Unilever PLC v Smart Dollars Pty Limited - [2009] FCA 344

FEDERAL COURT OF AUSTRALIA
Unilever PLC v Smart Dollars Pty Limited [2009] FCA 344
UNILEVER PLC and UNILEVER AUSTRALIA LIMITED ACN 004 050 828 v SMART DOLLARS PTY LIMITED ACN 104 023 636 and BAO KUN LIN
NSD 191 of 2009
GRAHAM J
30 MARCH 2009
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 191 of 2009

BETWEEN:
UNILEVER PLC
First Applicant

UNILEVER AUSTRALIA LIMITED ACN 004 050 828
Second Applicant

AND:
SMART DOLLARS PTY LIMITED ACN 104 023 636
First Respondent

BAO KUN LIN
Second Respondent

JUDGE:

GRAHAM J

DATE OF ORDER:

30 MARCH 2009

WHERE MADE:

SYDNEY

THE COURT GRANTS LEAVE:
1.   To the applicants to file in Court an affidavit of Kenneth James Taylor sworn 25 March 2009.
2.   To the second respondent to appear today for the first respondent as a sole director of the first respondent, noting that this grant of leave does not extend beyond today.
3.   To the second respondent to file in Court a Notice of Appearance in respect of himself
AND THE COURT:
4.   Orders that the respondents and each of them, whether by themselves, their servants, agents, or otherwise, be restrained from infringing registered trade mark no. 744279, 883073, 1041224, 124276, 217187 and 1017981.
5.   Orders that the respondents, and each of them, whether by themselves, their servants, agents or otherwise, be restrained in trade and commerce from falsely representing that products sold by them are manufactured by or with the approval of the applicants.
6.   Declares that the second respondent breached his undertaking dated 19 March 2007 to the first applicant not to purchase, offer for sale, promote, advertise, sell provide, supply, distribute or otherwise trade in products which bear any of the first applicant’s:
(a)OMO trade marks, including registered trade marks no: 124276, 203285 and 244717;
(b)DOVE trade marks, including registered trade marks no: 134497 and 196375;

or any substantially identical or deceptively similar mark or to aid, abet, counsel or procure any other person to do so without the first applicant’s consent.
7. Orders that the second respondent be restrained, whether by his servants, agents or otherwise from manufacturing, producing, ordering, purchasing, importing, offering for sale, promoting, advertising, selling, providing, supplying, distributing, exporting or otherwise trading in products which bear any of the first applicant’s:
(a)OMO trade marks, including registered trade marks no: 124276, 203285 and 244717;
(b)DOVE trade marks, including registered trade marks no: 134497 and 196375;

or any substantially identical or deceptively similar mark or aiding, abetting, counselling or procuring any other person to do so without the first applicant’s consent.
8. Orders that the respondents deliver up to the applicants all counterfeit products in the first respondent’s possession, custody or control which bear any of the first applicant’s trade marks for “Omo”, “Rexona” and “Dove” referred to in Order 4 for destruction, by delivering same to the offices of Henry Davis York 44 Martin Place Sydney on or before Friday 3 April 2009 together with a statement signed by…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2009] FCA 344
Decision Date: 30 March 2009

CaseChat Overview and Summary

Unilever PLC initiated proceedings against Smart Dollars Pty Limited, seeking relief for the alleged infringement of several registered trademarks and false representation in trade and commerce. The dispute was heard in the Federal Court of Australia, where the primary concern was the unauthorised use of trademarks and the sale of counterfeit products bearing Unilever's trademarks.

The court was required to determine whether the respondents had infringed upon Unilever's registered trademarks, falsely represented the origin of their products, and breached an earlier undertaking. The legal issues included the validity and scope of trademark protection, the extent of the respondents' liability for counterfeiting and misrepresentation, and the enforcement of the prior undertaking.

The court granted Unilever leave to file an affidavit and for the second respondent to appear on behalf of the first respondent. It restrained the respondents from infringing the specified trademarks, falsely representing product origins, and manufacturing or trading in counterfeit goods. The court also declared that the second respondent had breached an earlier agreement, ordering him to cease certain activities related to Unilever's trademarks. Furthermore, the respondents were required to deliver up all counterfeit products to Unilever for destruction. The matter was adjourned for further directions.

The court's orders included granting Unilever the right to submit additional evidence, restraining the respondents from various activities, and directing the respondents to deliver up counterfeit products for destruction. The case was adjourned for further directions to address the remaining relief sought by Unilever.

Orders

Orders of the court

THE COURT GRANTS LEAVE:

1. To the applicants to file in Court an affidavit of Kenneth James Taylor sworn 25 March 2009.

2. To the second respondent to appear today for the first respondent as a sole director of the first respondent, noting that this grant of leave does not extend beyond today.

3. To the second respondent to file in Court a Notice of Appearance in respect of himself

AND THE COURT:

4. Orders that the respondents and each of them, whether by themselves, their servants, agents, or otherwise, be restrained from infringing registered trade mark no. 744279, 883073, 1041224, 124276, 217187 and 1017981.

5. Orders that the respondents, and each of them, whether by themselves, their servants, agents or otherwise, be restrained in trade and commerce from falsely representing that products sold by them are manufactured by or with the approval of the applicants.

6. Declares that the second respondent breached his undertaking dated 19 March 2007 to the first applicant not to purchase, offer for sale, promote, advertise, sell provide, supply, distribute or otherwise trade in products which bear any of the first applicant’s:

(a) OMO trade marks, including registered trade marks no: 124276, 203285 and 244717;

(b) DOVE trade marks, including registered trade marks no: 134497 and 196375;

or any substantially identical or deceptively similar mark or to aid, abet, counsel or procure any other person to do so without the first applicant’s consent.

7. Orders that the second respondent be restrained, whether by his servants, agents or otherwise from manufacturing, producing, ordering, purchasing, importing, offering for sale, promoting, advertising, selling, providing, supplying, distributing, exporting or otherwise trading in products which bear any of the first applicant’s:

(a) OMO trade marks, including registered trade marks no: 124276, 203285 and 244717;

(b) DOVE trade marks, including registered trade marks no: 134497 and 196375;

or any substantially identical or deceptively similar mark or aiding, abetting, counselling or procuring any other person to do so without the first applicant’s consent.

8. Orders that the respondents deliver up to the applicants all counterfeit products in the first respondent’s possession, custody or control which bear any of the first applicant’s trade marks for “Omo”, “Rexona” and “Dove” referred to in Order 4 for destruction, by delivering same to the offices of Henry Davis York 44 Martin Place Sydney on or before Friday 3 April 2009 together with a statement signed by the second respondent confirming that the goods so delivered are all of the counterfeit products in the possession, custody or control of the respondents or either of them.

9. Orders that the matter stand over for directions at 10:15am on Monday 6 April 2009 to address the further conduct of the proceedings in relation to the balance of the relief sought by the applicants.

10. That the costs of today be reserved.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

GRAHAM J

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Ratio Decidendi

Legal Principle Established

Established by: GRAHAM J

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IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 191 of 2009

JUDGE:	GRAHAM J
DATE OF ORDER:	30 MARCH 2009
WHERE MADE:	SYDNEY