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[2013] FCA 80
Federal Court of Australia
2013-02-13
Streeton J
Original judgment source is linked above.
Solicitor for the Applicant: Corrs Chambers Westgarth
Counsel for the Third Respondent: Counsel for the third respondent did not appear
Counsel for the Seventh Respondent: Counsel for the seventh respondent did not appear
IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 644 of 2012
BETWEEN: BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED
JUDGE: DODDS-STREETON J DATE OF ORDER: 6 FEBRUARY 2013 WHERE MADE: MELBOURNE
THE COURT DECLARES THAT:
BETWEEN: BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED
JUDGE: DODDS-STREETON J DATE OF ORDER: 13 FEBRUARY 2013 WHERE MADE: MELBOURNE
THE COURT DECLARES THAT:
IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 644 of 2012
BETWEEN: BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED
JUDGE: DODDS-STREETON J DATE: 13 FEBRUARY 2013 PLACE: MELBOURNE
INTRODUCTION 1 On 6 and 13 February 2013, I made the orders set out above for the reasons that follow. 2 By an interlocutory application dated 3 December 2012, the applicant, British American Tobacco Australasia Limited ("BATA"), sought summary judgment against the third respondent, Phil & Angela Pty Ltd, and the seventh respondent, Ms Zhi Liu, for infringement of certain of the applicant's "Winfield" trade marks registered in respect of tobacco products. 3 The applicant relied on: 1. The affidavit of Wade Telley sworn on 4 December 2012; 2. the affidavit of Sebastian Leonardi sworn on 11 December 2012; 3. the affidavits of Daniel Plane sworn on 5 December 2012, 16 January 2013, 1 February 2013, 5 February 2013 and 6 February 2013; 4. the affidavit of Alissia Michael sworn on 3 December 2012; and 5. written submissions dated 1 February 2013. 4 The seventh respondent opposed the application and filed written submissions dated 4 February 2013. 5 At the hearing on 6 February 2013, as questions relating to the service of the third respondent arose, I adjourned the application as against the third respondent. 6 The applicant is the owner of a number of registered Winfield trade marks in respect of tobacco products, which are applied to packets of cigarettes and (apparently in some cases) the cigarettes themselves. The applicant's originating application and statement of claim alleged that eight respondents had imported or caused to be imported, advertised, offered for sale, distributed or supplied and sold, counterfeit "Winfield" cigarettes bearing one or more of its Winfield trade marks (or marks substantially identical with or deceptively similar thereto) which were not manufactured or provided by or under its authority. 7 The applicant reached a settlement with, and discontinued against, all respondents save the third and seventh respondents. 8 Against the third respondent, the applicant alleged: Third Respondent's Infringing Conduct 13 From a date unknown to the Applicant, the Third Respondent has, without the licence or authority of the Applicant, imported or caused to be imported, advertised, offered for sale, distributed, supplied and sold goods bearing one or more of the Winfield Trade Marks or one or more trade marks which are substantially identical with or deceptively similar to one or more of the Winfield Trade Marks. PARTICULARS (a) On or about 22 December 2011, from premises located at Shop 29, Bankstown City Plaza, Bankstown, NSW (the Bankstown Newsagency Retail Premises), the Third Respondent sold three (3) packets of cigarettes which each bore one or more of the Winfield Trade Marks or one or more trade marks which are substantially identical with or deceptively similar to one or more of the Winfield Trade Marks, which trade marks were not applied by or with the licence or authority of the Applicant. The said packets of cigarettes are in the possession of the Applicant's solicitors and may be inspected during office hours on reasonable notice. (b) On or about 4 January 2012, the Third Respondent sold from the Bankstown Newsagency Retail Premises, one (1) carton of cigarettes containing eight (8) packets of cigarettes which carton and packets each bore one or more of the Winfield Trade Marks or one or more trade marks which are substantially identical with or deceptively similar to one or more of the Winfield Trade Marks, which trade marks were not applied by or with the licence or authority of the Applicant. The said carton and packets of cigarettes are in the possession of the Applicant's solicitors and may be inspected during office hours on reasonable notice. (c) On or before the date of the Application herein, the Third Respondent has imported or caused to be imported, advertised, offered for sale, distributed, supplied and sold a number of cartons and packets of cigarettes which are the same as or similar to those referred to in (a) and (b) above. The Applicant cannot until after discovery give full particulars of all the aforesaid acts of the Third Respondent, but at the trial of this action the Applicant will rely upon and claim relief in respect of all such acts. 9 Against the seventh respondent, the applicant alleged: Seventh Respondent's Infringing Conduct 16 From a date unknown to the Applicant, the Seventh Respondent has, without the licence or authority of the Applicant, imported or caused to be imported, advertised, offered for sale, distributed, supplied and sold goods bearing one or more of the Winfield Trade Marks or one or more trade marks which are substantially identical with or deceptively similar to one or more of the Winfield Trade Marks. PARTICULARS (a) On or about 15 July 2011, from premises located at 137 Merrylands Road, Merrylands, NSW (the Hang Lee Retail Premises), the Seventh Respondent sold three (3) packets of cigarettes which each bore one or more of the Winfield Trade Marks or one or more trade marks which are substantially identical with or deceptively similar to one or more of the Winfield Trade Marks, which trade marks were not applied by or with the licence or authority of the Applicant. The said packets of cigarettes may be inspected at the offices of the Applicant's solicitors during office hours on reasonable notice. (b) On or before the date of the Application herein, the Seventh Respondent has imported or caused to be imported, advertised, offered for sale, distributed, supplied and sold a number of packets of cigarettes which are the same as or similar to those referred to in (a) above. The Applicant cannot until after discovery give full particulars of all the aforesaid acts of the Seventh Respondent, but at the trial of this action the Applicant will rely upon and claim relief in respect of all such acts.
The applicant's evidence 10 Alissia Michael, a private investigator, deposed to receiving instructions to make "trap purchases" of cigarettes from the third respondent and the seventh respondent, in the course of which she requested "cheap Winfield" cigarettes and, in response, received packets apparently bearing Winfield trade marks. Ms Michael documented the purchases, including her exchanges with the vendors, and provided the packets she had purchased to Wade Telley, a private investigator who manages the anti-illicit tobacco program at Strategic Security Alliance Group Pty Limited for the applicant. Mr Telley deposed to the storage and testing of the packets of cigarettes Ms Michael purchased from the third and seventh respondents. 11 Sebastian Leonardi, a quality analyst, deposed to his compliance with Practice Note CM7 for Expert Witnesses in Proceedings in the Federal Court of Australia, and to his experience and expert qualification in analysing and testing tobacco products. 12 Mr Leonardi deposed that he frequently and extensively audits, analyses and tests the applicant's tobacco products and is familiar with the characteristics of genuine tobacco products manufactured and packaged by the applicant. Mr Leonardi deposed that he is frequently required to test tobacco products to determine whether they are the applicant's genuine Winfield products. 13 Mr Leonardi deposed to tests and physical and visual examination carried out on the samples of the "Winfield" cigarette products Ms Michael purchased from the third and seventh respondents. He concluded that the samples were notably different in various significant characteristics from genuine Winfield tobacco products. 14 Mr Leonardi concluded that the samples of the tested tobacco products were not genuine Winfield tobacco products. 15 Daniel Plane, of the solicitors for the applicant, deposed to his receipt and storage of sample boxes of products tested by Mr Leonardi.
The seventh respondent's defence and evidence 16 The seventh respondent filed a defence dated 21 November 2012, in which she denied selling the cigarettes as alleged, although she did not plead to the allegation of infringement of the applicant's trade marks. The defence comprised bare denials and provided no particulars of any defence which would be raised. 17 By his affidavit sworn on 10 January 2013, Ji Ying Jim Dai, the seventh respondent's solicitor, deposed that: a) She had not sold the counterfeit cigarette in question; b) The Applicant had in many times in the past harassed the Seventh Respondent by having agents in the business making unfounded threats and allegations. The purpose was to coerce the Seventh Respondent into directly source its supply from the Applicant instead of the local wholesalers, who was charging a lessor price. The Applicant stood to profit for a direct supply of cigarettes. 18 In written submissions, the seventh respondent stated: The Seventh Respondent denies the sale. This is revealed in the pleadings in her Defence as well as the affidavit of her legal representative. Therefore a dispute of fact exists. 19 The seventh respondent further submitted that: (a) the private investigator was not independent, as he had a known association with, and was presumably paid, by the applicant; (b) there was no "objective…proof of purchase", such as a receipt or transaction records; (c) it was a case of "one person's word against" the other's; and (d) the seventh respondent "advanced the theory that the real motive of these proceedings is to coerce the seventh respondent to directly source its tobacco supplies from the applicant".
rELEVANT LEGAL PRINCIPLES 20 Section 31A of the Federal Court of Australia Act 1976 (Cth) ("the Federal Court Act") provides: (1) The Court may give judgment for one party against another in relation to the whole or any part of a proceeding if: (a) the first party is prosecuting the proceeding or that part of the proceeding; and (b) the Court is satisfied that the other party has no reasonable prospect of successfully defending the proceeding or that part of the proceeding. … (3) For the purposes of this section, a defence or a proceeding or part of a proceeding need not be: (a) hopeless; or (b) bound to fail; for it to have no reasonable prospect of success. (4) This section does not limit any powers that the Court has apart from this section. 21 Rule 26.01(1) of the Federal Court Rules 2011 (Cth) states: A party may apply to the Court for an order that judgment be given against another party because: … (e) the respondent has no reasonable prospect of successfully defending the proceeding or part of the proceeding. 22 In Adnunat Pty Ltd v ITW Construction Systems Australia Pty Ltd [2009] FCA 499 ("Adnunat"), Sundberg J relevantly summarised, at [37] the principles applicable to the operation of s 31A as follows: (a) The Court must assess the strength of the allegations made by reference to the pleadings, the affidavits and any other evidence adduced. (b) The Applicant bears the onus of demonstrating that the Third and Seventh Respondents have no reasonable prospect of success. However, if the Applicant establishes a prima facie case for summary judgment, the Third and Seventh Respondents must identify specific factual or evidentiary matters which necessitate a trial. (c) In order to have reasonable prospects of success, the Respondents must have prospects of success that are "real" and not "fanciful" or even "merely arguable". 23 In Jefferson Ford Pty Ltd v Ford Motor Company of Australia Ltd (2008) 167 FCR 372 ("Jefferson Ford"), Gordon J stated at [127]: ... it must be emphasised that once a moving party has established a prima facie case that the opponent has no reasonable prospect of success, the opposing party must respond by pointing to specific factual or evidentiary disputes that make a trial necessary; general or non-particularized denials will be insufficient to defeat the motion: see Fortron Automotive Treatments Pty Ltd v Jones (No 2) [2006] FCA 1401 at [22]. In other words, it is inappropriate in defence of a claim for judgment under s 31A of the Federal Court Act to seek to defend by merely putting a claimant to formal proof: Vans Inc v Offprice.Com.Au Pty Ltd [2006] FCA 137 at [12]. This is not a new concept. It finds earlier reflection in ss 190(4) and 191 of the Evidence Act 1995 (Cth) and O 33, O 34 and O 34B of the Federal Court Rules. 24 In Jefferson Ford, Finkelstein J stated at [22]: Perhaps one should look further at what Parliament intended to achieve. In O 14 cases, to show cause against an application for summary judgment, a defendant is required to go into some detail and state clearly and concisely the facts to be relied upon: Country Estates Pty Ltd v Leighton Contractors Pty Ltd (1975) 49 ALJR 173 at 173-174. This requires only the material facts to be stated as distinct from the evidence that would establish those facts: Ritter v North Side Enterprises Pty Ltd (1975) 132 CLR 301 at 304. If the test under s 31A raises the hurdle for the opposing party, it may be necessary for that party at a minimum to provide an outline of the evidence that will be relied upon. The outline must be sufficient to show that there is a genuine dispute about facts that are material to the outcome of the case. That will enable the judge to make some assessment of the merits. It would not, of course, be necessary, in most cases, to require the party to do more than provide an outline, because that would turn the summary judgment application into a trial. 25 In QS Holdings Sarl v Paul's Retail Pty Ltd (2011) 92 IPR 460, Kenny J referred to Spencer v Commonwealth (2010) 241 CLR 118 and observed at [16]: No hard and fast rule can be laid down as to when summary judgment is available. Much depends on the case at hand. None the less, generally speaking, summary judgment would appear appropriate when well-established propositions of law deny the prospect of success. Summary judgment would appear inappropriate where there are "factual issues capable of being disputed and in dispute". See generally Spencer at [25] per French CJ and Gummow J. Generally speaking, it also remains true to say, as Gordon J did in Jefferson Ford Pty Ltd v Ford Motor Company of Australia Ltd (2008) 167 FCR 372; 246 ALR 465; 103 ALD 505; [2008] FCAFC 60 at [127] (Jefferson Ford) that "it is inappropriate in defence of a claim for judgment made under s 31A of the Federal Court Act to seek to defend by merely putting a claimant to formal proof". There are, of course, a variety of circumstances that may attract summary judgment under s 31A of the Federal Court Act and, on each occasion, the critical question is that set by the statute - has the moving party persuaded the court that the opposing party has no reasonable prospect of success? 26 In Polar Aviation Pty Ltd v Civil Aviation Safety Authority (No 4) [2011] FCA 1126, Kenny J again considered s 31A and her analysis was affirmed by the Full Court in Polar Aviation Pty Ltd v Civil Aviation Safety Authority [2012] FCAFC 97 at [93].
TRADE MARK INFRINGEMENT - LEGISLATION AND PRINCIPLES 27 Section 120(1) of the Trade Marks Act 1995 (Cth) ("the Trade Marks Act") states: A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. 28 Section 10 of the Trade Marks Act states: For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. 29 Section 7(4) of the Trade Marks Act states that in the Trade Marks Act: use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods ... 30 Section 9(1)(b) of the Trade Marks Act states that for the purposes of the Trade Marks Act: a trade mark is taken to be applied in relation to goods ... (i) if it is applied to any covering ... label ... or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; 31 It is well established that the determination of whether trade marks are deceptively similar is approached on the basis that members of the public may have an "imperfect recollection" of the two marks and are more likely to recall the "general impression" created by the marks - see De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106 (per Lord Radcliffe), Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at 228 per Moore, Sackville and Emmett JJ and Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159). 32 A registered trade mark may be infringed if the impugned mark incorporates its idea or the essential features. See Jafferjee v Scarlett (1937) 57 CLR 115 at 121 - 122 (per Latham CJ), Saville Perfumery Ltd v June Perfect Ltd (1939) 1B IPR 440 and Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491 at 494-495 per Kearney J.
consideration - the seventh respondent 33 In the present case, in my view, the applicant established a prima facie case of infringement of its relevant Winfield trade marks by the third and seventh respondents. The applicant's case was based on the direct evidence of licensed private investigators and experts. The purchases made by Ms Michael, including the asserted interchanges with a sales person at the seventh respondent's business premises, were described and documented in detail by contemporaneous records, including the date, premises, a description of the sales person, the items purchased and the conversation. 34 The applicant's deponents described in great detail the handling and storage of the items purchased. The expert examination of the sample products and packaging was also described and documented in elaborate detail. 35 The applicant's registered Winfield trade marks were exhibited to Mr Plane's affidavit of 5 December 2012 and, in my view, when compared with the trade marks on the packaging of the purchased cigarettes constituting physical exhibits, established, according to the applicable principles, that the latter were substantially identical with or deceptively similar to the former.
the seventh respondent 36 Counsel for the applicant submitted that the seventh respondent's solicitor's denial that the seventh respondent purchased the cigarettes as alleged was based on instructions without any assertion of belief, inconsistently with the expression at other points of his affidavit. 37 More fundamentally, irrespective of its expression, the denial on instructions was not supported by any evidence, direct or indirect, from the seventh respondent. No corroborating documents, materials or amplified assertions supportive of any defence (indicating, for example, that the seventh respondent obtained the "Winfield" cigarettes from legitimate sources) were provided. 38 A bald denial that the seventh respondent sold the cigarettes and a generalised assertion of the applicant's ulterior motive for commencing the proceeding were the sole indications of the nature of the defence. 39 As recognised in Wallingford v Mutual Society (1880) 5 App Cas 685 on which some modern authorities rely, it is necessary in this context to satisfy the court not only that allegations are denied, but that there is a reasonable ground for the denial. The respondent is required to "condescend upon particulars" (at 704) and give "such an extent of definite facts" pointing to the defence as will satisfy the judge that in the particular case it is reasonable to permit the defence to be raised (at 704). 40 Here, the seventh respondent did not point to any specific factual or evidentiary matter which would justify proceeding to trial. The failure to do so was not explicable by the complications of communication with the seventh respondent to which her solicitor deposed, as some communication was possible and indeed achieved. 41 As the authorities make clear, it does not suffice in this context for a respondent to put the applicant to formal proof. Further, the seventh respondent's assertions that the evidence of the applicant's deponents should be discounted due to lack of independence and of the applicant's ulterior motive (for which no factual basis was provided), were unpersuasive. 42 In all the circumstances, I was persuaded that the applicant established that the seventh respondent had no reasonable prospect of success in defending the proceeding. Accordingly, summary judgment in the terms sought was appropriate.
the third respondent 43 The third respondent did not enter an appearance or file a defence or any other material. On 6 February 2013, I adjourned the hearing of the application as against the third respondent because the applicant had not served the third respondent at its registered office and it was unclear, on the evidence, whether service had been effected on a director of the third respondent. 44 The applicant subsequently filed the following: 1. The affidavit of Joanne Grant sworn on 8 February 2013; 2. The affidavit of Daniel Plane sworn on 8 February 2013; 3. The affidavits of Alissia Michael sworn on 8 February 2013 and 12 February 2013; 4. The affidavit of Kenneth Taylor affirmed on 11 February 2013; and 5. Supplementary submissions relating to the third respondent dated 12 February 2013. 45 I was satisfied, on the basis of the further material, that the third respondent was duly served and that the third respondent operated the business at the premises where Ms Michael purchased the relevant packets of cigarettes. 46 Accordingly, in the absence of any defence, denial of the allegations on reasonable grounds or indication of definite facts pointing to a defence, I concluded that the third respondent had no reasonable prospect of success and that summary judgment was appropriate. I certify that the preceding forty-six (46) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dodds-Streeton.
British American Tobacco Australasia Limited
Taleb
(2004) 61 IPR 212
(1937) 57 CLR 115
(2008) 167 FCR 372
(2011) 92 IPR 460
(2010) 241 CLR 118
(1975) 49 ALJR 173
(1975) 132 CLR 301