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 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.

The text of entered orders can be located using eSearch on the Court’s website.

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:	30 MARCH 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. These proceedings were commenced by the filing of an Application on 6 March 2009. The application was accompanied by a Statement of Claim which was also filed on that day.

2. There is a history to the current proceedings which should be briefly mentioned. On or about 19 March 2007 the first applicant and the second respondent are said to have entered into an agreement pursuant to which, in consideration for the first applicant not immediately commencing proceedings, the second respondent agreed that he and his then company, L & Lin Co. Pty Limited would not purchase, offer for sale, promote, advertise, sell, provide, supply, distribute or otherwise trade in products which bear the first applicant’s Omo or Dove trademarks or any substantially identical or deceptively similar mark without the first applicant’s consent.

3. The proceedings concern alleged infringements of trade marks in respect of the first applicant’s trade marks for goods sold as Omo, Dove and Rexona.

4. In the present proceedings the applicants seek relief in respect of infringement of trade marks, in respect of contravention of the Trade Practices Act 1974 (Cth) and in respect of breaches of the undertaking given on or about 19 March 2007.

5. The respondents were served with the Application and accompanying Statement of Claim on 9 March 2009. The time for entering an appearance allowed by Order 9 rule 2 of the Federal Court Rules has already expired.

6. When the matter, which is in the list today for first directions, was called Mr N R Murray of counsel appeared for the applicants but there was no appearance for the respondents.

7. At about 10:10 am Mr Bao Kun Lin, the second respondent, appeared in the company of a lady. Between them they had a reasonably good appreciation of matters spoken in the English language and an ability to communicate in English. However, when I sought to ascertain the reason for the second respondent’s appearance he indicated that he would appreciate the presence of an interpreter who could assist him in interpreting what was said from the Mandarin language to the English language and vice versa.

8. An accredited Mandarin interpreter was available in the building and arrived at about 10:45am. With the assistance of the interpreter the second respondent disclosed that he did not appear today to dispute the matters claimed against the respondents but rather to apologise for the conduct complained of.

9. When the second respondent appeared at 10:10am he indicated that he did not wish to appoint a solicitor to represent himself or the first respondent company. In addition he indicated that he was the sole director of the first respondent company and he sought leave to appear for that company today as well as for himself.

10. I granted leave to the second respondent to appear today for the first respondent as a sole director of the first respondent noting that the grant of leave did not extend beyond today.

11. A form of Notice of Appearance taken from Form 15 in the Federal Court Rules was made available to the second respondent who duly completed same, striking out the reference to a solicitor and solicitor’s agent, and signing same. I granted leave to the second respondent to file in Court that Notice of Appearance in respect of himself.

12. Counsel for the applicants indicated that the substantive relief which they were seeking was to be found in paragraphs 1, 7, 10 and 11 of the Application, to which list paragraph 6 was later added. The second respondent informed the Court that both he himself and also the first respondent agreed to orders being made in accordance with paragraphs 1, 7, 10 and 11.

13. In relation to paragraph 6 the second respondent agreed to deliver up to the offices of the applicants’ instructing solicitors Henry Davis York at 44 Martin Place Sydney all counterfeit products bearing the applicant’s trade marks which were still in the possession of the respondents on or before 3 April 2009. The second respondent indicated that he was willing to provide a statement confirming that once that had been done all counterfeit product bearing the applicants’ trade marks had been handed over.

14. In the circumstances it seems to me that appropriate final relief should be ordered in respect of the claims made in the paragraphs mentioned.

15. This would leave for consideration the questions of compensation to be paid by the respondents to the applicants, costs and whether or not interlocutory relief should be granted; calling upon the respondents to produce documents and to make, file and serve an affidavit revealing the source of the counterfeit goods.

16. Before the second respondent arrived in court some consideration was given to the interlocutory relief sought, reference being made to Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133, the judgement of the NSW Court of Appeal in Ross v Internet Wines Pty Ltd (2004) 60 NSWLR 436, and my judgement in GSM (Trademarks) Pty Ltd v Shao (No 2) [2006] FCA 1393.

17. It is proposed that the Application be stood over in respect of the three outstanding issues until 10:15am on Monday 6 April 2009 should the parties be unable to reach agreement in relation to those matters in the meantime.

I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham.

Associate:

Dated:        15 April 2009

Counsel for the Applicants:	N R Murray
Solicitor for the Applicants:	Henry Davis York

The Respondents were self represented.

Date of Hearing:	30 March 2009
Date of Judgment:	30 March 2009