Unilever Plc v Bless Point Pty Ltd

[2007] FCA 551

FEDERAL COURT OF AUSTRALIA

Unilever PLC v Bless Point Pty Ltd [2007] FCA 551

UNILEVER PLC AND ANOR v
BLESS POINT PTY LTD (ACN 109 918 845) AND ORS

NSD 502 OF 2007

LINDGREN J
17 APRIL 2007
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 502 OF 2007

BETWEEN:

UNILEVER PLC
First Applicant

UNILEVER AUSTRALIA LTD
Second Applicant

AND:

BLESS POINT PTY LTD (ACN 109 918 845)
First Respondent

LUKAS THAMIN
Second Respondent

K YOUNG TRADING PTY LTD (ACN 098 823 691)
Third Respondent

RAYMOND DAI
Fourth Respondent

JUDGE:	LINDGREN J
DATE OF ORDER:	5 APRIL 2007
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT, upon the applicants by their counsel giving to the Court the usual undertakings as to damages:

1.The Applicant have leave to file in Court the affidavit of Susan Gaye O’Connor sworn 5 April 2007.

2.Until further order, each of the first and second respondents by itself or himself, its or his servants, agents or otherwise, be restrained from:

(a)   manufacturing;

(b)   causing or procuring the manufacture of;

(c)   importing;

(d)   causing or procuring the manufacture or importation of;

(e)   selling or offering or exposing for sale;

(f)    advertising or promoting;

(g)   otherwise distributing or trading in; or

(h)   destroying or returning to any supplier or disposing of other than to the applicants or their nominated agents

any of the goods described in Annexure A (“Counterfeit Goods”).

3.Each of the first and second respondents, within 72 hours of the service of a sealed copy of this order upon it or him, as the case may be, file and serve an affidavit:

Source of Counterfeit Goods

(a)   setting out the name or names and all known and current contact details, including addresses, telephone numbers, fax numbers and email addresses of the supplier or suppliers of the Counterfeit Goods, including the full details of any supplier of Counterfeit Goods that have been ordered by or on behalf of the first or second respondents but are yet to be received by such respondent(s);

(b)   detailing, if known, the manufacturer of each order of Counterfeit Goods (and indicating, where known, if the manufacturer is the same entity or person as the supplier to the respondents);

(c)   detailing the date that each order for Counterfeit Goods was placed by or on behalf of the first or second respondents, the quantity and composition of such order, and with whom it was placed at what price and expected date of delivery;

(d)   detailing the date that each order of Counterfeit Goods has been received by or on behalf of the first or second respondents, and the quantity and composition of such order; and

(e)   attaching copies of all documents in the possession, custody or power of any of the respondents which record or disclose the matters in sub-paragraphs (a) to (d) above, including (without limitation) invoices, purchase orders, bills of lading, delivery documents and receipts;

Sale of Counterfeit Goods

(f)    setting out the names and all known and current contact details, including addresses, telephone numbers, fax numbers and email addresses of all persons and entities known to such respondent to have purchased quantities of Counterfeit Goods from the first or second respondents;

(g)   detailing the date of each such purchase by each named purchaser, the specific products purchased, the quantity purchased and the price paid;

(h)   attaching copies of all documents in the possession, custody or power of any of the respondents which record or disclose the matters in sub-paragraph (f) above, including sales invoices and receipts

and verifying that all such information is complete and that all such documents have been so attached.

4.For the purposes of order 3, service may be effected by a sealed copy of this order being posted by registered mail to the first and second respondents addressed to the first or second respondent, as the case may be, at Unit 3, 161–171 Princes Highway, Kogarah  NSW  2217 or by being handed to a person apparently over the age of 16 years at the address.

5.Order 4 is without prejudice to the right of the applicants to effect personal service on the first and second respondents.

6.Any service effected pursuant to Order 4 is without prejudice to the right of the first and second respondents to advance such arguments as they may be advised in relation to any alleged contempt of Court.

7.The applicants have liberty to apply on three hours’ notice.

8.The costs of the obtaining of interlocutory relief be part of the applicants’ costs of the proceeding.

9.The proceeding be stood over to 26 April 2007 at 9.30 am.

10.These orders be entered expeditiously.

Annexure A

Counterfeit Goods

“OMO” washing powder, digital photographs and scans of which are exhibited to the affidavit of Susan Gaye O’Connor sworn on 27 March 2007, and any other washing powder in packaging which bears the “OMO” trade mark and claims to be made by P.T. Unilever Indonesia Terbuka in Indonesia (being a product in respect of which the “OMO” mark was not affixed by or under the authority of the first applicant).

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	NSD 502 OF 2007

BETWEEN:

UNILEVER PLC
First Applicant

UNILEVER AUSTRALIA LTD
Second Applicant

AND:

BLESS POINT PTY LTD (ACN 109 918 845)
First Respondent

LUKAS THAMIN
Second Respondent

K YOUNG TRADING PTY LTD (ACN 098 823 691)
Third Respondent

RAYMOND DAI
Fourth Respondent

JUDGE:	LINDGREN J
DATE:	17 APRIL 2007
PLACE:	SYDNEY

REASONS FOR JUDGMENT

(grant of interlocutory injunction against first and second respondents)

1. On 2 April 2007, by consent as between the applicants and the third and fourth respondents, upon the applicants through their counsel giving to the Court the usual undertaking as to damages, I granted interlocutory relief against the third and fourth respondents.

2. On 5 April 2007, again upon the applicants by their counsel giving to the Court the usual undertaking as to damages, but this time following an ex parte hearing, I granted the applicants interlocutory injunctive relief against the first and second respondents.

3. These reasons are my reasons for having granted the interlocutory relief against the first and second respondents on 5 April 2007. 

4. The first applicant (“Unilever”) is, and at all material times has been, registered under the Trade Marks Act 1995 (Cth) as the owner of a registered trade mark, “OMO”. Relevantly, the trade mark is registered in respect of “[s]oaps, detergents and other preparations for washing and laundry purposes”.

5. The second applicant (“Unilever Australia”) is, and at all material times has been, an authorised user of the registered trade mark. 

6. The first respondent (“Bless Point”) is a company incorporated in New South Wales.  The second respondent (“Mr Thamin”) is, and at all material times has been, the sole director and secretary of Bless Point.

7. The evidence suggests that Bless Point has, without the licence or authority of the applicants, been manufacturing or causing or procuring the manufacture of, and importing or causing or procuring the importation of, then marketing in Australia, certain washing powder under or by reference to the registered trade mark OMO, or a mark that is substantially identical or deceptively similar to it.

8. There is evidence before the Court of Bless Point having, since 30 September 2006, effected the following sales (I quote from particulars contained in the statement of claim):

   (i)The sale of at least 48 buckets of 9kg “OMO” washing powder to the third respondent and/or the fourth respondent.

   (ii)The sale of an unknown quantity of 3.5kg buckets of “OMO” washing powder to Chuholee Trading Pty Ltd trading as Campsie Gift Zone located in Campsie NSW 2194.

   (iii)The sale of 18 packets of 3kg “OMO” washing powder to Chuholee Trading Pty Ltd trading as Campsie Gift Zone located in Campsie NSW 2194.

   (iv)The sale of an unknown quantity of 3kg boxes of “OMO” washing powder to Mohammed Ali Mah trading as Belmore Asian Grocery located at 392 Burwood Road, Belmore NSW 2192.

   The evidence of these sales is found in an affidavit of Susan Gaye O’Connor, solicitor employed by Baker & McKenzie, the solicitors for the applicants, sworn 27 March 2007 and in Exhibit SOC1 to that affidavit.

9. Samples of the goods were tendered in evidence.  They bear words in the English and Indonesian languages.  The statements in the Indonesian language are to the effect that the products were “manufactured by Unilever Indonesia”.  However, there is evidence of Ian Barty, the Commercial Manager for the Household and Personal Care division of P.T. Unilever Indonesia Terbuka (“Unilever Indonesia”), a subsidiary of Unilever, that Unilever Indonesia does not manufacture OMO products, although it does manufacture a washing powder in Indonesia which it packages and markets under the brand names “Rinso” and “Surf”.  Mr Barty states that until 2005 Unilever Indonesia did manufacture OMO cream, but not OMO washing powder.

10. Moreover, the washing powder that Unilever Indonesia sells, it sells in bags and sachets, not in buckets and boxes.  The largest packet of washing powder that Unilever Indonesia produces is one of 3 kg capacity.  Mr Barty concludes that the 9 kg OMO bucket, the 3.5 kg OMO bucket, and the 3 kg OMO box that Bless Point has been selling in Australia were not manufactured with Unilever’s authority.

11. Accordingly, the case is not one of “parallel importing” in the sense of Bless Point having imported into Australia and sold here goods that were being lawfully sold in Indonesia by or with the licence of Unilever.  On the contrary, the goods have been manufactured and packaged from the outset without the licence of Unilever.

12. The evidence of Michelle Katz, Marketing Director, Homecare, for Unilever Australia, states that in Australia, Unilever Australia is the conduit for the Unilever group, which together with Unilever owns “several of the world’s most well-known consumer brands …”.  She states that Unilever Australia regards the OMO brand as one of its flagship brands in Australia, and that under that brand Unilever Australia sells and supplies in Australia a range of laundry detergents, including washing powder.  OMO was first registered as a trade mark in Australia on 2 August 1955 and since that time, the OMO brand has been extensively marketed and promoted in connection with washing detergents and powders in Australia.  Ms Katz states that OMO is one of the leading and largest selling brands of washing powder and laundry detergents in Australia.  Her affidavit demonstrates aspects of Unilever Australia’s advertising under the OMO brand.

13. A particular problem with the counterfeit OMO products is, according to Ms Katz, that the “counterfeit ‘OMO’ products” are inferior in quality to their genuine OMO counterparts.  There is, she says, a risk that consumers who purchase the counterfeits and who may be dissatisfied may be put off buying genuine OMO washing powders in the future, and may turn instead to a competing product.  Ms Katz points out that this is particularly so if the consumer has bought a large quantity of counterfeit OMO washing powder, such as a 9 kg bucket.  She states:

    The damage to the OMO brand and OMO products may therefore be hidden and impossible to assess accurately or at all.  There may be significant damage to the goodwill and reputation of Unilever which is difficult to detect and counteract.

14. An additional point made in Ms Katz’s affidavit is that unlike genuine OMO products, counterfeit washing powders are unlikely to have been formulated for local conditions, such as water quality, environmental standards for biodegradability, phosphate levels, and Australian washing machines.

15. In addition, the safety, dosage and other standard instructions for Unilever Ausrtalia’s washing powders are relevant only to genuine OMO washing powders.  In the result, there is a real risk that the use of counterfeit OMO washing powders in Australia could damage customers’ clothing and/or washing machines.

16. I am satisfied that there is a serious question to be tried as to Bless Point’s liability and that of its sole director and secretary, Mr Thamin, to Unilever on Unilever’s pleaded claims of infringement of trade mark, passing off and contravention of s 52 of the Trade Practices Act 1974 (Cth).

17. Unilever has had some difficulty in serving Bless Point and Mr Thamin.  According to a company extract in evidence, the registered office of Bless Point is at Unit 3, 161-171 Princes Highway, Kogarah, NSW 2217, and its principal place of business is there too.  That address is also the address given in the company extract as the address of Mr Thamin.

18. When the proceeding was before me on 2 April 2007, there was evidence that documents that had been left for Bless Point and Mr Thamin at the address mentioned, which is a security block of units, had come to Mr Thamin’s notice.  I need not relate that evidence in detail.  The affidavit of Frederick Ernest Johnson, a private investigator engaged by Trade Mark Investigation Services, stated that a woman of Asian appearance with three small children was living in the above address when Mr Johnson called there for the purpose of effecting service on Bless Point and Mr Thamin.  Mr Johnson had previously left an envelope with documents at the door and the woman told Mr Johnson that she had got the envelope and would give them to Mr Thamin.  She said that Mr Thamin no longer lived there but had gone overseas, and that she did not have an address for him but that she saw him.  Subsequently, however, the woman said that Mr Thamin had picked up the documents.

19. On 2 April 2007, I ordered that the application, statement of claim and supporting affidavits be taken to have been served on Bless Point and Mr Thamin on Sunday 1 April 2007; that the time for service of the originating process be abridged to Sunday 1 April 2007 accordingly; that the proceeding, including the application for interlocutory relief be stood over to Thursday 5 April 2007 at 2.15 pm; and that the solicitors for the applicants notify Bless Point and Mr Thamin of the stand over date by letters posted to them on 2 April 2007 at the above address.

20. I felt reasonably assured that Bless Point and Mr Thamin were aware of the proceeding and of the stand over date, 5 April 2007, at 2.15pm, and I gave interlocutory injunctive relief against them on 5 April 2007 accordingly. 

21. I was concerned, however, about the possibility of proceedings for contempt of court being brought against them on the basis of nothing more than evidence of service of the injunctive orders by mail.  Accordingly, in the orders of 5 April 2007, I reserved the position of Bless Point and Mr Thamin as to any contempt of court proceeding that might be brought against them for a failure to comply with the interlocutory injunction.

22. I also ordered that the costs of obtaining the interlocutory relief be part of the applicants’ costs of the proceeding, and that the proceeding be stood over to 26 April 2007.

I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren.

Associate:

Dated:        17 April 2007

Counsel for the Applicants:	Mr D Kell
Solicitor for the Applicants:	Baker & McKenzie
Counsel for the Respondents:	The First and Second Respondents did not appear
Date of Hearing:	5 April 2007
Date of Judgment:	5 April 2007
Date of Publication of Reasons:	17 April 2007