Nokia Corporation v Yu

REASONS FOR JUDGMENT 1 The applicant, Nokia Corporation ("Nokia"), is the owner of registered Trade Mark numbered 458364 for Nokia in Class 9, registered Trade Mark 490781 for Nokia and a particular device in Class 9, registered Trade Mark number 808735 for Nokia in Class 16 and registered Trade Mark number 867057 for Nokia in Classes 9, 18, 25, 38, 41 and 42. The solicitors for the applicant have informed me that the application in respect of registered Trade Mark number 808735 for Nokia in Class 16 is, in the circumstances of the case, inapplicable and may be put to one side. I agree. For the balance of these reasons of decision, the three remaining Trade Marks will be described as "the Nokia Trade Marks". 2 On 13 May 2008, Nokia filed an application and statement of claim in the Federal Court identifying the Nokia Trade Marks and that each of the marks was registered, subsisting and of full force and effect. The statement of claim went on to allege that the respondent, Mr Yu, without the licence or authority of Nokia had: … 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 or one or more Trade Marks which are substantially identical with or deceptively similar to one or more of the Nokia Trade Marks. 3 The claim went on to identify the allegedly infringing goods as: … mobile phone accessories including but not limited to mobile phone covers, mobile phone batteries and mobile phone plugs, bearing one or more of the Nokia Trade Marks or one or more Trade Marks which are substantially identical with or deceptively similar to one or more of the Nokia Trade Marks, which products were not made by or under the licence or authority of [Nokia]. 4 On or about 9 April 2008, the Australian Customs Service ("Customs") seized eight phone covers, 70 phone batteries and 30 plugs all bearing the Nokia logo. The consignment of goods was addressed to the respondent at 2/24 Northumberland Road, Auburn, New South Wales, ("the respondent's alleged address"). The respondent was, therefore, the designated owner of the goods within the meaning of the Trade Marks Act 1995 (Cth) ("the Act"). 5 On 6 June 2008, Nokia applied for and was granted two types of orders: First, an order that the Chief Executive Officer (the "CEO") of Customs be restrained until the trial of this proceeding, or further order, from releasing any of the goods, the subject of a Notice of a Seizure to Objector dated 9 April 2008 ("the Notice of Seizure") and secondly, an order that the application and statement of claim be taken to have been served on the respondent on 28 May 2008 at which time both of those documents were left in the letterbox at the respondent's alleged address and further, that service of those documents and other documents be effected in future by sending a copy of them by pre-paid post addressed to the respondent at that address. The respondent's alleged address was also the address notified by Customs in the Notice of Seizure. In addition, the orders of 6 June 2008 required the respondent to file and serve a defence by 4:00pm on 27 June 2008. 6 Consistent with the orders made on 6 June 2008, the applicant sent a letter by express post to the respondent's alleged address enclosing a sealed copy of the orders of 6 June 2008 and putting the respondent on notice that should the respondent fail to file a defence, the applicant would seek judgment in default of appearance and defence. The letter was returned to the applicant's solicitors marked "RTS not known". 7 Unsurprisingly, the applicant now seeks judgment on default pursuant to O 35A rr 2(2) and 3(2) of the Federal Court Rules. So far as is relevant, those rules provide that: 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 … 3(2) If a respondent is in default, the Court may: … (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. Rule 5 goes on to provide that: (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. 8 The requirement in O 35A r 3(2) that the applicant appear to be entitled to the relief on the statement of claim does not require proof by way of evidence of the applicant's claim. It requires an assessment of the claims pleaded in the statement of claim to ascertain whether there is a claim for the relief sought: see, by way of example, Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 and Chanel Limited v Kim [2008] FCA 477. 9 Notwithstanding that O 35A r 3(2) does not require the applicant to file and serve proof by way of evidence in order for judgment in default to be granted, it is apparent on the face of the statement of claim, together with the affidavit material filed and served on the respondent that there is material which would justify and warrant judgment in default of both appearance and defence. 10 First, certificates of Trade Mark were produced. Those certificates establish that the register of Trade Marks records Trade Mark 458364 in respect of the work Nokia for Class 9 including in respect of apparatus and instruments relating to electrical and telecommunications for use in telephone exchanges, modems and the like. Secondly, the register records Trade Mark number 490781 in respect of Class 9 in respect of Nokia and a device in relation to the same products. Finally, the register records Trade Mark 867057 in relation to the word Nokia in respect of, by way of examples, batteries, battery chargers, power supplies, housings or cases or covers, clips, carrying cases for communications apparatus and accessories. 11 In addition, an affidavit has been filed by the applicant sworn by Kenneth James Taylor, who carries on business as a Trade Mark investigation service agent. Mr Taylor deposes to the investigation and reporting services he carries out on behalf of the applicant in relation to counterfeit products. As the applicant submitted, Mr Taylor has a dual role; he has been retained by the applicant to investigate and, where appropriate, take action where he has identified misuse of the applicant's intellectual property in Australia. 12 Significantly, Mr Taylor's affidavit identifies the products that were seized and the subject of the Notice of Seizure as including eight phone covers, 70 phone batteries and 30 plugs, all bearing the Nokia logo. Mr Taylor also exhibited photographs of the items seized. Those photographs indicate that they bear a mark, if not the Nokia mark, then a mark very similar to one or more of the Nokia Trade Marks referred to earlier. 13 That brings me to the application of O 35A. The respondent has not filed a notice of appearance or any defence. Moreover, he has not appeared at the directions hearing on 6 June 2008 and has failed to comply with the orders made on 6 June 2008. Accordingly, the respondent is in default for the purposes of O 35A r 2(2). 14 As I have indicated, although it is not necessary to do so for the purposes of O 35A r 3 (2), the evidence discloses, first, that the applicant is the owner of the Nokia Trade Marks. Secondly, that Mr Yu sought to import into Australia the products I have identified, bearing one or more of the Nokia Trade Marks or marks which are substantially identical with or similar to one or more of Nokia Trade Marks and finally, that those Nokia Trade Marks were not applied to those goods with the licence or the authority of the applicant. In the circumstances the allegations in the statement of claim are made out and moreover, it is appropriate, in the circumstances, for there to be relief of the kind, although not completely of the kind sought, in the application. 15 I now come to the form of relief. As was discussed during the course of the application it is inappropriate for there to be any declaration or injunction in respect of Australian Registered Trade Mark 808735 for Nokia in Class 16. As the applicant's solicitor submitted Class 16 relates to what may be described as paper products. None of the goods subject to the Notice of Seizure fall within that category. In the circumstances, the relief that will be granted will be as follows. 1. A declaration that by his importation into Australia of the items listed in the schedule marked A, each being one or more of the following Australian Registered Trade Marks: 1.1 Australian Registered Trade Mark 458364 for Nokia in Class 9; 1.2 Australian Registered Trade Mark 490781 for Nokia and device in Class 9; 1.3 Australian Registered Trade Mark 867057 for Nokia in Classes 9, 18, 25, 38, 41 and 42 together referred to as the ("Nokia Trade Marks") without the licence authority of the applicant, the respondent has infringed the Nokia Trade Marks and each of them. And orders that: 2. The respondent be permanently restrained, whether by himself his employees or agents or otherwise 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 with or deceptively similar to any one or more of the Nokia Trade Marks in the course of trade on or in relation to: 2.1 Any of the goods in respect of which the Nokia Trade Marks are registered which the Nokia Trade Marks are registered which I will describe as the Nokia registered goods; 2.2 goods of the same description as any of the Nokia registered goods; 2.3 services that are closely related to any of the Nokia 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 paragraph 2 of this order. 3. The goods seized by Customs, at Sydney pursuant to a Notice of Objection lodged by the applicant under s 132 of the Act, and which are the subject of and referred to in the Notice of Seizure to Objector dated 9 April 2008 and bearing the Customs reference number DGR200801302/2kk sent to the applicant by a delegate of the Chief Executive Officer of Customs in which the respondent is identified as the designated owner of such seized goods, be forfeited to the Commonwealth and disposed of as the Chief Executive Officer of Custom directs. 4. The respondent pay the applicant's costs of the proceeding. 5. The proceeding be discontinued subject to the applicant having liberty to apply to reinstate the proceeding limited to the question of quantum. 16 As will become apparent I have not granted the applicant relief sought in proposed paragraphs 3 and 4 of its Notice of Motion dated 15 July 2008. In those paragraphs the applicant sought orders for delivery up, on oath, to the applicant or its duly authorised agent for destruction of identified goods and catalogues said to be in the possession of the respondent. In the circumstances of this case, and given the history of the matter, it is inappropriate for those orders to be made. Not only has the respondent not participated in these proceedings, but an order of that nature, in these circumstances is likely to be futile and only lead to unnecessary additional expense on the part of not only the applicant but in the circumstances, the Court. In those circumstances I decline to grant the relief set out in paragraphs 3 and 4 of the notice of motion. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gordon.