British American Tobacco Australasia Limited v The Person Identified by the Australian Customs Service as "Gory Sabar"

The Registered Trade Marks Reg. No. Mark Class Goods Date of Registration 163844 34 All the goods 25-NOV-1960 270845 34 Cigarettes 31-JUL-1973 369487 WINFIELD 34 Cigarettes 18-DEC-1981 657297 34 Cigarettes, tobacco and tobacco products; lighters, matches 30-MAR-1995 750619 34 Tobacco; smokers' articles; matches 13-AUG-1998 752287 34 Tobacco; smokers' articles; matches 07-JAN-1998 786027 34 Tobacco; smokers' articles; matches 18-FEB-1999 917043 34 Cigarettes, tobacco, tobacco products, smokers' articles, lighters, matches 20-JUN-2002 963064 34 Cigarettes, tobacco, tobacco products, smokers' articles, lighters, matches 23-JUL-2003

Schedule B The Seized Goods

1. Twenty (20) cartons containing a total of four thousand (4,000) cigarette sticks all with marks the same as or deceptively similar to marks registered by British American Tobacco Australasia Limited, being goods covered by the Australian Customs Service Notice of Seizure to Objector with reference DGR 200705608/1kk; and
2. Twenty (20) cartons containing a total of four thousand (4,000) cigarette sticks all with marks the same as or deceptively similar to marks registered by British American Tobacco Australasia Limited, being goods covered by the Australian Customs Service Notice of Seizure to Objector with reference DGR 200705669/1kk.

NEW SOUTH WALES DISTRICT REGISTRY NSD 1545 OF 2007

BETWEEN: BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED

AND: THE PERSON IDENTIFIED BY THE AUSTRALIAN CUSTOMS SERVICE AS "GARY MUSSA"

JUDGE: STONE J DATE OF ORDER: 22 AUGUST 2007

1. GRANTS LEAVE to the applicant to file a Notice of Motion dated 22 August 2007 and supporting affidavit of Robert Anthony Arnold sworn 21 August 2007, returnable instanter before Justice Stone.
2. ORDERS pursuant to Order 19 rule 2(2)(d) that service of this Notice of Motion be dispensed with.
3. ORDERS pursuant to Order 35A rule 3(2)(d) that, in default of the respondent's appearance in the proceedings, final orders be made in the proceedings in the terms of orders 4 to 8 below.
4. ORDERS pursuant to section 137(3)(b) of the Trade Marks Act 1995, the goods listed in Schedule B (Seized Goods) be forfeited to the Commonwealth for disposal at the direction of the Chief Executive Officer of the Australian Customs Service.
5. ORDERS that the respondent by himself, his servants, agents or otherwise, be restrained from: a. manufacturing; b. importing; c. causing or procuring the manufacture or importation of; d. selling or offering or exposing for sale; e. advertising or promoting; or f. otherwise providing cigarettes, tobacco or tobacco products bearing: (i) one or more of the one or more of, the registered trade marks listed in Schedule A (Registered Trade Marks); or (ii) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks which have been applied without the consent of the applicant.
6. ORDERS that the respondent by himself, his servants, agents or otherwise, be restricted from authorising, aiding, abetting, counselling or procuring any other person or entity to engage in conduct prohibited by order 5.
7. ORDERS that the applicant be granted leave to use the documents produced by the Australian Customs Service in response to a subpoena issued on 7 August 2007 (and the information contained therein) for the purposes of investigating and pursuing further legal action against third parties.
8. ORDERS that the respondent pay the applicant's costs of the proceedings.
9. NOTES that the applicant no longer seeks any relief mentioned in the application filed in this matter other than that mentioned in these orders. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

The Registered Trade Marks Reg. No. Mark Class Goods Date of Registration 163844 34 All the goods 25-NOV-1960 270845 34 Cigarettes 31-JUL-1973 369487 WINFIELD 34 Cigarettes 18-DEC-1981 657297 34 Cigarettes, tobacco and tobacco products; lighters, matches 30-MAR-1995 750619 34 Tobacco; smokers' articles; matches 13-AUG-1998 752287 34 Tobacco; smokers' articles; matches 07-JAN-1998 786027 34 Tobacco; smokers' articles; matches 18-FEB-1999 917043 34 Cigarettes, tobacco, tobacco products, smokers' articles, lighters, matches 20-JUN-2002 963064 34 Cigarettes, tobacco, tobacco products, smokers' articles, lighters, matches 23-JUL-2003

Schedule B The Seized Goods

1. One hundred and nineteen (119) cartons containing a total of twenty three thousand eight hundred (23,800) cigarette sticks all with marks the same as or deceptively similar to marks registered by British American Tobacco Australasia Limited, being goods covered by the Australian Customs Service Notice of Seizure to Objector with reference DGR 200705680/1kk; and
2. Twenty (20) cartons containing a total of four thousand (4,000) cigarette sticks all with marks the same as or deceptively similar to marks registered by British American Tobacco Australasia Limited, being goods covered by the Australian Customs Service Notice of Seizure to Objector with reference DGR 200705642/1kk.

NEW SOUTH WALES DISTRICT REGISTRY NSD 1544 OF 2007

BETWEEN: BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED

AND: THE PERSON IDENTIFIED BY THE AUSTRALIAN CUSTOMS SERVICE AS "GORY SABAR"

NEW SOUTH WALES DISTRICT REGISTRY NSD 1545 OF 2007

BETWEEN: BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED

AND: THE PERSON IDENTIFIED BY THE AUSTRALIAN CUSTOMS SERVICE AS "GARY MUSSA"

REASONS FOR JUDGMENT 1 The applicant in these two proceedings is the owner of registered trade marks 163844, 270845, 369487, 657297, 750619, 752287, 786027, 917043 and 963064, details of which are set out in Schedule A to the orders accompanying these reasons. By notice issued under s 132 of the Trade Marks Act 1995 (Cth), the applicant objected to the importation of goods infringing these trade marks. 2 On 6 July 2007, the Australian Customs Service seized 179 cartons of "Winfield" cigarettes pursuant to s 133 of the Act, which authorises seizure of goods where there are reasonable grounds for believing that importation of those goods would infringe a notified trade mark. The goods seized, some 35,800 cigarettes in total, were considered to bear markings substantially identical with or deceptively similar to the applicant's trade marks. Customs issued four "Notices of Seizure to Objector" to the applicant, three relating to a consignment of 20 cartons of cigarettes and one to a consignment of 119 cartons. These Notices advised that the designated owner of two of the 20 carton consignments was "Gory Sabar, 3 Applebee Street, St Peters NSW 2044", whilst the remaining two consignments were directed to "Gary Mussa, Unit 21, 124 Hassall Street, Wetherill Park NSW 2164". 3 On 7 August 2007, the applicant commenced actions for infringement of trade mark under s 137 against both Mr Sabar and Mr Mussa. On that day, the applicant appeared before Cowdroy J who made orders authorising substituted service, granting leave to issue subpoenas to Customs and listing applications for interlocutory orders for hearing on 16 August 2007. I heard those applications and made the interlocutory orders sought by the applicant; British American Tobacco Australasia Limited v The person identified by the Australian Customs Service as Gory Sabar [2007] FCA 1255. 4 The applicant seeks final orders pursuant to O 35A of the Federal Court Rules, which provides for judgment on default. Neither of the respondents has filed a notice of appearance. Neither has appeared before the Court at any stage. As such, the respondents are in default under O 35A rr 2(2)(a) and 2(2)(c). In these circumstances, O 35A r 3(2)(d) authorises the Court to "give judgment or make any other order against the respondent". 5 By notices of motion filed in court this morning, the applicant seeks orders pursuant to s 126(a) of the Trade Marks Act restraining the respondents from dealing with tobacco products bearing marks substantially identical with, or deceptively similar to, the registered trade marks. The applicant also seeks orders pursuant to s 137(3)(b) that the seized goods be forfeited to the Commonwealth for disposal by Customs. 6 The applicant has provided affidavit evidence detailing its attempts to identify and contact the respondents. I am satisfied that all appropriate avenues have been pursued. The applicant has found no evidence that persons bearing the names "Gory Sabar" or "Gary Mussa" exist other than the fact that someone in the People's Republic of China addressed the consignments of cigarettes to them. It is reasonable to assume that the cigarettes were sent to Australia with an expectation that there would be persons in this country who would receive them. It is also reasonable to assume that the persons to whom the consignments were addressed, whether by their real names or by an alias, expected to receive the goods and - given the quantities involved - to trade in them. The applicant suggests that it is likely that these names are being used as an alias by someone seeking to avoid the operation of the law. In such circumstances, it is appropriate to identify the respondents by the present descriptions. 7 The applicant has also filed affidavit evidence setting out the grounds for believing that the seized goods infringe their trade marks. That evidence is primarily found in the affidavits of Mr Barry Wilson filed in each matter. Mr Wilson, an employee of the applicant, is responsible for coordinating the applicant's activities against persons involved in illicit trade with the applicant's products, including counterfeit products. He deposes to a number of factors that led to his conclusion that the seized goods were counterfeit: 1) each of the seized cartons and packs had identical graphic health warnings, whereas genuine cartons and packs are labelled with alternating graphic health warnings; 2) the address of the applicant is misspelt on the seized packs; 3) the production code on the packs indicates that they were manufactured by a manufacturing cell that does not have the capacity to produce the quantity of packs seized; 4) the poor quality of the printing on some packs has resulted in smudging and fading; and 5) all genuine "Winfield" cigarettes are manufactured in Australia. 8 The applicant's evidence suggests that the seized goods infringed the applicant's trade marks pursuant to Part 12 of the Act. There is no contrary evidence, nor is there any reason to doubt the applicant's evidence. In the absence of any argument that an injunction to restrain future conduct is unnecessary I am satisfied that the evidence supports the relief sought by the applicants; Universal City Studios LLLP v Hoey (2006) 232 ALR 525. 9 In Australian Securities Commission v Macleod (1994) 54 FCR 309, Drummond J set out at 314 the prerequisites for default judgment under O 10 r 7(1)(b), the predecessor to O 35A r 3(2)(d): In my opinion, where final judgment is sought against a respondent pursuant to O 10, r 7(1)(b) on the ground that he is in default in complying with directions given under the order, the applicant must support its motion for judgment with material in legally admissible form sufficient to prove not only that the Court has jurisdiction in the matter and that the circumstances are such as to justify the grant of this discretionary remedy, but also all the facts necessary to prove its entitlement to the relief claimed under the judgment applied for. 10 I am satisfied that all of the prerequisites identified by his Honour are met in these matters. 11 The applicant also seeks leave to use the documents produced by Customs for the purpose of investigating and pursuing further legal action, primarily to identify the source of the infringing cigarettes in China. Granting such leave would merely release the applicant from the implied undertaking in Harman v Secretary of State for the Home Department [1983] 1 AC 280, and the use that such documents may be put to would remain a question for any court hearing further legal action to address. As such, I see no reason not to make the requested orders. 12 I make the orders sought by the applicant in the notices of motion filed in court on 22 August 2007 in each matter, and note that the applicant no longer seeks any relief mentioned in the respective applications beyond those orders. 13 In the process of preparing these written reasons, it became apparent that minor clerical errors were present in the orders made in these matters on 22 August 2007. Accordingly, on 17 September 2007, I made orders pursuant to O 35 r 7 of the Federal Court Rules varying those orders. This judgment contains the corrected version of the orders. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone.