Nokia Corporation v Mai

introduction 1 Pursuant to O 20 r 1 of the Federal Court Rules ("the Rules"), Nokia Corporation ("Nokia") moves for summary judgment against Truyen Mai, who is also known as Jimmy Mai. Mr Mai also moves for orders that: 1. The proceeding against the Second Respondent be dismissed 2. The Applicant pay the First Respondent's cost of the motion 3. Such other orders as the Court deems fit I turn first to the application for summary judgment.

application for summary judgment 2 Order 20 r 1 of the Rules relevantly provides that: Where, in relation to the whole or any part of the applicant's claim for relief, there is evidence of the facts on which the claim or part is based, and - (a) there is evidence given by the applicant or by some responsible person that, in the belief of the person giving the evidence, the respondent has no defence to the claim or part … the applicant may move on notice for such judgment for the applicant on that claim or part and the Court may pronounce such judgment and make such orders as the nature of the case requires. 3 Before Nokia can succeed on its summary judgment application, it must appear to the Court that Mr Mai has no arguable defence to Nokia's claim: see Geoffrey Inc & Ors v Luik & Anor (1997) 38 IPR 555, at 563 and 565 per R D Nicholson J; Flocast Australia Pty Ltd v Purcell & Ors (1997) 39 IPR 177, at 178-179 per Heerey J, citing Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 ("Caterpillar"), at 413-414 per Drummond J. As Drummond J noted in Caterpillar, at 414: [T]here is no justification for importing into the Federal Court rule all the detailed restrictions that the cases identify as applicable to the traditional summary judgment rules. But O 20 is not intended to provide an alternative to trial as the ordinary method of resolving litigation in the court: see Bell v Clare (1989) 23 FCR 274 at 280. Its function is limited to providing an expeditious means of resolving litigation where the applicant can clearly demonstrate that there is no real defence to particular claims made by it. In other words, upon Nokia's application, the standard of satisfaction required for summary judgment is that stated in Dey v Victorian Railways Commissioners (1949) 78 CLR 62, at 91 per Dixon J and General Steel Industries Inc v Commissioner for Railways (1964) 112 CLR 125, at 129-130 per Barwick CJ.

the claim made by nokia 4 Nokia is a Finnish company and is the registered owner of four trade marks variously in Classes 9, 16, 18, 25, 38, 41 and 42 in respect of goods (and services) including electrical and telecommunications apparatus and instruments, carrying cases for communications apparatus and its accessories and accessories and spare parts for such goods (in Class 9) (referred to below as "the Nokia trade marks"). 5 By its application and statement of claim (which have been amended twice) Nokia alleges that Mr Mai has, without its licence or authority, manufactured or caused to be manufactured, imported or caused to be imported, advertised, offered for sale, distributed, supplied and sold goods bearing one or more of the Nokia trade marks. Nokia also alleges that, by reason of this conduct, Mr Mai has breached an enforceable undertaking given by him to Nokia on 9 December 2002. 6 In support of its summary judgment application, Nokia relies upon the affidavits of Luke Andrew Merrick sworn on 6 August 2003, Kenneth James Taylor sworn on 6 August 2003, Huong Nguyen sworn on 6 August 2003, Stephen Marcus Stern sworn on 7 August 2003 and John Clifton Ramsden sworn on 11 August 2003 (and the exhibits accompanying these affidavits). In opposition, Mr Mai relied on the affidavits Truyen Mai sworn on 20 August 2003 and Katherine Jane Hay sworn on 19 August 2003. 7 I interpolate here that, in support of his own motion, Mr Mai also relied on an affidavit sworn by him on 18 August 2003 and by Kamilla Jane Shaw on 21 August 2003. In opposition, Nokia relied on an affidavit sworn by Mr Merrick on 20 August 2003

the evidence - summary judgment (a) The evidence for Nokia 8 Exhibited to Mr Stern's affidavit were certified copies of the relevant Certificates of Trade Mark Registration. In conformity with O 20, r 1, he deposed that he did not believe that Truyen Mai (or Jimmy Mai) had any defence to the allegations made by Nokia in this proceeding. 9 On 13 April 2002 Ms Nguyen went, so she deposed, to Kiosk 3, 80 Harvester Road, Sunshine in Victoria ("the Sunshine premises"). At the Sunshine premises she observed 79 mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 1 mobile phone cover bearing the nokia trade mark for a Nokia 3310 mobile phone; 5 mobile phone neck straps bearing the nokia trade mark; and 5 mobile phone covers bearing the nokia trade mark for Nokia 8310 mobile phones. She bought 3 transparent plastic mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 5 opaque plastic mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 4 mobile phone neck straps bearing the nokia trade mark; 1 black mobile phone pouch bearing the nokia trade mark for a Nokia 8210 mobile phone; and 2 black mobile phone pouches bearing the nokia trade mark for Nokia 8850 mobile phones. 10 Ms Nguyen exhibited to her affidavit a receipt for the purchase of these items. The receipt was endorsed as follows: Direct communications specialist ABN: 57 179 034 246 A sales attendant also gave her a business card, which read: Jimmy Mai Manager Tel: (03) 9312 6700 Fax: (03) 9312 6800 Mob: 0416 152 687 Sunshine Market Place (Next to Village) Kiosk 3 (in front of Big W) 80 Harvester Road Sunshine Vic 3020 direct communications specialist 11 The evidence of Mr Taylor, who is qualified to identify counterfeit Nokia products, was that all the items bought by Ms Nguyen on 13 April 2002 were counterfeit (in the sense that the nokia trade marks had not been affixed with Nokia's authority, knowledge or consent and the goods had not been manufactured by or under Nokia's authority). Amongst other things, Mr Taylor deposed that all the neck straps were counterfeit since Nokia did not manufacture or authorize the manufacture of any mobile phone neck straps. 12 Mr Taylor further deposed that, also on 13 April 2002, he went to a stall at the Laverton market, Leaks Road, Laverton ("the Laverton premises"). Whilst he was there, he counted 22 mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones that were on display and being offered for sale. He purchased one of these phone covers, which, so he deposed, was also counterfeit (in the sense referred to above, including that it bore an unauthorized nokia trade mark). At the time of his purchase, Mr Taylor received a receipt and a business card that gave the same information as the card received by Ms Nguyen. 13 Mr Taylor also deposed that, on or about 1 June 2002, he attended the Sunshine premises and observed in excess of 30 mobile phone covers for Nokia 8210 and 8250 mobile phones, all bearing the nokia trade mark, on display and being offered for sale. He bought 4 of these covers that, so he deposed, were counterfeit (in the sense already mentioned). He was given a receipt referring to "Direct Communications Specialist" and another business card in the same form as before. 14 On or about 27 November 2002, Mr Ramsden attended the Sunshine premises. Whilst he was there, he served a letter of demand by handing the letter to an attendant at the premises. Further, whilst there, he observed at least 40 assorted mobile phone covers, all bearing the nokia trade mark, for various models of Nokia mobile phones and approximately 40 mobile phone neck straps bearing the nokia trade mark on display and being offered for sale. As already noted, according to Mr Taylor, Nokia does not manufacture or authorised to be manufactured any such neck straps and, accordingly, they were counterfeit. 15 The letter of demand, which was dated 15 November 2002, was from Nokia's solicitors (Corrs Chambers Westgarth ("Corrs")) to "Direct Specialist Communications". The letter said in part: It has come to our client's [Nokia] attention that you are importing, manufacturing, causing to be imported or manufactured, distributing, offering for sale, promoting for sale and selling mobile phone batteries, covers or other accessories, bearing one or more of the Nokia Trade Marks or a name, word, mark, sign or device which is substantially identical or misleadingly, deceptively or confusingly similar thereto ("Infringing Products"). … Your conduct in dealing with Infringing Products amounts to a blatant infringement of several of the Nokia Trade Marks, in respect of which our client is entitled to institute proceedings for trade mark infringement against you, in accordance with the provisions of the Trade Marks Act 1995. Furthermore, your conduct is misleading or deceptive or likely to mislead or deceive in contravention of section 9 of the Fair Trading Act 1999 (VIC) and the equivalent provisions of the Fair Trading Acts of the other States and Territories in which you have distributed, offered for sale and/or sold Infringing Products. Additionally, your conduct constitutes a "passing-off" of the Infringing Products as and for products sourced from our client. Your conduct also constitutes the making of false representations in contravention of section 12 of the Fair Trading Act 1999 (VIC) and the equivalent provisions in the Fair Trading Acts of the other States and Territories in which you have distributed, offered for sale and/or sold Infringing Products. … Our client is willing to consider resolving this matter on a commercial basis (avoiding the need for the parties to engage in expensive legal proceedings), provided that it receives your full cooperation. … 16 On or about 6 December 2002, Mr Merrick, a solicitor at Corrs, received a telephone call from a man who identified himself as Mr Jimmy Mai. Mr Mai informed Mr Merrick that he had received the letter of demand and would attend his office on Monday 9 December 2003 to provide a signed deed of undertaking in relation to his conduct in respect of Nokia's trade marks, a statutory declaration in relation to his dealings with the counterfeit goods, and deliver up the counterfeit goods in his possession. 17 On 9 December 2002, a man who introduced himself to Mr Merrick as Jimmy Mai, handed Mr Merrick a deed of undertaking, a statutory declaration and 10 mobile phone covers bearing the nokia trade mark. 18 According to the evidence of Mr Taylor, all 10 mobile phone covers were counterfeit. A document, which was headed "Deed of Undertaking" and bore the signature of Truyen Mai, read as follows: I, Truyen Mai, of Sunshine Plaza Shopping Centre, 80 Harvester Road, Sunshine Vic 3020, in consideration of Nokia Corporation not commencing immediate legal proceedings against me, hereby undertake to: (a) immediately cease and forever desist; and (b) cause my employees, servants and agents to immediately cease and forever desist, from using in any manner whatsoever: (c) any and all of the trade marks which Nokia Corporation is the registered owner or in respect of which Nokia Corporation has a reputation in Australia (all such trade marks hereafter being referred to as the "the Nokia Trade Marks"); or (d) any name, word, mark, sign or device which is substantially identical with or misleadingly, deceptively or confusingly similar to any of the Nokia Trade Marks, including (without limiting the generality of the foregoing) from doing so by importing or causing to be imported, manufacturing or causing to be manufactured, distributing, advertising for sale, offering for sale, promoting for sale, keeping for sale or selling in Australia or elsewhere any products bearing or sold under or by reference to the Nokia Trade Marks or any of them or any other name, word, mark, sign or device which is substantially identical with or misleadingly, deceptively or confusingly similar to any of the Nokia Trade Marks. 19 The statutory declaration, which was handed to Mr Merrick, also purported to have been made by Truyen Mai and stated, amongst other things, that Truyen Mai had purchased a number of counterfeit Nokia products, including mobile phone covers, straps and batteries, from "Speedylink" at 277 Victoria Street, Abbotsford in Victoria. Truyen Mai stated that he had made a gross profit of $1500 from selling the goods. 20 Notwithstanding these events, Mr Taylor stated that, on or about 4 May 2003, he again attended the Sunshine premises and counted 47 mobile covers for various Nokia mobile phones, all bearing the nokia trade mark, which were on display and offered for sale in glass display cases. He stated that he asked the sales attendant: … if he had any batteries for Nokia mobile phones. He then said that he had "genuine" Nokia batteries for Nokia mobile phones priced at $30 each. The … Attendant then reached under the counter and produced a battery bearing the word nokia. Mr Taylor said that he purchased 3 mobile phones covers and the battery. He was provided with a receipt that bore the same business name and ABN as previous receipts. He deposed that the mobile phone covers and the battery that he purchased were endorsed with one or more of the Nokia trade marks and were counterfeit. 21 Later on 4 May 2003, Mr Taylor attended the Laverton premises, where he observed 7 mobile phone covers, all bearing the nokia trade mark, for Nokia phones on display and being offered for sale. As the covers were not packaged for sale or sold in standard Nokia packaging, he believed that they were counterfeit. 22 On 8 July 2003, Nokia commenced the present proceedings. Subsequently, on or about 11 July 2003, Nokia's solicitors were informed that the Australian Customs Service ("ACS") had made two seizures of goods, all bearing the name nokia, and consigned to "Jimmy Mai". 23 The first seizure was made on 5 July 2003, when the ACS seized 591 mobile phone covers bearing the nokia trade marks. The second seizure was made on 6 July 2003, when the ACS seized 836 mobile phone covers and 18 mobile phone pouches, all bearing the nokia trade marks. An officer of the ACS subsequently informed Mr Merrick that a person called Jimmy Mai had signed notices of Consent to Forfeit Goods in respect of the two consignments. 24 On 4 August 2003, Mr Merrick inspected the seized goods and took photographs of samples of them. Mr Merrick deposed that the goods seized on 5 July 2003 fell into three categories, namely: (1) mobile phone covers for Nokia 8310 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (2) mobile phone covers for Nokia 6610 mobile phones of various colours bearing the nokia trade mark, packaged in "zip lock" plastic bags; and (3) mobile phone covers of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping. In the third group, the mobile phone covers were bundled together with an elastic band and a sticker stating "8310>6220 (New sample)" on the side of the covers. None of the goods seized on 5 July 2003 were packaged in Nokia's standard packaging. 25 Mr Merrick also examined the goods seized on 6 July 2003, which he said fell into 9 categories, namely: (1) leather-look pouches for various models of Nokia mobile phones bearing the words "for nokia" packaged in clear "cellophane" plastic wrapping; (2) canvas and leather-look pouches for various models of Nokia mobile phones bearing the nokia trade mark packaged in clear "cellophane" plastic wrapping; (3) mobile phone covers of various colours bearing the words "Nokia 2100" packaged in clear "cellophane" plastic wrapping in two bundles of six and seven units respectively; (4) mobile phone covers of various colours bearing the nokia trade mark for digital camera enabled Nokia mobile phones packaged in clear "cellophane" plastic wrapping; (5) mobile phone covers for Nokia 8310 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (6) mobile phone covers for Nokia 8310 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (7) mobile phone covers for Nokia 8250 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (8) mobile phone covers bearing the nokia trade mark for digital camera enabled Nokia mobile phones, packaged in clear "cellophane" plastic wrapping; and (9) six miscellaneous mobile phone covers bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping. None of the goods seized on 6 July 2003 were packaged in Nokia's standard packaging. 26 Mr Taylor deposed that he examined the digital photographs taken by Mr Merrick of the goods seized by ACS on 5 and 6 July 2003. His evidence is that the goods depicted in the photographs were counterfeit (in the sense referred to above). Nokia has amended its application and statement of claim to take account of these later events. (b) The Evidence of Mr Mai 27 In an affidavit sworn on 20 August 2003, Mr Mai deposed that he is the owner of a business, which trades under the name "Direct Specialist Communications", at both the Sunshine and Laverton premises. In particular, he deposed: The business retails mobile telephones and a variety of what a[re] commonly known as "after market" accessories for use with mobile telephones. These accessories include telephone covers and keypads, neck straps and carrying pouches … … After Market accessories are purchased [from] a variety of suppliers. Some of the accessories carry the brand name of the telephone or telephone series for which they are suitable. Other accessories have both the brand name of a type of telephone and the brand name of the manufacturer or distributor of that particular line of accessories. Other accessories have no brand name at all and may be suitable for use with one or more types of mobile telephones. The business has brought [sic] accessories for use with Nokia mobile telephones from a variety of after market suppliers, which include Cellnet and Speedy Link Communications. All of the products that are the subject of this proceeding were purchased from Speedy Link. 28 Mr Mai admitted that he signed the deed of undertaking, completed the statutory declaration, and took the samples of his product to Mr Merrick. He deposed: At the time it was my belief that once the documents had been signed and handed over together with the samples, that there would be no further action by the Applicants solicitors. 29 He deposed that Mr Merrick and he subsequently agreed that he would pay an amount of $3500 by way of damages. He said, however, that: I was about to make arrangements for the payment of $3,500.00 to Luke's firm when I received a visit from Speedy Link employee who I know by the name of "Tinn". I told him about my dealings with Luke Merrick and showed him the letter of demand. Tinn told me that Speedy Link had also received a letter of demand, as had many of Speedy Link's customers. Tinn told me that I had done nothing wrong and that no one had action taken against them by the Applicants [sic] solicitors. Tinn then tore up the letter of demand and threw it in a bin. I spoke to Luke again on the telephone after my discussion with Tinn and told him what I had been told by Tinn. I said that all the other customers got letters, but they hadn't paid anything so I did not believe that I should have to do so. I did not pay the amount of $3,500.00 and I did not hear anything further from Luke for many weeks as he did not insist on the payment and no further action was taken. I believed that Tinn was correct and I had done nothing wrong. I therefore began to put some of the Nokia products back on the shelves of the Kiosk in March or April 2003. 30 Mr Mai admitted, in substance, that he had intended to import the goods that were seized by the ACS in July 2003. He deposed that: In about May or June 2003, I received a telephone call from Chan [a person whom he knew]. He told me that he was closing his shop in Hong Kong because the SARS virus had badly affected his business. He asked me whether I wanted to purchase his leftover stock of accessories. I was interested in his offer so we negotiated a price. There were two parcels of the accessories and I paid $2,000.00 for one box and $900.00 for the other box. The negotiations were all carried out on the telephone and I sent the money to Chan's bank account by telegraphic transfer. In or about July 2003, I received a letter from the Australian Customs Service, which advised me that the parcels had arrived from Hong Kong and could be collected at Melbourne Airport. When I went to the Airport I paid approximately $200.00 in charges and GST and I went to collect the parcels from customs. When I went to the customs area I meet [sic] with a customs officer who showed me some Nokia phone covers and told me that customs would need to hold the goods. I was then told that any items that did not carry the Nokia trade mark would be sent to me. … Shortly after my visit to Melbourne Airport I received the other goods. … . Chan did not provide me with any details regarding the accessories that he was sending to me. I also received in the post two notices of seizure for the goods that had been held by customs. As I did not want any further trouble with the Applicant or its solicitors, I signed the forms and return them to customs.

the evidence - the respondent's application 31 It is no longer in contest that "Truyen Mai" is the same person as "Jimmy Mai". In an affidavit sworn on 18 August 2003, Mr Mai deposed that he is formally known as "Truyen Mai", although he conducts his business using the name "Jimmy Mai". It is clear, however, why this was not at first apparent to Nokia's solicitors. The circumstances then known to Nokia's solicitors apparently indicated that Truyen Mai was not Jimmy Mai but Jimmy Mai's wife. 32 Ms Nguyen deposed that, when she attended the Sunshine premises on 13 April 2002, an "Asian female shop attendant" identified herself as "Yen" and referred to her husband as "Jimmy". According to Ms Nguyen, "Yen" said that she ran the business conducted at the Sunshine premises with her husband. I note that Mr Taylor deposed that he was present when Ms Nguyen made her purchases on 13 April 2002. It would, therefore, be unsurprising if, after their visit to the Sunshine premises on 13 April 2002, both Ms Nguyen and Mr Taylor believed that Truyen Mai and Jimmy Mai were wife and husband. Further, Mr Ramsden's evidence was that, on 27 November 2002, he met a female attendant at the Sunshine premises who identified herself as "Yen Li Mai" and referred to "Jimmy Mai" as the manager of the business. 33 In his affidavit sworn on 20 August 2003, Mr Merrick deposed that, at the time of instituting the proceeding, he had "formed the view that Truyen Mai and Jimmy Mai were separate individuals and that they were both a party to the various infringements". This was a reasonable view based on what Mr Merrick knew at the time. There was the information conveyed to him by Ms Nguyen, Mr Taylor and Mr Ramsden. It is also to be borne in mind, as Mr Merrick noted, that the business name "Direct Specialist Communications" was registered in the name of "Truyen Mai"; almost all the receipts bore the endorsement of "Direct Specialist Communications" and a relevant ABN number registered in the name of "Truyen Mai"; business cards carried the name "Jimmy Mai"; and a receipt provided to Mr Nguyen bore the text "salesperson - Yen". 34 It was not until Mr Ramsden served the documents initiating this proceeding that the issue of identity arose. Mr Ramsden deposed that: On or about 8 July 2003, I attended the Sunshine premises. I approached an Asian male shop attendant working there and asked: Is Truyen Mai here? The Asian male shop attendant replied: That's me. I then handed the Asian male shop attendant the Documents and told him that they were court documents in relation to his dealings with counterfeit Nokia products. I then asked him: Is Jimmy Mai here? He replied: I am Jimmy Mai - that's my English name." 35 Mr Mai agreed with this description of his meeting with Mr Ramsden on 8 July 2003. Mr Mai also deposed that, shortly after he was served with the documents initiating the proceedings, he received a telephone call from Mr Merrick. During the course of that conversation, Mr Mai said that he told Mr Merrick that "although I used the name Jimmy Mai my proper name was Truyen Mai". 36 On 31 July 2003, Mr Mai's solicitors sent a facsimile letter to Mr Merrick informing him that Truyen Mai and Jimmy Mai were the same person. Bearing in mind the other contents of this letter, however, I accept, as Nokia's counsel submitted, that Mr Merrick was entitled to be somewhat sceptical about what he was told. He responded by facsimile letter of the same date, saying that consideration would be given to amending Nokia's statement of claim and application upon "receipt of appropriate photographic identification". 37 By facsimile letter dated 6 August 2003, Mr Mai's solicitors advised that they were "in the process of obtaining suitable identification from [their] client, to support the assertion in relation to [their] client's identity". They complained that the applicant had "not afforded [Mr Mai] the opportunity to provide instructions on the issue of his identity". Not unreasonably, Nokia's solicitors responded that: We find it difficult, to say the least, to accept that it has taken you a full week to obtain evidence of the identity of your client. 38 Some days later, on 15 August 2003, Mr Mai's solicitors forwarded a copy of the respondent's notice of motion which is presently before the Court. On 18 August 2003, Nokia's solicitors received a copy of Mr Mai's sworn affidavit. Mr Merrick deposed that Nokia took steps to amend its pleadings and notice of motion in consequence of this affidavit, which included the photographic identification he originally sought. I accept, as Nokia submitted, that, had Nokia received Mr Mai's affidavit (or the photographic identification in it) earlier, then it would also have made consequential amendments to its pleadings at an earlier date.

the parties' respective positions 39 By its motion, notice of which was amended on 19 August 2003, Nokia sought summary judgment in the following terms: (a) a permanent injunction restraining the Respondent whether by himself, his employees or agents or otherwise howsoever from infringing any of the [Nokia trade marks] and in particular from using the Nokia trade marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to: · any of the goods in respect of which the Nokia Trade Marks are respectively registered ("registered goods"); · goods of the same description as registered goods; or · services that are closely related to registered goods, not manufactured or provided by or under the authority of the Applicant or otherwise procuring or inducing any other person to do any of the acts specified in this paragraph (a); (b) a mandatory injunction requiring the Respondent to perform the Deed of Undertaking signed by him …; (c) a declaration that the use by the Respondent whether by himself, his employees or agents or otherwise howsoever of any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to: · any of the registered goods; · goods of the same description as registered goods; or · services that are closely related to registered goods, not manufactured or provided by or under the authority of the Applicant constitutes an infringement of the Nokia trade marks; (d) delivery up on oath to the Applicant or its duly authorised agents for destruction under supervision of all goods in the possession, power, custody or control of the Respondent, his employees or agents or otherwise, to which any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the Applicant; (e) delivery up on oath to the Applicant or its duly authorised agent for destruction under supervision of all catalogues, price lists, brochures and other documents and materials in the possession, power, custody, or control of the Respondent, his employees or agents or otherwise, bearing any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the Applicant; (f) costs. With the exception of costs, Mr Mai gave his consent to orders in these terms. 40 By its motion, Nokia also sought orders that: The Respondent pay the Applicant damages for infringement of the Nokia Trade Marks, to be assessed with interest thereon, or, at the option of the Applicant on a date to be fixed, the Respondent account for the profits made by him by the said infringements and pay the Applicant the amount found to be due on the taking of such account, together with interest thereon. The Respondent provide discovery verified by affidavit to the Applicant within twenty-eight (28) days of the making of these orders in respect of all sales by him of items bearing the Nokia Trade Mark or any of them. Mr Mai gave his consent to orders for discovery, but he opposed any order for damages to be assessed or for an account of profits to be made, in respect of any infringement by him of the Nokia trade marks. Counsel for Mr Mai stated that, whilst Mr Mai consented to the injunctive and declaratory relief sought by Nokia, he did not consent to an order for damages because: even though the respondent has agreed to in effect stop selling these products, it is still submitted that it has not infringed in a manner that would give rise to damages. (transcript 14) consideration of the parties' positions 41 The authorities established that, when the issue is one of trade mark infringement under s 120 of the Trade Marks Act 1995 (Cth), the central issue to be determined is whether the use complained of is "use by the alleged infringer as a trade mark": see Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 21 IPR 1 ("Johnson & Johnson") at 24 per Gummow J. As his Honour said, referring to Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at 426 per Kitto J, this enquiry requires some consideration of the "'purpose and nature' of the impugned use": see Johnson & Johnson at 24. In Johnson & Johnson, at 25, Gummow J summarised the position as follows: [I]t remains the case that the primary function of a trade mark registered in Pt A or B of the register is that of distinguishing the commercial origin of goods or services sold under the mark. The registered mark serves to indicate, if not the actual origin of goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name. Under the Trade Marks Act 1995 (Cth) there is, of course, only one register. 42 Subject to two matters (discussed below) the evidence set out above establishes Nokia's claim of infringement as particularised in paragraph 4 of Nokia's second amended statement of claim. Subject to these matters, there can be no doubt that the respondent has infringed the Nokia trade marks. 43 In denying infringement on Mr Mai's part, counsel for Mr Mai relied on s 122(1)(c) of the Trade Marks Act 1995 (Cth). This provision reads as follows: In spite of section 120, a person does not infringe a registered trade mark when: … (c) the person uses the trade mark in good faith to indicate the intended purpose of goods (in particular as accessories or spare parts) or services … . 44 On the hearing of Nokia's application, counsel for Mr Mai said: In my submission … if there is in fact a market for accessories for goods such that people who see these products assume them to be suitable for use with a particular product, for instance a Nokia 8210 model mobile telephone, there is no infringement. The question is whether the use of the trade mark is intended to indicate that this is an accessory made or endorsed by Nokia or whether it is an accessory that can be used with Nokia and is made for that purpose. (Transcript 30) 45 In support of this submission, Mr Mai's counsel relied on the affidavit of Ms Hay (and an accompanying exhibit). He submitted: One thing is evident from Ms Hay's affidavit, or from the product exhibited there: Nokia's products are very obvious to the consumer. They are packaged as Nokia's products. These [i.e., Mr Mai's goods] are simply accessories put in cheap cellophane to be sold as accessories to what is described as the after-market, to use the term of Mr Mai. They bear the name "Nokia" the trade mark, but there is nothing on the goods or the packaging to indicate that they are products manufactured or endorsed by Nokia. They are accessories that match Nokia products. … [I]t has not been contested that these products are not genuine Nokia products manufactured by Nokia. That's never been contested. (Transcript 33) 46 Section 122(1)(c) of the Trade Marks Act 1995 (Cth) provides a defence to an alleged infringement under s 120. The object of the defence is, according to Lahore, "to enable parties (other than the plaintiff) who are engaged in the manufacture or supply of parts or accessories intended for use in or with the plaintiff's goods (in respect of which the mark is registered), to make a fair reference to the registered trade mark in circumstances which do not create a mistaken or misleading impression": see James Lahore, Patents, Trade Marks and Related Rights (Butterworths, Australia, 2001), at [58, 165]. 47 In order for the defence to apply, the use of the registered trade mark must be in good faith and the mark must indicate the intended purpose of the goods or services (e.g., that the accessories are adapted for use with the plaintiff's goods). In Johnson & Johnson, Gummow J (with whom Lockhart J agreed) applied Angove's Pty Ltd v Johnson (1982) 66 FLR 216, at 248 in holding that a use will be in good faith if made "honestly and with no ulterior motive": see Johnson & Johnson, at 18 per Lockhart J and 30-33 per Gummow J. Whether there has been a good faith use of the Nokia trade marks so as to indicate that Mr Mai's accessories are adapted for use with Nokia's goods must be determined by having regard to all the circumstances of the case, including the packaging and degree of prominence given to the registered trade mark on Mr Mai's goods: compare Masson Seeley and Co Ld v Hill Bros (Service) Ld (1940) 57 RPC 128, at 134-5. The authorities established that it will be difficult to make out the defence in the absence of words such as "suitable for use with" or "suitable in": see Minimax Ld v Moffat (1935) 52 RPC 340 ("Minimax"), at 344; G H Gledhill and Sons Ld v British Perforated Toilet Paper Company (1911) 28 RPC 429 ("Gledhill"), at 449; Neostyle Manufacturing Company Ld v Ellam's Duplicator Company (1904) 21 RPC 185 ("Neostyle"), at 192-193; Kodak Ld v London Stereoscopic and Photographic Co Ld (1903) 20 RPC 337, at 348; Interlego AG & Anor v Croner Trading Pty Limited (1992) 39 FCR 348, at 392 per Gummow J and 400 per Lockhart J; and Gillette Company & Anor v Pharma-Goods Australia Pty Ltd & Anor (1997) 38 IPR 509 per Burchett J. 48 In Minimax, the plaintiffs manufactured and sold fire extinguishers under their registered trade mark, "Minimax". The defendants made refills for the plaintiff's fire extinguishers and sold them under the descriptions "Minimax Refills" and "Minimax Fire Extinguisher Refills". In an action for trade mark infringement, the defendant pleaded, in defence, that the word "Minimax" was not intended to be used as a trade mark but "to inform the public … that certain goods sold by [it] are suitable for use as refills for fire extinguishers sold under the name 'Minimax'". The defence failed. Eve J held, at 343: [I]n my opinion there has been a dishonest failing in the way in which the Defendants have dealt with goods which belonged to the Plaintiff. I regret that they have come here and, up to a certain point, sought to establish that what they have done was not what they ultimately had to admit themselves, quite wrong and improper. His Honour enjoined the defendants "from supplying in response to orders for 'Minimax Refills' refills not the Plaintiffs' manufacture or merchandise without clearly indicating that the refills supplied are not of the Plaintiffs' manufacture or merchandise …": see Minimax, at 344. 49 In Gledhill, the plaintiffs, who were the owners of an invention for a cash-till supplied coils or rolls of paper for the use of the till under the names "Gledhill Coils", "Gledhill's Coils" or " Gledhill Papers". The plaintiffs failed, in a passing off action, to restrain the defendant's use of "Gledhill's Coils" and "Gledhill's Papers" in a statement that the defendant's coils and papers were suitable for the "Gledhill" cash-till. At 449, Eve J said: The till had become known as a "Gledhill till", and the ordinary tradesman using such a till would naturally look out for a refill for Gledhill's till. It seems to me that the Defendants, embarking on the business of supplying these rolls for use in that particular till, were entitled, in advertising and pushing those goods, to bring into prominence the fact that the goods were intended and adapted for use in this till. Of course, they were not entitled to do anything which went to show that these were coils manufactured by Mr Gledhill or his successors. 50 In Neostyle Manufacturing, the plaintiff failed, in action for passing off, to restrain the defendant from selling ink described as ink "for the Neostyle". Byrne J said, at 193: I am clearly of opinion that the Defendants and other manufacturers may sell ink and paper for use on the "Neostyle" machine, and to do it they must say so, but of course they must not by words or get-up represent their goods as Plaintiff's goods. I cannot say that the Defendants have done this. Their get-up is wholly different, though the tins are the same shape and size. 51 Having regard to the matters put before me, Mr Mai has not established an arguable defence arising from s 122(1)(c). According to a certificate of trade mark registration No 867057, the word "Nokia" is registered for: batteries … housings, or casings or covers, clips, carrying cases for communications apparatus and its accessories; holders, … all for use with communications apparatus; … accessories and spare parts of all aforesaid goods; all included in class 9 being goods in class 9. In particular, I note that the mark "Nokia" is registered in respect of batteries, casings, covers, clips, and carrying cases for communications apparatus and its accessories. 52 I reject the submission made by counsel for Mr Mai concerning the existence of an "after-market" accessories market. The evidence shows that Mr Mai offered for sale and sold (or otherwise commercially dealt with) goods prominently bearing the Nokia trade marks. The use was "as a trade mark", since it gave the misleading impression that the mark "Nokia" was "a badge of origin of the goods indicating a connection in the course of trade between the goods and the person who applie[d] it to the goods": Johnson & Johnson, at 10 per Lockhart J and 24 per Gummow J. As counsel for Nokia noted, Mr Taylor's evidence was that, when he purchased a battery with "Nokia" on it at the Sunshine premises he was told by the shop attendant that the battery was "genuine". I reject Mr Mai's submission that the words "for nokia" on some goods conveyed a different impression. In particular, I reject his submission that they conveyed only the impression that the goods were "for use with a Nokia phone". In order to convey just this, more specific language would be needed, as for example, "suitable for Nokia" mobile phones. I do not accept, as counsel for Mr Mai submitted, that the differences in packaging between Mr Mai's goods and those ordinarily used for Nokia's goods were sufficient indication that Mr Mai's goods were merely adapted for use in connection with Nokia products. Finally, I am not persuaded that merely because Mr Mai's goods bear some manufacturing details, the misapprehension flowing from the use of the Nokia trade mark is removed. On the contrary, Mr Mai has not shown that the use of the Nokia trade marks on his goods indicated that, whilst not "Nokia" products, the items were adapted for use with Nokia products. There is, therefore, no tenable basis for a defence based on s 122 (1)(c) of the Trade Marks Act 1995 (Cth). 53 At the hearing of Nokia's motion, a question arose as to whether Nokia had made out its case of infringement in respect of the goods that had been forfeited by Mr Mai. Part 13 of the Trade Marks Act 1995 (Cth) relates to the "importation of goods infringing Australian trade marks". Section 131 of the Act states that: The object of this Part is to protect registered trade marks by making provision allowing the Customs CEO to seize and deal with goods that are imported into Australia if the importation infringes, or appears to infringe, a registered trade mark. Section 133 provides for the seizure of goods by the "Customs CEO". The provision reads: (1) This section applies to goods manufactured outside Australia that: (a) are imported into Australia; and (b) are subject to the control of the Customs within the meaning of the Customs Act 1901. (2) If goods to which this section applies: (a) have applied to them or in relation to them a sign that, in the opinion of the Customs CEO, is substantially identical with, or deceptively similar to, a notified trade mark; and (b) are goods in respect of which the notified trade mark is registered the Customs CEO must seize the goods unless he or she is satisfied that there are no reasonable grounds for believing that the notified trade mark is infringed by the importation of the goods. 54 In Sony Computer Entertainment Australia Pty Ltd v Saleh [2001] FCA 717 ("Sony"), Lindgren J referred to these provisions, saying at [39]: The above provisions contemplate that an importation may, but will not necessarily, constitute an infringement. They do not expressly make importation an element on any particular form of infringement (cf s 37 and s 38 of the Copyright Act 1968 (Cth)). Statements can be found, however, which might be thought to support the general proposition that all importations are infringements: Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 per Aickin J at 688; cf Lahore, Patents, Trade Marks and Related Rights (Butterworths, looseleaf at [56, 120]). In my opinion, whether importation in a particular case constitutes an infringement depends on whether, in all the circumstances of the case, the importation satisfies the terms of subs 120(1) of the Act. 55 The evidence of Mr Mai makes it clear that he was importing the goods, which he subsequently forfeited, in the course of his business activities, with the intention of selling them or otherwise dealing with them commercially. When he went to the airport to collect them, he was acting in the course of his business. The goods bore the Nokia trade marks. As Nokia's counsel submitted, it is quite implausible that, at the time he bought the goods, Mr Mai did not know that he was buying goods that bore the Nokia trade marks. 56 The circumstances of this case are relevantly indistinguishable from those considered by Lindgren J in Sony. In his dealings with the goods that were subsequently forfeited, Mr Mai has infringed s 120 of the Trade Marks Act 1995 (Cth). 57 As already noted, in his affidavit of 20 August 2003, Mr Mai admitted breaches of the deed of undertaking. His counsel submitted that Mr Mai had been "intimidated" or "scared" by the conduct of Nokia's solicitors and that he "did not fully understand what he'd done and the nature of the undertaking" (transcript 7). There was little, if any, evidence to support this submission. Mr Mai has not shown that, in the circumstances of this case, he has an arguable defence on this aspect of Nokia's claim. 58 Although the power to order summary judgment "should be exercised with great care", summary judgment should be granted in this case, because it is clear that there is no real question to be tried: Fancourt & Anor v Mercantile Credits Limited (1983) 154 CLR 87, at 99. It follows that Nokia is entitled to summary judgment in the terms that it seeks, including an order for damages to be assessed or on account of profits to be made at its option: see Trade Marks Act 1995 (Cth), s 126 and Dr Martens Australia Pty Ltd& Ors v Bata Shoe Company of Australia Pty Ltd & Ors [1997] FCA 505 per Goldberg J. the respondent's motion 59 I have not yet formally considered the respondent's motion. I have, however, set out above the circumstances that led Nokia's solicitors, mistakenly, to believe that Truyen Mai and Jimmy Mai were separate individuals. As already noted, it was, in my view, reasonable in the circumstances for Nokia's solicitors to seek some photographic verification that Truyen Mai and Jimmy Mai were one and the same. If this notification had been given in a timely way (or before Mr Mai's motion was filed) Nokia could have taken steps to amend its pleadings. As it was, Nokia was not given the photographic verification it sought until after Mr Mai's motion had issued. Mr Mai's solicitors did not give any prior warning of this motion to Nokia's solicitors. The motion was, in the circumstances, premature and unnecessary. Some time was spent at the hearing on matters related to it (principally costs). In any case, I would not make the orders sought by Mr Mai upon his motion. It appears to me that the better course is, in the circumstances, to give Nokia leave to amend its pleadings and its notice of motion. In affording the relief Nokia now seeks, the Court gives relief against Truyen Mai alone. costs 60 Subsection 43(2) of the Federal Court of Australia Act 1976 (Cth) vests the award of costs "in the discretion of the Court or Judge". Costs ordinarily follow the event. Nokia has succeeded in obtaining summary judgment. Although Mr Mai consented to part of the relief Nokia sought against him, he opposed the balance upon the basis that there had been no trade mark infringement. As a result Nokia was put to its proofs as if all of its application for summary judgment was contested. In the circumstances, it seems to me that Nokia should have the costs of the proceeding (including the costs of its own motion). 61 Nokia made an application for indemnity costs against Mr Mai in respect of his motion. In Colgate-Palmolive Company& Anor v Cussons Pty Limited (1993) 46 FCR 225 ("Colgate-Palmolive"), at 232-4, Sheppard J set out some relevant principles concerning indemnity costs. As his Honour noted, costs ordinarily follow the event and are awarded on a party-party basis unless there are particular or special circumstances which warrant the Court departing from this practice and making some other order: see Colgate-Palmolive, at 232-3; Re Wilcox; ex parte Venture Industries Pty Ltd & Ors (No 2) (1996) 72 FCR 151, at 152-3 per Black CJ and 156-8 per Cooper and Merkel JJ; Ruddock & Ors v Vadarlis & Ors (2002) 115 FCR 229, at 234-235 per Black CJ and French J; and John S Hayes & Associates Pty Limited v Kimberly-Clark Australia Pty Limited (1994) 52 FCR 201, at 203. 62 In Colgate-Palmolive, at 233, Sheppard J set out some of the circumstances in which courts have ordered that costs be paid on an indemnity basis. His Honour's examples included the fact that the proceeding was commenced or continued in wilful disregard of known facts or clearly established law, the making of allegations which ought never to have been made, the undue prolongation of a case by groundless contentions and an imprudent refusal of an offer of compromise. Of course, the identification of these circumstances, although helpful, is not definitive. Where an application for indemnity costs is made, the question is, in each case, whether the particular facts and circumstances before the Court warrant the making of an order for the payment of costs other than on the usual party-party basis. 63 In the present case, as I have said, the respondent's motion was filed in circumstances where the respondent should have known that, if he provided proper verification of his identity, it was likely that Nokia would take appropriate steps to amend its pleadings. There was no need for the respondent to proceed in the manner he did. In accordance with the principles set out above, it seems to me that, in the circumstances of the case, Nokia is entitled to an award of costs on an indemnity basis on Mr Mai's motion. 64 For the reasons stated, orders will be made substantially in the terms sought by Nokia at the hearing. I certify that the preceding sixty-four (64) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny.

Solicitor for the Applicant: Corrs Chambers Westgarth