Sony Corporation v Costaneo

REASONS FOR JUDGMENT (REVISED FROM TRANSCRIPT) 1 By interlocutory application filed on 13 February 2012 the applicant seeks orders for default judgment pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (the Rules). 2 The proceeding concerns the infringement of certain registered trade marks owned by the applicant and arises out of the seizure on 24 August 2011 of certain goods by the Chief Executive Officer of Customs pursuant to s 133 of the Trade Marks Act 1995 (Cth) (the Act). 3 In the notice of seizure given by the Chief Executive Officer under s 134 of the Act, the respondent was identified as the designated owner of the seized goods. His address was given as 151 Raleigh Road Maribyrnong, Victoria. The evidence shows this address to be a Kennards self-storage facility managed by Kennards Storage Management Pty Limited (Kennards). The respondent hired Unit 405 at that facility. 4 On 13 February 2012 I made orders providing for substituted service of the interlocutory application on the respondent pursuant to r 10.24(a) of the Rules, and appointed a hearing date for that application. The orders for substituted service were necessary because the respondent had not filed an address for service as required by r 5.02 and r 11.06, and personal service was not otherwise practicable. 5 Subject to one matter I will mention, the mode of service ordered on 13 February 2012 was in conformity with orders I had earlier made on 12 December 2011 for substituted service on the respondent of the amended originating application, amended statement of claim, an affidavit of Yi Lu affirmed on 7 October 2011 and certain other orders made by me, including the order for substituted service itself. 6 Substituted service pursuant to the orders made on 12 December 2011 included leaving the document at Unit 405 of the Kennards self-storage facility at Maribyrnong. It also included emailing copies of the documents to an email address shown on the respondent's storage hire agreement with Kennards, for account correspondence in respect of Unit 405. 7 The evidence shows that when an attempt was made to send the documents to that email address the message was not delivered because the designated mailbox was shown as "not available". Accordingly, this particular mode of service was not included in the orders for substituted service made on 13 February 2012. 8 I should add that when service in accordance with the orders made on 13 February 2012 was attempted, service could not be effected at Unit 405 because, by then, the respondent no longer rented that storage unit. A copy of the interlocutory application was left at the office of the facility in a sealed enveloped marked "Private and Confidential" and addressed to the respondent under the names by which he is presently known. 9 The other modes of service ordered on 13 February 2012 included leaving a copy of the interlocutory application at 7 Maysbury Avenue Brighton, Victoria, and informing the respondent by text on a certain mobile number that the applicant had made an interlocutory application for default judgment against him and that a copy of the interlocutory application could be collected from Unit 405, 151 Raleigh Road Maribyrnong, Victoria. 10 The evidence shows that a copy of the interlocutory application was left in the mailbox at 7 Maysbury Avenue Brighton, Victoria, in a sealed envelope marked "Private and Confidential" and addressed to the respondent by his presently known names. 11 The evidence shows that on 15 February 2012 a text message was sent to the respondent in accordance with the orders made on 13 February 2012. A return text message was received shortly thereafter saying: "You send to a wrong person cause i'm not Mr constaneo". I should add that the evidence also shows that the mobile number to which the text message was sent was a contact mobile number given by the respondent in relation to his hiring of Unit 405 at the Kennards self-storage facility at Maribyrnong. Earlier substituted service pursuant to the orders made on 12 December 2011, using a text message to the mobile number, elicited no response to the text message that was sent. 12 I am satisfied that all reasonable attempts have been made to serve the respondent in accordance with the orders made on 13 February 2012. To the extent that it is necessary to do so, I will order pursuant to r 10.24(c)(ii), that the interlocutory application be taken to have been served on the respondent on 15 February 2012, being the date on which the text message was sent and apparently received. For the avoidance of doubt, I dispense with compliance with the Rules in so far as they concern the time for, or mode of service of, the interlocutory application. 13 There has been no appearance by the respondent in answer to the interlocutory application or at any other time. 14 As I have mentioned, the applicant seeks default judgment. The amended originating application seeks declarations and orders relating to the infringement of the registered trade marks. The orders sought include an order that the goods seized on 24 August 2011 be forfeited to the Commonwealth pursuant to s 137(3)(b) of the Act. In the amended originating application the applicant also seeks an order for disclosure on oath of details relating to any person who supplied to the respondent or who was concerned in the importation or sale of the goods identified in the order as "Unauthorised Product". 15 The amended originating application is supported by an amended statement of claim. The amended statement of claim includes allegations that the applicant is the owner of certain identified registered trade marks; that the respondent has imported into Australia for the purpose of sale or commercial distribution computer accessory items which bear representations of the marks; that these goods were not manufactured by or with the licence of the applicant; that the acts of importation occurred without the applicant's consent; and that the respondent threatens to engage in the pleaded conduct unless restrained by the Court. No defence has been filed to the amended statement of claim as required by r 16.32. These allegations are to be treated as admitted by the respondent under r 16.07(2). 16 In any event, I am also satisfied on the basis of the evidence contained in the affidavit of Yi Lu affirmed 7 October 2011 and the affidavit of Yi Lu affirmed 27 February 2012, both of which have been read in this application, that the respondent has infringed registered trade marks numbered 355450, 355451, 767856 and 767857. 17 I am satisfied that the respondent is in default under r 5.22 in that the respondent has failed to file a notice of address for service; has failed to file a defence; has not appeared; and, accordingly, has failed to defend the proceeding with due diligence. 18 The applicant has provided draft minutes of order. These draft minutes of order reflect the orders sought in the interlocutory application, as set out in paragraph 1 and its subparagraphs. 19 There are two matters I should mention. First, order 1.10 in the draft is an order for disclosure under oath. The applicant, for practical reasons, no longer presses that order. The second matter is that order 1.9 seeks an order for forfeiture. I have, in the course of submissions this morning, discussed with Mr Kerr, who appears for the applicant, certain modifications that should be made to that order in order to make it clear that the goods to be forfeited are those that bear the SONY and VAIO names and marks. Subject to those two comments, I am prepared to make the orders that are sought in the draft minutes, subject to various modifications being made. 20 The only order that I will make at the present time, therefore, is that the applicant is to bring in draft orders giving effect to these reasons. I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.