resume on 12 and 13 May 2010. An application to vacate those dates and adjourn the further hearing of the proceeding was made by notice of motion filed by the respondents on 5 May 2010. The application is made on the basis that the respondents’ witness Mr Imran Ahmed (who is required for cross examination) is located in Pakistan and has not yet been granted a visa to travel to Australia. As a result, it is not possible for the respondents to have Mr Ahmed available for cross-examination on 12 May 2010. I heard the notice of motion on 7 May 2010. At the conclusion of that hearing I indicated to the parties that I would grant the adjournment sought by the respondents, but would provide reasons for my decision today. These are my reasons for granting the adjournment.
The second applicant is the registered proprietor of two trade marks, one being the word “Greg Norman” and the other being a device described as the “shark logo”. The first applicant is the exclusive distributor and licensee for Australia and New Zealand of golfing apparel known as “The Greg Norman Collection” which bear these trade marks. The applicants allege that the respondents have infringed the second applicant’s registered trade marks by importing, distributing and selling clothing bearing the second applicant’s trade marks in circumstances where the trade marks have been applied to the goods without the second applicant’s consent. In essence, the applicants allege that the garments in question are counterfeit goods. In addition, the applicants claim that the marketing of these goods by the respondents contravenes ss 52, 53(c) and 53(e) of the Trade Practices Act 1974 (Cth) (the TPA).
By way of defence, the respondents rely on s 123(1) of the Trade Marks Act 1995 (Cth) (the TM Act) and claim that the goods in question are genuine goods that were obtained indirectly by the respondents from the second applicant’s licensee in India, BTB Marketing Pvt Ltd (BTB Marketing). The second and fifth respondents have also filed a cross claim alleging that, if any of the conduct of the respondents does constitute trade mark infringement, the applicants have contravened s 52 of the TPA by falsely representing that goods acquired from distributors listed on their website are authorised goods.
Whether the trade marks were applied to the goods with the consent of the second applicant is a key issue in the proceeding. In support of their case, the respondents rely on the evidence of Mr Wadhwani and Mr Ahmed. Mr Wadhwani resides in Singapore and is the managing director of PT International Corporation Pte Ltd (PT International). Mr Ahmed, as mentioned above, is located in Pakistan and is the general manager of Sun Sports (BVI) Limited (Sun Sports), a company operating out of Pakistan. Essentially, the respondents rely on the evidence of Mr Wadhwani and Mr Ahmed as establishing a chain of supply between BTB Marketing and the respondents, which they submit proves that the trade marks were applied to the goods with the authority of the second applicant and are therefore not infringing goods.
The proceeding was commenced on 21 April 2009. On that date Perram J granted ex parte injunctions against the respondents, restraining them from importing, manufacturing or selling clothing bearing the second applicant’s trade marks. On 17 December 2009 I fixed the matter for hearing for 2 days commencing on 22 February 2010. At that stage, there was a desire by the applicants to progress the matter to final hearing as quickly as possible given the nature of the defence raised by the respondents and the uncertainty this cast over the applicants’ licensing arrangements with its then manufacturers and distributors. However, I understand that this is no longer an issue.
On 18 February 2010, the respondents applied to the court seeking an order that both Mr Wadhwani and Mr Ahmed appear to give evidence via videolink pursuant to s 47A(1) of the Federal Court of Australia Act 1976 (Cth). I declined to make the order in relation to Mr Wadhwani and he therefore travelled to Australia to appear and give evidence. I did not make any order in respect of Mr Ahmed, as it was generally accepted that he would not be able to appear the following week given that he did not have a valid visa, and no application had yet been made. The approach taken was that whether Mr Ahmed would be required to appear in person or via videolink would be revisited by the parties at the conclusion of the hearing the following week.
The hearing commenced before me as scheduled on 22 February 2010, and continued for 3 days. Mr Wadhwani was brought to Australia from Singapore by the respondents, and gave evidence on 23 February 2010. He was cross-examined extensively by counsel for the applicants including in relation to his dealings with Mr Ahmed.
Mr Ahmed’s evidence was discussed at the conclusion of the third day of the hearing, by which stage it had become apparent that his evidence was likely to be of considerable importance. I adjourned the matter for 1 week to enable the respondents to make enquiries regarding the time required for Mr Ahmed to obtain a visa, or alternatively, to enable the respondents to make a further application for evidence by videolink. On 4 March 2010, I made orders by consent fixing the matter for further hearing on 10 and 11 May 2010, on the understanding that Mr Ahmed would be able to attend court to give evidence on 10 May 2010. On 16 March 2010, I made further orders by consent varying these dates to 12 and 13 May 2010, as I was informed by the respondents that flight restrictions out of Pakistan meant that Mr Ahmed would not be able to attend on the dates originally fixed.
As noted above, the respondents filed a notice of motion on 5 May 2010 seeking the vacation of the further hearing dates and an adjournment to a date after June 2010, when Mr Ahmed could attend to give evidence. An affidavit of the respondents’ solicitor, Mr Ajit Wijesinghe, sworn 5 May 2010, was filed in support of the application.
The evidence of Mr Wijesinghe is that on 10 March 2010 he sent by email a partially completed visa application form and a “letter of intent” addressed to the Australian High Commission in Pakistan to Mr Wadhwani, requesting that Mr Wadhwani provide these documents to Mr Ahmed to enable him to complete his personal details. Mr Ahmed was then to lodge the application form and the letter of intent with the Commission. On 28 April 2010, a clerk employed by Mr Wijesinghe’s firm sent an email to the Commission regarding Mr Ahmed’s visa application. He received a response from the Commission on 30 April 2010, which stated:
The case is being processed with in [sic] the service standard time, our processing time is 4 to 6 weeks.
On 3 May 2010, Mr Wijesinghe says that he had a telephone conversation with a person, whom he has not identified, from the Commission regarding Mr Ahmed’s visa application. On this occasion, he says that he was told in relation to Mr Ahmed’s visa:
It is in the system and you will get an answer by June 2010. We cannot get to it any faster.
On the same day, Mr Wijesinghe also received an email from the Commission, which stated:
As you have mentioned that the Applicant is planing [sic] to leave Pakistan on 05 May 2010, I really doubt that we would be able to finalise the application by the time as the application is well with in [sic] the service standard time.
The application is in process & will be finalised in due course.
It is on the basis of this evidence that the respondents seek an adjournment until such time as Mr Ahmed has been granted a visa. Mr Wijesinghe was not cross-examined.
Given the prominence of the issue of consent in these proceedings and Mr Ahmed’s alleged involvement in the procurement and supply of the allegedly infringing goods, his evidence is clearly of considerable importance. I think this weighs in favour of granting the adjournment.
A legal question arises in the proceeding as to who bears the onus of establishing that the relevant goods were not manufactured with the licence of the trade mark owner. The issue of who bears that onus under ss 120(1) and 123(1) of the TM Act is not one which has been previously determined. If the applicants’ submission is accepted and the respondents bear the onus, Mr Ahmed’s evidence will most likely be critical to the outcome of the infringement case. If, on the other hand, I agree with the respondents and conclude that it is the applicants who bear the onus, Mr Ahmed’s evidence is still likely to be important. In these circumstances, I consider it appropriate that an adjournment be granted so as to allow the respondents what they should assume will be their last opportunity to ensure the attendance of Mr Ahmed to give evidence.
There are a number of other factors that I consider point towards granting the respondents’ application for an adjournment. The respondents are proposing an adjournment of approximately 8 weeks. I have some dates available in mid July and I am told that counsel for the parties are available then. The proposed delay in completing the hearing is not insignificant but, on the other hand, I do not consider it excessive given the importance of Mr Ahmed’s evidence.
In addition, I am satisfied that the respondents have taken reasonable steps to ensure that Mr Ahmed is able to travel to Australia to appear to give evidence even though, with hindsight, it might be said that they should have done more to make sure his visa application was lodged earlier than it was.
In their motion filed on 5 May 2010, the respondents also sought, as an alternative to an adjournment, an order that Mr Ahmed be permitted to give evidence via videolink. The applicants oppose such an order and it was not pressed by the respondents at the hearing of the present application. It is apparent that the cross examination of Mr Ahmed will most likely centre upon issues of credit and the authenticity of various documents which he has exhibited to his affidavit. There are problems in using a video link in such circumstances.
I shall adjourn the further hearing of the proceeding to a date in July which I will fix today. The respondents should pay the applicants’ costs thrown away by reason of the adjournment on an indemnity basis.
I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas. Associate:
Dated: 12 May 2010
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