Vans, Inc v Offprice.Com.Au Pty Ltd

FEDERAL COURT OF AUSTRALIA

Vans, Inc. v Offprice.Com.Au Pty Ltd [2006] FCA 137

PRACTICE AND PROCEDURE – Application for leave to appeal against decision of docket judge refusing an application to enter summary judgment in favour of applicant – No prima facie defence shown on the evidence – Whether summary judgment ought to be refused where a respondent merely seeks to put applicant to proof of its case – Significance of recent enactment of s 31A of Federal Court of Australia Act – Effect of the formula ‘no reasonable prospect of successfully defending the proceeding’ – Application for leave to appeal granted.

Federal Court of Australia Act 1976 (Cth), s 31A

VANS, INC. v OFFPRICE.COM.AU PTY LIMITED, MARJORY PTY LTD, MICHAEL WAGNER, MICHAEL O’SHEA

VID131 of 2006

WILCOX J
22 FEBRUARY 2006
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID131 of 2006

BETWEEN:

VANS, INC.
APPLICANT

AND:

OFFPRICE.COM.AU PTY LIMITED
FIRST RESPONDENT

MARJORY PTY LTD
SECOND RESPONDENT

MICHAEL WAGNER
THIRD RESPONDENT

MICHAEL O’SHEA
FOURTH RESPONDENT

JUDGE:

WILCOX J

DATE OF ORDER:

22 FEBRUARY 2006

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.The applicant, Vans, Inc., be granted leave to appeal against the order of Finkelstein J, made on 3 February 2006 in Federal Court Proceeding No VID382 of 2005, dismissing an application for summary judgment against the second respondent, Marjory Pty Limited.

2.The directions for trial made by Finkelstein J on 17 February 2006 be stayed, pending determination of the appeal, or earlier order of a judge.

3.        The costs of this application be costs in the appeal.

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

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID131 of 2006

BETWEEN:

VANS, INC.
APPLICANT

AND:

OFFPRICE.COM.AU PTY LIMITED
FIRST RESPONDENT

MARJORY PTY LTD
SECOND RESPONDENT

MICHAEL WAGNER
THIRD RESPONDENT

MICHAEL O’SHEA
FOURTH RESPONDENT

JUDGE:	WILCOX J
DATE:	22 FEBRUARY 2006
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

WILCOX J:

1. This is an application for leave to appeal against a decision of Finkelstein J, made on 3 February 2006, dismissing an application for summary judgment against one of four respondents, in respect of all of whom the applicant made allegations of infringement of trademark. That respondent is the second respondent, Marjory Pty Limited (‘Marjory’).  I understand the applicant is likely to discontinue its action against the other respondents. 

2. The action concerns shoes that bear the applicant’s trademark.  There was evidence before Finkelstein J that the shoes are counterfeit.  That evidence came in an affidavit made by Larry Bendo Anastacio, an employee of a company associated with the applicant.  Mr Anastacio set out his experience in detecting counterfeit ‘Vans’ products and gave detailed reasons why, in his opinion, the subject shoes are counterfeit. 

3. There was no evidence contradicting Mr Anastacio's opinion.  However, the third respondent, Michael Wagner, who was concerned, at least at one stage, with the management of Marjory, said the shoes were purchased from a business in Hong Kong, Warner Shop Limited…