Jemella Australia Pty Ltd v Parkinson aka Matve

REASONS FOR JUDGMENT 1 I have read the material and your submissions, and I am prepared to make the order sought in the Amended Notice of Motion. 2 An Amended Notice of Motion dated 17 March 2009 was filed in these proceedings seeking the following orders: 1. That the Applicant is entitled to judgment against the First Respondent on the Statement of Claim filed on 28 August 2008, including damages to be assessed; 2. The First Respondent pay the Applicant's costs of and incidental to the proceeding fixed in the amount of $23,253.00; 3. That the First Respondent pay to the Applicant interest of the sum of damages assessed; 4. Such further or other orders as this honourable Court sees fit. 3 The matter has a complicated history, to which some short reference must be made, but the thrust of the long history is that Jemella sought relief pursuant to the Trade Marks Act 1995 (Cth) (the Act) in respect of seizure by the Australian Customs Service of counterfeit goods imported by the first respondent. 4 Notwithstanding lengthy attempts to effect service on the first respondent, it was only pursuant to orders for substituted service that the Amended Notice of Motion and the supporting material was able to be effected. I will refer in detail to the questions of service later, but the effect of the evidence concerning service is that I am satisfied that the relief claimed by Jemella Australia Pty Ltd and the material on which it is based has been brought to the attention of Mr Parkinson, and that he has been deliberately avoiding service on him in respect of the proceedings for counterfeit trade goods. 5 The application in these proceedings was filed on 16 July 2008. In those proceedings, Jemella Australia Pty Ltd, the applicant, sought relief pursuant to the Act in respect of the seizure by the Australian Customs Service of counterfeit goods imported by Mr Parkinson. The applicant is a wholly-owned subsidiary of the second respondent, Jemella Limited. By agreement with the second respondent, the applicant is the exclusive distributor in Australia of goods manufactured by Jemella Limited under the registered trademark "GHD". The second respondent is the owner of that mark and has licensed the applicant to use it in Australia and New Zealand, and has authorised it to bring these proceedings. 6 "GHD" is a trademark which enjoys recognition in a large part of the world as a trademark denoting hair-care products of the highest quality and reputation. The mark is used in the case of genuine hair-styling irons and those products enjoy a reputation for quality. The applicant claims that GHD hair-styling irons are by far the market leader, both in Australia and internationally. The applicant has been concerned in recent times with counterfeit GHD products (that is to say, products bearing the registered trademark but which are not genuine GHD products) in the Australian market. The applicant has successfully brought proceedings against a number of parties who have been selling counterfeit GHD products. In February 2008, the applicant obtained Anton Piller orders from this Court, which, upon execution, resulted in the seizure of some 30,000 counterfeit GHD hair-styling irons. 7 In these proceedings, on 11 August 2008, I granted interlocutory relief to the applicant and made directions for the further prosecution of its claim, namely, that the applicant file and serve a Statement of Claim on or before 4 pm on 25 August 2008, and the first respondent file and serve his Defence within 14 days of service of the applicant's statement of claim. The applicant filed its Statement of Claim on 28 August 2008. 8 As I earlier indicated, there have been difficulties concerning service of the documents by the applicant on the first respondent. 9 On 8 August 2008, the first respondent was sent the application and various affidavits by way of service to his email addresses, being and . On 11 August 2008 I made the following directions: (a) Pursuant to O 7 r 10, the first respondent has been effectively served with the application in this matter. (b) Pursuant to O 7 r 9, service may be effected on the first respondent by email to the addresses and . 10 Importantly, on 20 August 2008, the first respondent was personally served with the application filed 16 July 2008 and two affidavits. The first of them is that of Kelly Maree Gardner, sworn 16 July 2008, and the second is the affidavit of Mr Stephen Gregory Whatling, sworn 16 July 2008. 11 On 3 September 2008, the first respondent was served with the Statement of Claim filed 28 August 2008, pursuant to my order of 11 August 2008. That service was effective because email communications to one of the two email addresses was successfully transmitted. 12 On 6 March 2009, I ordered, amongst other things, that: 1. Pursuant to O 7 r 9, service of documents filed in this proceeding may be effected on the first respondent by sending the documents by pre-paid ordinary post addressed to the first respondent at 88 Oakview Street, Parkinson, QLD 4115. 2. Service in accordance with Order 1 of these Orders be deemed to be effected on the first respondent on 14 days from the date of posting the documents by ordinary post to the first respondent. … 13 On 20 March 2009, all documents filed in this proceeding, including the Amended Notice of Motion filed on 18 March 2009 and a recent affidavit of Jacinta Anne Goodwin, sworn 18 March 2009, was sent in the manner that I had indicated service could be effected. 14 The affidavit of Jacinta Anne Goodwin of 6 April 2009 deposes to the fact that the envelope containing the large volume of documents had been posted by ordinary post, as indicated by my orders for substituted service, to Mr Parkinson at 88 Oakview Street, Parkinson, Queensland, 4115, but that the envelope containing those documents had been returned on 27 March 2009 by post to McInnes Wilson Lawyers. 15 The envelope containing those documents was returned in a plastic bag. On the envelope, the words "Return to Sender" are hand-written in black crayon on the front of the envelope, and the address on the front of the envelope is hatched out with what appears to be the same black crayon. An Australia Post "Return To Sender" sticker bearing mark 26/3 is affixed to the front of the envelope, and the side of the envelope has been sealed with sticky tape, upon which the words "Repaired by Australia Post" are printed. It is not apparent from the evidence who, in fact, opened the envelope, which was later repaired using the "Repaired by Australia Post" sticker, nor the identity of the person who had hatched out the original address and had written the words "Return to Sender," on the envelope. 16 It is important to record, on the question of service, that on 16 September 2008, Ms Goodwin had sent to Mr Parkinson, at the Oakview Street, Parkinson, address, a sealed copy of the order which I had made on 11 August 2008. It also included a sealed copy of the Statement of Claim, and copies of emails which had been sent to the first respondent at the email addresses and , dated 2 September 2008 and 3 September 2008 respectively. That letter, dated 16 September 2008 and posted by ordinary post to Mr Parkinson at 88 Oakview Street, Parkinson, Queensland, 4115, had not, as at today's date, been returned to the sender, McInnes Wilson Lawyers. This is the same address to which the large bundle of documents, which has now been returned, was sent. 17 Further attempts were made to locate Mr Parkinson at the Oakview address. A Mr Larry Neal Moes, who is a process server in the employ of Trade Mark Investigation Services, attended the Oakview Street premises on 18 February 2009 and observed mail protruding from the mail box addressed to Ms L.J. Potts. A woman who identified herself to Mr Moes as Lisa, aged approximately 40 years of age with short fair hair and a medium-to-solid build, answered the front door of the premises. Mr Moes says in his affidavit of 6 April 2009: 4. After requesting to speak with the first respondent, I was advised by Lisa that the first respondent did not live at the premises but that she did know of him. 5. Despite my request, Lisa refused to provide me with the first respondent's current address. 6. I advised Lisa that I had some important legal documents for the first respondent and subsequently provided her with my name and mobile number for her to pass on to the first respondent. She informed me that she would advise the first respondent to contact me as a matter of urgency. 18 As at the date of his affidavit, 6 April 2009, Mr Moes had not been contacted by Mr Parkinson. 19 Next, Mr Moes says that on 2 April he "re-attended" the premises and saw a Ford Explorer vehicle, registration number 236-HT0 parked in the driveway. Unfortunately, the registered owner of that vehicle has not been identified, and so its significance, at present, escapes me. On that occasion, Lisa answered the door and, according to Mr Moes, had the following conversation: I said, "Hello, Lisa. I am looking for Ziggy PARKINSON again. Is he here at the moment?" Lisa replied, "No, he is not here." I asked, "Do you know where I could speak to him?" Lisa replied, "No." I asked, "Are you Lisa POTTS?" Lisa replied, "Yes." I said, "I have these documents to serve on you in relation to Ziggy PARKINSON. They are for you to hand to him." Lisa said, "Okay, I will give them to him if I see him." 20 Mr Moes says that he handed Lisa a sealed envelope addressed to the first respondent, containing a letter from McInnes Wilson Lawyers to the first respondent dated 31 March 2009, together with the documents referred to therein. Mr Moes says: 11. Ms Potts accepted the said envelope and advised me that she would give it to the first respondent if she saw him. 12. Upon receipt of the envelope, Ms Potts closed the door to the premises. 21 Mr Moes says that: 13. Before departing the premises, I left a further envelope addressed to the first respondent containing a further letter from McInnes Wilson Lawyers to the first respondent dated 31 March 2009 together with the documents referred to [in that letter] at the front door to the premises. 22 When the matter was called on this morning, there was no appearance either by or on behalf of the first respondent. Having regard to the totality of the evidence regarding attempts to serve, I am, as I have indicated earlier, satisfied that notification of these proceedings and the hearing of the Amended Notice of Motion today have come to the attention of Mr Parkinson. 23 The Federal Court Rules relevantly concerning default judgment are O 35A rr 2(2), 3. Order 35A r 2(2) provides: 2(2) For this Order, a respondent is in default if the respondent has not satisfied the applicant's claim and: (a) the time for the respondent to enter an appearance has expired and the respondent has failed to enter an appearance; or (b) the time for the respondent to file a defence has expired and the respondent has failed to file a defence; or (c) the respondent fails to attend a directions hearing; or (d) the respondent fails to comply with an order of the Court in the proceeding; or (e) the respondent fails to file and serve a pleading as required by Order 11; or (f) the respondent fails to serve a list of documents or an affidavit or other document, or does not produce a document as required by Order 15; or (g) the respondent fails to do any act required to be done by these Rules; or (h) the respondent fails to defend the proceeding with due diligence. 24 Order 35A r 3 relevantly provides: 3(2) If a respondent is in default, the Court may: (a) order that a step in the proceeding be taken within the time limited in the order; or (b) if the claim against the respondent is for a debt or liquidated damages - grant leave to the applicant to enter judgment against the respondent for the debt or liquidated damages and, if appropriate: (i) costs: (A) in a sum fixed by the court; or (B) to be taxed; and (ii) interest; or (c) if the proceeding was commenced by an application supported by a statement of claim or the Court has ordered that the proceeding continue on pleadings - give judgment against the respondent for the relief that: (i) the applicant appears entitled to on the statement of claim; and (ii) the Court is satisfied it has power to grant; or (d) give judgment or make any other order against the respondent; or (e) make an order specified in paragraph (b), (c) or (d) to take effect if the respondent does not take a step ordered by the Court in the proceeding in the time limited in the order. … 3(5) The Court may make an order of the kind mentioned in subrule (1), (2) or (4), or any other order, or may give such directions, and specify such consequences for non-compliance with the order, as the Court thinks just. 25 The Amended Notice of Motion seeks the relief in paragraphs 1 to 4 of the Motion which I have earlier set out. In my judgment, the applicant is entitled to that relief, for these reasons: