Subtle Energy Solution Group Pty Ltd v Pietersen
[2023] FedCFamC2G 196
Federal Circuit and Family Court of Australia
(DIVISION 2)
Subtle Energy Solution Group Pty Ltd v Pietersen [2023] FedCFamC2G 196
File number(s): SYG 184 of 2023 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 7 March 2023 Catchwords: INTELLECTUAL PROPERTY – Practice and procedure – matter listed on the return of an interlocutory injunction granted ex parte restraining first respondent from dealing with beds which applicant alleged were based on a registered design of which the applicant is the licensee – whether default judgment should be granted because first respondent failed to file a notice of address for service – whether instead directions should be made for the filing of evidence and an order made setting the matter down for final hearing – whether interlocutory injunction should be continued until further order – matter set down for hearing and interlocutory injunction continued until further order. Legislation: Designs Act 2003 (Cth) s 75(1)(a)
Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth) r 13.06
Division: General Number of paragraphs: 10 Date of hearing: 7 March 2023 Place: Sydney Solicitor for the Applicant and Second Respondent: Mr S Davey of Stellar Law Pty Ltd, by telephone The First Respondent: Appeared in person, by telephone ORDERS
SYG 184 of 2023 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: SUBTLE ENERGY SOLUTION GROUP PTY LTD
Applicant
AND: KRYSTYNA PIETERSEN
First Respondent
THOMAS STAUDACHER
Second Respondent
order made by:
JUDGE MANOUSARIDIS
DATE OF ORDER:
7 March 2023
ON THE APPLICANT BY ITS SOLICITOR GIVING THE USUAL UNDERTAKING AS TO DAMAGES, THE COURT ORDERS THAT:
1.Until further order, pursuant to s 75(1)(a) of the Designs Act 2003 (Cth), the first respondent, Ms Krystyna Pietersen, by herself, her servants or agents, is restrained from:
a.selling or otherwise disposing of, or offering to sell or otherwise dispose of, or using in any way, any bed of the sort described as a “Harmonic Water Bed” in the brochure purportedly issued by “Chakra Harmonics” referred to in paragraph 9 of the affidavit of Thomas Staudacher made on 28 February 2023, or in any other brochure issued or purported to have been issued by “Chakra Harmonics” or by or under the authority or direction of Krystyna Pietersen; and
b.otherwise infringing Certified Registered Design No 202115892 “A Waterbed” (the “Design”), by:
i. making or causing to be made a product, in relation to which the Design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design, namely a therapeutic bed under the name Chakra Harmonics Beds (or any other name) (the “Infringing Beds”); or
ii. selling or otherwise disposing of, or offering to sell or otherwise dispose of, the Infringing Beds; or
iii. using the Infringing Beds in any way for the purposes of any trade or business;
iv. keeping the Infringing Beds for the purpose of doing any of the things mentioned in paragraphs (ii) or (iii) above.
2.The matter is set down for hearing at 10:15 am on 11 April 2023.
3.By 21 March 2023 the first respondent file and serve all affidavits on which she intends to rely.
4.By 4 April 2023 the applicant file and serve any affidavits in reply.
5.The parties have liberty to apply on such notice as the circumstances warrant.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
(Revised from transcript)
On 5 February 2023 the applicant, Subtle Energy Solution Group Pty Ltd (SESG), commenced proceedings against the first respondent, Ms Krystyna Pietersen, pursuant to the Designs Act 2003 (Cth) (Designs Act). SESG alleges that it is the licensee of a registered design for a waterbed. SESG also joined as a respondent Mr Staudacher, who is the owner of the registered design for the bed.
The matter came before me for the hearing of an application for an interlocutory injunction on 28 February 2023. There was no appearance by Ms Pietersen on the hearing of that application. Being satisfied, however, that Ms Pietersen did have notice of the hearing, I made a number of orders, including an interlocutory injunction pursuant to s 75(1)(a) of the Designs Act (in broad terms) restraining Ms Pietersen from selling, disposing, offering to sell or otherwise dispose, or from otherwise using the registered design, or beds made on the basis of that design. I ordered that the injunction continue up to and including 7 March 2023. I made orders for the service of the injunction, together with the affidavits on the basis of which I granted the injunction, and listed the matter before me at 2:15 pm on 7 March 2023. I also ordered that Ms Pietersen by 3 March 2023 file and serve a notice of address for service in the approved form.
I noted two things in the orders I made on 28 February 2023. The first was that, if Ms Pietersen failed to comply with the order requiring her by 3 March 2023 to file a notice of address for service in the approved form, at the hearing on 7 March 2023 SESG would be at liberty to apply for default judgment. The second thing I noted is that if Ms Pietersen did not appear at the hearing on 7 March 2023, SESG would be at liberty to apply to the Court that it proceed in any one of the ways provided for by r 13.06 of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth). That rule sets out the various means by which the Court can proceed if there is no appearance at a hearing by a party. I also granted the parties liberty to apply.
A sealed copy of the orders was served on Ms Pietersen as required by the orders I made. On 6 March 2023 Ms Pietersen sent to the Court emails in which she expressed a wish to apply for an adjournment. Those emails came to my attention and, on my instructions, my Associate confirmed to Ms Pietersen and to the lawyer for SESG that the hearing that had been scheduled for 2:15 pm on 7 March 2023 would proceed. In the meantime Ms Pietersen sent to my Associate another email but attaching an affidavit made by Ms Pietersen on 7 March 2023. That affidavit has not been filed, but I will arrange for my Associate to electronically file it in due course.[1]
[1] At the time I made this statement I did not appreciate that Ms Pietersen’s affidavit is in the incorrect form, and for that reason it cannot be filed in that form.
At 2:15 pm on 7 March 2023 Ms Pietersen appeared by telephone and Mr Davey appeared for SESG and Mr Staudacher. Ms Pietersen said that she wanted an adjournment to obtain legal representation, and also because of her health. Mr Davey, on the other hand, submitted that I should make orders by default because Ms Pietersen has not complied with the order that she file a notice of address for service.
Mr Davey also relied on an affidavit, which I have not read, but it would be appropriate for me to note in these reasons the effect of that affidavit, namely, that on 6 March 2023 Mr Davey attended the premises from which he says Ms Pietersen conducts her business. Mr Davey submitted that his affidavit showed that Ms Pietersen has not complied with the orders I had made on 28 February 2023. It is unnecessary, as will appear shortly, for me to say anything about that, but I will note that Ms Pietersen has disputed aspects of Mr Davey’s affidavit, even though she had not been provided with a copy of the affidavit. Nothing turns on what is in that affidavit, at least for the purposes of these reasons for judgment.
Although the affidavit Ms Pietersen has filed is quite lengthy, it essentially seeks to raise two points. The first is Ms Pietersen asserts that the waterbeds she uses in her business are an original design, by which I understand she means a design that is not based on the registered design on the basis of which SESG has commenced this proceeding. Ms Pietersen also asserts that the registered design on which SESG relies was a design created overseas. On their face these are bare assertions, and would not alter the view I formed on 28 February 2023 that SESG has a sufficiently arguable case to warrant the grant of an interlocutory injunction.
It is unnecessary to determine whether I should grant an adjournment because the fact that Ms Pietersen has appeared, and has provided an affidavit, indicates that she intends to defend the proceeding. It is not appropriate for me at this stage to say anything about the merits of Ms Pietersen’s defence. The fact is Ms Pietersen has indicated her intention to defend it. In those circumstances it would be inappropriate for me to enter default judgment even though Ms Pietersen has failed to file a notice of address for service; and it would also not be open to me to give some form of summary judgment because Ms Pietersen would not have been given sufficient notice of any such application.
So the application for an adjournment will sort itself out by reason of the fact that Ms Pietersen intends to defend the proceeding. By that I mean I intend to set the matter down for hearing in about five weeks and to make directions for Ms Pietersen to file her evidence within two weeks and for reply evidence to be filed by SESG within two weeks after that. I also propose to extend the injunction I granted on 28 February 2023 with a minor amendment which I will identify in the orders.
The end result of these reasons for judgment therefore will simply be that I will order that the injunction I granted on 28 February 2023 will continue until further order of the Court. I will set the matter down for hearing in about five weeks, and I will make directions for the filing of evidence.
I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 14 March 2023
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