Suntory Ltd v Daiquiri Co Pty Ltd - [2001] FCA 926

FEDERAL COURT OF AUSTRALIA
Suntory Ltd v Daiquiri Co Pty Ltd [2001] FCA 926
Bankruptcy Act 1966 (Cth) s58
SUNTORY LTD & ANOR v THE DAIQUIRI COMPANY PTY LTD & ORS
N 1451 OF 2000
EMMETT J
17 JULY 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1451 OF 2000

BETWEEN:

SUNTORY LIMITED
FIRST APPLICANT

SUNTORY (AUST) PTY LIMITED
(ABN 27 001 628 780)
SECOND APPLICANT

AND:

THE DAIQUIRI COMPANY PTY LTD
(ACN 057 958 853)
FIRST RESPONDENT

ANDREW SEOUD trading as THE DAIQUIRI FACTORY
SECOND RESPONDENT

DAIQUIRIES DOWN UNDER PTY LIMITED
(ABN 44 092 329 881)
THIRD RESPONDENT

JUDGE:

EMMETT J

DATE OF ORDER:

17 JULY 2001

WHERE MADE:

SYDNEY

THE COURT DECLARES THAT:
The second respondent has infringed registered trade mark no. 680413.
THE COURT ORDERS nunc pro tunc THAT the notice of motion filed on 10 July 2001 be served on the second respondent by sending a copy thereof by prepaid post no later than 10 July 2001.
THE COURT ORDERS THAT:
The second respondent whether by himself, his servants, agents or otherwise be restrained from:
(a)    manufacturing;
(b)   causing or procuring the manufacture or sale of;
(c)    exporting out of Australia or importing into Australia;
(d)   distributing, supplying, selling or offering or exposing for sale; or
(e)    advertising or promoting
any beverage or mixture of beverages under or by reference to the trade mark ILLUSION or any trade mark which is substantially identical or deceptively similar to the trade mark ILLUSION.
The second respondent within 14 days of service of these orders deliver up to the Court all containers, labels, signs, brochures, business cards, business letterhead and any other advertising or promotional material whatsoever in its possession, custody or control which use or apply the words ILLUSION or MIDORI ILLUSION or any other substantially identical or deceptively similar words.
The second respondent verify on oath that he has complied with Order 3 within 7 days of the date due for the delivery up to the Court required therein.
The second respondent pay the costs of these proceedings against him.
None of the above orders may be entered until seven days after written notice of the making of the orders has been given to the second respondent.
THE COURT NOTES:
A. The undertakings given to it by the first respondent:
1. That it, whether by itself, its servants, agents or otherwise be restrained from:
(a)    manufacturing;
(b)   causing or procuring the manufacture or sale of;
(c)    exporting out of Australia or importing into Australia;
(d)   distributing, supplying, selling or offering or exposing for sale; or
(e)    advertising or promoting
any beverage or mixture of beverages under or by reference to the trade mark ILLUSION or any trade mark which is substantially identical or deceptively similar to the trade mark ILLUSION.
2. That the first respondent, whether by itself, its servants, agents or otherwise be restrained from:
(a)    manufacturing;
(b)   causing or procuring the manufacture or sale of;
(c)    exporting out of Australia or importing into Australia;
(d)   distributing, supplying, selling or offering or exposing for sale; or
(e)    advertising or promoting
any beverage or mixture of beverages under or by reference to the trade mark MIDORI ILLUSION or any trade mark which is substantially identical or deceptively similar to the trade mark MIDORI ILLUSION.
3. That the first respondent whether by itself, its servants, agents or otherwise be restrained in trade and commerce in Australia from advertising, promoting, selling, displaying for sale, offering to supply or supplying any beverage or mixture of beverages under or by reference to any business name, corporate name or trade mark consisting of or including the names ILLUSION or MIDORI ILLUSION or any other name which is deceptively or confusingly similar to the names ILLUSION or MIDORI ILLUSION.
4. That the first respondent within 14 days of the date of this undertaking deliver up to the Court all containers, labels, signs, brochures, business cards, business letterhead and any other advertising or promotional material whatsoever in its possession, custody or control which use or apply the words ILLUSION or MIDORI ILLUSION or any other substantially identical or deceptively similar words.
5. That a director of the first respondent will within 21 days of the date of this undertaking verify on oath that the company of which he or she is director has complied with undertaking 4.
B. The undertakings given to it by the third respondent:
1. That it, whether by itself, its servants, agents or otherwise be restrained from:
(a)    manufacturing;
(b)   causing or procuring the manufacture or sale of;
(c)    exporting out of Australia or importing into Australia;
(d)   distributing, supplying, selling or offering or exposing for sale; or
(e)    advertising or promoting
any beverage or mixture of beverages under or by reference to the trade mark ILLUSION or any trade mark which is substantially identical or deceptively similar to the trade mark ILLUSION.
2. That the third respondent, whether by itself, its servants, agents or otherwise be restrained from:
(a)    manufacturing;
(b)   causing or procuring the manufacture or sale of;
(c)    exporting out of Australia or importing into Australia;
(d)   distributing, supplying, selling or offering or exposing for sale; or
(e)    advertising or promoting
any beverage or mixture of beverages under or by reference to the trade mark MIDORI ILLUSION or any trade mark which is substantially identical or deceptively similar to the trade mark MIDORI ILLUSION.
3. That the third respondent whether by itself, its servants, agents or otherwise be restrained in trade and commerce in Australia from advertising, promoting, selling, displaying for sale, offering to supply or supplying any beverage or mixture of beverages under or by reference to any business name, corporate name or trade mark consisting of or including the names ILLUSION or MIDORI ILLUSION or any other name which is deceptively or confusingly similar to the names ILLUSION or MIDORI ILLUSION.
4. That the third respondent within 14 days of the date of this undertaking deliver up to the Court all containers, labels, signs, brochures, business cards, business letterhead and any other advertising or promotional material whatsoever in its possession, custody or control which use or apply the words ILLUSION or MIDORI ILLUSION or any other substantially identical or deceptively similar words.
5. That a director of the third respondent will within 21 days of the date of this undertaking verify on oath that the company of which he or she is director has complied with undertaking 4.
Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1451 OF 2000

BETWEEN:

SUNTORY LIMITED
FIRST APPLICANT

SUNTORY (AUST) PTY LIMITED
(ABN 27 001 628 780)
SECOND APPLICANT

AND:

THE DAIQUIRI COMPANY PTY LTD
(ACN 057 958 853)
FIRST RESPONDENT

ANDREW SEOUD trading as THE DAIQUIRI FACTORY
SECOND RESPONDENT

DAIQUIRIES DOWN UNDER PTY LIMITED
(ABN 44 092 329 881)
THIRD RESPONDENT

JUDGE:

EMMETT J

DATE:

17 JULY 2001

PLACE:

SYDNEY

REASONS FOR JUDGMENT

By application filed on 22 December 2000 the applicants, Suntory Limited and Suntory (Aust) Pty Limited, seek relief against three respondents, being The Daiquiri Company Limited, Andrew Seoud trading as The Daiquiri Factory and Daiquiris Down Under Pty Limited. The relief claimed is based on alleged infringement of trade marks. The application claims declarations to that effect and orders restraining the respondents from dealing with certain beverages under or by reference to the trade marks registered in the name of the applicants.
The first applicant is the manufacturer of spirits and liqueurs including a liqueur called Midori. Midori is a green-coloured melon liqueur. The second applicant is a wholly-owned subsidiary of the first applicant and is the marketer of spirits and liqueurs in Australia including the Midori liqueur.
The first applicant is the proprietor of three trade marks: “Midori Illusion”, “Midori” and “Illusion”. Each of those is registered in class 33 and “Illusion” is also registered in class 32. The trade mark “Illusion”, registered number 680413, is registered in class 33 in respect of alcoholic beverages except beers and including liqueurs and cocktails.
Appearances have been filed on behalf of the first and third respondents. The appearance filed on behalf of the third respondent was, I am informed, filed in the Victoria Registry of the Court. A facsimile copy is before me this morning.
In relation to the claim against the first respondent, the applicants rely on an affidavit sworn by Brian Seoud on 9 July 2001. Mr Seoud is a director of the first respondent. On 2 July 2001, he signed a form of short minutes containing undertakings to the Court on behalf of the first respondent. The undertakings are to the effect that the first respondent be restrained from dealing with beverages or a mixture of beverages under or by reference to the trade mark “Illusion” or any trade mark which is substantially identical with or deceptively similar to the trade mark “Illusion”.
I would construe the undertakings as undertakings not to do those things. It is curious to give an undertaking to be restrained from doing something. Nevertheless, since the undertakings have been signed on behalf of the first respondent, I will note the undertakings in that form, being the form of short minutes attached to the affidavit of Brian Seoud sworn 9 July 2001.
The applicants have tendered a further form of undertaking signed by the solicitor for the third respondent. The undertaking is in the same terms as the undertaking signed on behalf of the first respondent. Again I will accept the undertaking by the third respondent in the form of the document which I have initialled and dated with today’s date.
The second respondent has not filed an appearance. By notice of motion filed on 10 July 2001, the applicants seek orders against the second respondent as follows:
“1.Pursuant to Order 20 Rule 1 of the Federal Court Rules, that judgment be entered against the second respondent;
2. Such further or other orders as the Court thinks fit; and
3. The second respondent to pay the applicant's costs of th[e] motion.”
Since no appearance has been entered, Order 19 Rule 4 would require that the motion be served personally unless the Court or a Judge otherwise orders. A letter dated 10 July 2001, was sent by express post to the second respondent at two addresses. By the letter, the applicants notified the second respondent that at the hearing of the motion fixed for 9.30 am today the applicants intended to seek orders in the form attached to the letter. Copies of the notice of motion, an affidavit of Ms Susan Frances Allen and an affidavit of Ian James Atherton were enclosed with the letter.
On 13 July Ms Allen received a telephone call from a person who identified himself as Andrew Seoud, the second respondent. The caller said that he had received Ms Allen’s letter and was ringing about the hearing today. The caller said that he did not know why the applicants were going ahead with the proceeding because he was bankrupt. Ms Allen said to the caller:
“We brought the proceedings because you infringed our client’s trade mark. It’s a serious matter. However, every time the matter was brought to Court you fail [sic] to attend. All our client wanted was for you to give undertakings that you will not done [sic] anything in the future to infringe its trade mark but you have not done so. That is why we have to go to Court again”.
The caller replied that he could not sign anything now because he was bankrupt.
A search of the National Personal Insolvency Index as at 8 June 2001 disclosed the name Andrew Seoud at an address 88 Bruce Street, West Preston, Victoria. That person was shown as unemployed. A “start date” of 14 March 2001 was disclosed. No other evidence is before me concerning the status of Andrew Seoud.
If it be the fact that a sequestration order has been made in respect of the estate of Andrew Seoud, there would be a prohibition on enforcement of any remedies against him in respect of a provable debt. Section 58(3) of the Bankruptcy Act 1966 (Cth) provides that, except as provided by that Act:
“…after a debtor has become a bankrupt, it is not competent for a creditor:
(a) to enforce any remedy against the person or the property of the bankrupt in respect of a provable debt; or,
(b) except with the leave of the Court, …to commence any legal proceeding in respect of a provable debt or to take any fresh step in such a proceeding.”
While the application in the present proceeding seeks an order for the taking of an inquiry and the payment of damages, or alternatively an account of profits, those orders are no longer pursued against the second respondent.
There has been no satisfactory explanation as to why the rules were not complied with concerning service of the motion, other than that Mr Atherton was overseas. It does not seem to me to be strictly necessary to have had Mr Atherton’s further affidavit attaching a copy of the search of the National Personal Insolvency Index or to assert that the second respondent has not filed a defence. Nevertheless, it seems to me to be undesirable to incur the further cost of a further hearing after formal service on the second respondent.
There is no reason to doubt that the telephone call received by Ms Allen was in fact from the second respondent. Accordingly, I can conclude that he received reasonable notice of the motion and of the orders intended to be sought but, for the reason that he gave, chose not to participate. I do not at this stage know whether there is a Trustee-in-Bankruptcy or, if there is, whether the Trustee-in-Bankruptcy has any knowledge of this proceeding. However, I propose to order nunc pro tunc that the notice of motion may be served by sending a copy thereof by prepaid post no later than 10 July 2001.
In his affidavit of 22 December 2000 Mr Atherton deposes to the receipt by him from John Morris, an employee of the second applicant, of a copy of a brochure which Mr Morris obtained from a trade show exhibition in South Australia in or around October 2000. A copy of the brochure is attached to Mr Atherton's affidavit. The brochure is an advertising brochure for a business described as “The Daiquiri Factory”. The business of The Daiquiri Factory appears to be the supply of Daiquiri machines including the ingredients for the manufacture of drinks. The brochure invites inquiries for further information to Andrew Seoud with a mobile telephone number. The address shown on the brochure is 111 Sturt Street, Adelaide.
A business name search for the State of South Australia discloses the registration of the business name “The Daiquiri Factory” in the name of Andrew Seoud. The principal place of business is 289 Flinders Street, Adelaide. The address of Andrew Seoud is shown as 11 Darling Street, South Yarra, Victoria. A copy of the letter of 10 July 2001 sent by Ms Allen was addressed to Andrew Seoud at 289 Flinders Street, Adelaide.
On 20 October 2000 the applicant's solicitors wrote to Mr Seoud. However, the letter was addressed to 11 Sturt Street, Adelaide. A further letter of 14 December 2000 was addressed to the same address. There was no response to those letters before the proceedings were commenced in December 2001. However, on 2 February 2001 the applicants’ solicitors received a letter from Piper Alderman, solicitors, of Adelaide referring to the letters of 20 October and 14 December 2000 addressed to Andrew Seoud. That letter proffered undertakings. However, by letter of 8 March 2001 Piper Alderman indicated that they had no instructions to act for Mr Seoud in connection with this proceeding.
The orders sought against the second respondent are as follows:
·    a declaration that the second respondent has infringed trade mark number 680413;
·    orders restraining the second respondent from dealing with beverages under or by reference to that trade mark;
·    orders that the second respondent deliver up containers, labels, signs, brochures, business cards, business letterhead and any other advertising or promotional material, which use or apply the words “Illusion” or “Midori Illusion”; and
·    orders that the second respondent verify on oath that those orders have been complied with.
The applicants also seek orders for costs against the second respondent.
In the circumstances I am satisfied that it is appropriate to make the orders sought. Accordingly, I propose to make orders in terms of the draft orders that I have initialled and dated with today’s date. However, having regard to the matters to which I have already referred, I also propose to direct that none of the orders may be entered until seven days after written notice of the making of the orders has been given to the second respondent.

I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.
Associate:
Dated: 24 July 2001

Counsel for the Applicants: Mr S C G Burley

Solicitor for the Applicant: Lane & Lane

Date of Hearing: 17 July 2001

Date of Judgment: 17 July 2001

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1451 OF 2000

BETWEEN:	SUNTORY LIMITED FIRST APPLICANT SUNTORY (AUST) PTY LIMITED (ABN 27 001 628 780) SECOND APPLICANT
AND:	THE DAIQUIRI COMPANY PTY LTD (ACN 057 958 853) FIRST RESPONDENT ANDREW SEOUD trading as THE DAIQUIRI FACTORY SECOND RESPONDENT DAIQUIRIES DOWN UNDER PTY LIMITED (ABN 44 092 329 881) THIRD RESPONDENT
JUDGE:	EMMETT J
DATE OF ORDER:	17 JULY 2001
WHERE MADE:	SYDNEY

JUDGE:	EMMETT J
DATE:	17 JULY 2001
PLACE:	SYDNEY

Counsel for the Applicants:	Mr S C G Burley
Solicitor for the Applicant:	Lane & Lane
Date of Hearing:	17 July 2001
Date of Judgment:	17 July 2001