Microsoft Corporation v Short

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 21 of 2011

JUDGE: STONE J DATE: 18 MARCH 2011 PLACE: SYDNEY

REASONS FOR JUDGMENT 1 This proceeding was commenced by application and statement of claim filed on 14 January 2011. The applicants seek relief under the Trade Marks Act 1995 (Cth) based on alleged infringements of the first applicant's registered trade mark 576996(9) windows, of which the second applicant is the authorised user. The applicants also seek orders in respect of misleading and deceptive conduct under the Fair Trading Act 1999 (Qld), and the Australian Consumer Law (Qld). 2 At the first directions hearing on 10 February 2011 there was no appearance by the respondent, and to date no notice of appearance has been filed. At that directions hearing I made orders in relation to a proposed notice of motion by the applicant seeking default judgment. In particular I ordered that the applicants file and serve any notice of motion seeking default judgment pursuant to O 35A r 3(2)(c) of the Federal Court Rules, at least five days prior to the next directions hearing. 3 A notice of motion seeking judgment in default was filed on 1 March 2011. The motion was listed for hearing on 17 March 2011. For reasons that are not presently relevant, it was not possible to hear the motion on 17 March, and the motion was held over for hearing today. Evidence adduced by the applicants establishes that: the originating process was served on the respondent on 18 January 2011; the orders made at the first directions hearing on 10 February were served on the respondent on 18 February 2011. 4 The affidavit of Shane Phillip Edmonds, affirmed on 11 March 2011, deposes to the service of the notice of motion and supporting affidavit on the respondent. Mr Edmonds states that when he rang the doorbell of the premises where the documents were to be served it was answered by, "A male aged approximately 27 to 30 years old, five feet and seven inches tall, of slim to medium build with light brown hair". The individual concerned did not respond to the request for identification. He walked to the rear of the house and came back and said: "Nathan doesn't know who you are, so he is not coming to the door". Mr Edmonds states that he believed the individual to be Nathan Short, because of "his responses and demeanour" and therefore he dropped the documents at the feet of this person and walked away. 5 Mr Edmonds added that after taking eight or nine steps he was approached by the same man, who aimed a punch at the left side of his face before running back into the house. Any doubt that the individual concerned was Mr Short is resolved by Mr Edmonds' description of that behaviour. It is difficult to understand why, had the individual not been Mr Short, merely leaving the documents would evoke such aggressive behaviour. I accept therefore that the notice of motion has been effectively served. 6 I am also satisfied on the evidence, that Mr Short was advised that the hearing of the notice of motion was stood over from 17 to 18 March 2011. Evidence to that effect is contained in the third affidavit of Nicholas Justin Kiernan Smith, affirmed on 17 March 2011. Mr Smith, who is a solicitor in the employ of the solicitors for the applicants, deposes that using a mobile telephone number, linked in other evidence to the respondent, he advised the person answering of the date of the adjourned hearing. At the commencement of the hearing the matter was called outside the Court without eliciting any appearance by the respondent. I am satisfied that all proper efforts to advise the respondent of the hearing of the applicants' notice of motion have been made, and there is no obstacle of that nature to proceeding to consider the relief the plaintiff sought. 7 Order 35A rule 3(2)(c) applies where, as here, the proceeding was commenced by application and statement of claim. It is now well established that an application for the relief to which the rule refers does not need to be supported by evidence; Luna Park Sydney Pty Limited v Bose [2006] FCA 94; Humphries v Halifax Vogel Group Pty Ltd (2008) 76 IPR 144. It is sufficient that there is a claim for the relief sought on the facts stated in the statement of claim, and that the Court has jurisdiction and power to grant that relief. In this case the relief relates to claims of infringement of trademarks, of which the applicants are the registered owners, in particular, the windows trade mark is well known as relating to computer systems software and which is sold with user manuals. 8 The statement of claim alleges that the respondent has carried on the business of selling software products and services from premises at 2491 Sandgate Road, Boondall, Queensland 4034 under the business name "Zero Alpha". The software, which is advertised on the websites identified in Mr Smith's first affidavit, of 1 March 2011, goes under the name of "Windows Supervisor" and "Windows Family Safety". As Mr Flynn, who appeared for the applicants at the hearing of the notice of motion, submitted, the word "Windows" is used there as a badge of origin as distinct, for instance, from advertising software for use with the applicants' software. 9 In an abundance of caution the applicants adduced evidence that is sufficient to support their claims even though, as mentioned above, it is not necessary to do so to qualify for the relief sought under O 35A. In the circumstances I do not propose to discuss this evidence beyond that to which I have already referred. 10 I am satisfied that the facts as stated in the statement of claim are such as to constitute infringement of the applicants' trademark, and that it is appropriate to restrain that infringement by an injunction under s 126 of the Trade Marks Act 1995 (Cth). The applicants also seek relief in respect of misleading and deceptive conduct, in that the respondent's use of the windows trademark also implies that the first applicant has authorised its use and that the respondent's products are connected with the first applicant, or otherwise emanate from the first applicant. I am satisfied that, under the provisions of the Trade Marks Act, the Fair Trading Act 1999 (Qld), and the Australian Consumer Law (Qld), an injunction to restrain that behaviour should be made. 11 Finally, the applicants seek orders that the respondent deliver up to their solicitors all documents, labelling, packaging and promotional material that bear the infringing terms, "Windows Supervisor" or "Windows Family Safety", or any other name which includes the word "Windows," or any other word which is substantial identical or deceptively similar to the word "Windows." Relief in that form can be given as ancillary to the relief afforded under the Trade Marks Act, and, in any event, under ss 22 and 23 of the Federal Court of Australia Act 1976 (Cth). The applicants also seek an order that the respondent pay their costs of this proceeding. In the absence of any appearance or defence by the respondent there is no reason why this should not be the case, and therefore I will so order. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone.