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[2022] FCA 638
Federal Court of Australia
2022-05-18
Burley J
Original judgment source is linked above.
THE COURT NOTES THAT: In these orders, XTRAK Products means the XTRAK 80 and XTRAK 80 Pro range of UHF mobile radio products as depicted in the images in Annexure A to the Statement of Claim dated 11 March 2022 and Appendix 2 to the judgment dated 9 May 2022 (images reproduced in Schedule 1 to these orders).
THE COURT DECLARES THAT:
Injunction 3. In lieu of the undertaking given by the Respondent and noted by the Court on 17 March 2022, the Respondent be restrained whether by itself, its directors, servants, agents, related bodies corporate or otherwise, for as long as the GME Design remains registered on the Register of Designs, from infringing the GME Design, including by: (a) making or offering to make the XTRAK Products or either of them; (b) importing the XTRAK Products or either of them into Australia for sale, or for use for the purposes of any trade or business; (c) selling, hiring or otherwise disposing of, or offering to sell, hire or otherwise dispose of the XTRAK Products, or either of them; (d) using the XTRAK Products or either of them in any way for the purposes of any trade or business; or (e) keeping the XTRAK Products or either of them for the purposes of doing any of the acts in order 3(c) or order 3(d), without the licence or consent of the Applicant.
Costs 4. The Respondent is liable to pay Applicant for its costs of the proceeding on a party-party basis. 5. If the parties have not, within 14 days of the date of these orders, agreed as to the quantum of costs to be paid by the respondent pursuant to order 4, the applicant file and serve its costs summary in accordance with paragraphs 4.10 to 4.12 of the Costs Practice Note (GPN-Costs) within 28 days of the date of these orders. 6. Within 14 days of the Applicant's service of the Costs Summary, the Respondent to file and serve any Costs Response in respect of the Respondent's Costs Summary in accordance with paragraphs 4.13 to 4.14 of the Costs Practice Note. 7. If the parties have not, within 14 days of the date of these orders, agreed as to the quantum of costs to be paid by the respondent pursuant to order 4, the costs be determined by a Registrar of the Court in accordance with the procedures specified in the Federal Court Costs Practice Note (GPN-Costs). 8. The Registrar be directed, pursuant to rule 1.37 of the Federal Court Rules 2011 (Cth), to determine the quantum of the lump sum for costs payable pursuant to order 4 in such a manner as he or she deems fit, including if thought appropriate on the papers. 9. The proceedings be otherwise dismissed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
BURLEY J: 1 On 9 May 2022, I published my reasons in GME Pty Ltd v Uniden Australia Pty Ltd [2022] FCA 520 (judgment) and directed that the parties prepare and provide to my chambers proposed short minutes of order giving effect to the judgment. The parties have been able to agree on some, but not all, of the final orders that should be made. 2 The two issues that are presently in dispute concern a) proposed order 4, which is an order for delivery up and takedown of materials concerning the XTRAK product, and b) costs. The difference between the parties in respect of costs is that the applicant, GME Pty Ltd, contends that it should have the costs of the proceedings, and the respondent, Uniden Australia Pty Ltd, contends that it should not have to pay the costs of and incidental to the application for short service and the interlocutory relief. 3 In relation to the delivery up and takedown order, the broad principle underlying the making of such order is that where an injunction has been made and, that notwithstanding, there is a basis for considering that there may be a temptation to act in breach of the injunction because of materials possessed by a party, then it may be appropriate to order delivery up and takedown: see Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2021] FCA 307. That circumstance does not arise in the present case. An injunction will be made against Uniden, a large corporation. There is no reason to believe that it would not behave in accordance with the injunction, as counsel for the applicant accepts. In those circumstances, and having regard to the correspondence which indicates that the XTRAK product has never been sold in Australia, it is appropriate to decline to make an order for delivery up and takedown. 4 In relation to the question of costs, the submissions advanced by GME point to a chronology of events that began on 12 January 2022, with letters before action from GME indicating that it had come to its attention that the respondent had begun advertising the XTRAK device as "Coming soon". 5 There followed a chain of correspondence, which did not yield substantive response in terms of a launch date or an undertaking until 10 March 2022. On that date, in response to what might be understood to be a final letter of demand from GME, those acting for Uniden indicated that the earliest launch date would be 20 April 2022, some five weeks later. No undertaking not to launch was then proffered. On the following day, the applicant filed the proceedings, including the originating application, statement of claim and the affidavits in support. The originating application also sought interlocutory relief. 6 It transpired, ultimately, that the matter was listed for early final hearing that was determined in the judgment. However, it seems to me that, having regard to the chronology, it was not unreasonable for the applicant to commence the proceedings in the manner that it did, in the time that it did, having regard to the responses that it had received from the beginning of the year. Accordingly, in my view, it is appropriate that the costs order be that "the respondent pay the costs of the proceedings on a party-party basis". 7 The other orders to be made concern the quantum of costs, and the parties have agreed that a period of time be allowed for quantum to be discussed between them and, if not resolved, that that matter be resolved by the Court. The orders that I will make in that regard conform with the short minutes of order proposed by the parties, subject to the amendments which provide for any assessment of the quantum of costs to be made by a Registrar of the Court should the parties be unable to agree. 8 Having regard to those matters, the orders that I now make are: THE COURT NOTES: In these orders, XTRAK products means XTRAK 80 and XTRAK 80 Pro range of UHF mobile radio products as depicted in the images in annexure 8 of the statement of claim dated 11 March 2022 and appendix 2 to the judgment dated 9 May 2022 (images reproduced in schedule 1 to these orders) THE COURT DECLARES THAT: 1. The respondent's XTRAK products embody a design that is substantially similar in overall impression to the registered design number 201613671 (GME Design). 2. By displaying in Australia the XTRAK products on its website and at its online shops since at least 12 January 2022, the respondent had threatened to infringe the GME design pursuant to section 71 of the Designs Act 2003 (Cth). THE COURT ORDERS THAT: Injunction 3. In lieu of the undertakings given by the respondent and noted by the court on 17 March 2022, the respondent be restrained, whether by itself, its directors, servants, agents, related bodies corporate or otherwise, for as long as the GME Design remains in the register of designs from infringing the GME design, including by: a. making or offering to make the XTRAK products or either of them. b. importing the XTRAK products or either of them into Australia for sale or for use for the purposes of any trade or business. c. selling, hiring or otherwise disposing of or offering to sell, hire or otherwise dispose of the XTRAK products or either of them. d. using the XTRAK products or either of them in any way for the purposes of any trade or business, or e. keeping the XTRAK products or either of them for the purposes of doing any of the acts in order 3(c) or order 3(d) without the license or consent of the applicant. Costs 4. The respondent is liable to pay the applicant for its costs of the proceedings on a party-party basis. 5. If the parties have not, within 14 days of the date of these orders, agreed as to the quantum of costs to be paid by the respondent pursuant to order 4, the applicant file and serve its costs summary in accordance with paragraphs 4.10 to 4.12 of the Costs Practice Note (GPN-Costs) within 28 days of the date of these orders. 6. Within 14 days of the applicant's service of the costs summary, the respondent file and serve any costs response in respect of the respondent's costs summary in accordance with paragraphs 4.13 to 4.14 of the Costs Practice Note. 7. If the parties have not, within 14 days of the date of these orders, agreed as to the quantum of costs to be paid by the respondent pursuant to order 4, the costs be determined by a Registrar of the Court in accordance with the procedures specified in the Costs Practice Note. 8. The Registrar be directed, pursuant to rule 1.37 of the Federal Court Rules 2011 (Cth), to determine the quantum of the lump sum for costs payable pursuant to order 3 in such a manner as he or she deems fit, including if thought appropriate on the papers. 9. The proceedings be otherwise dismissed. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Burley.
GME Pty Ltd
Uniden Australia Pty Ltd