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In the recent Federal Court case of Nokia Corporation v Liu [2009] FCA 20 (21 January 2009) the applicant (Nokia) sought damages in a situation where infringing goods had been seized by Customs and never reached the marketplace. They got ten bucks.

Nokia also sought to avoid the operation of Order 62 Rule 36A of the Federal Court Rules which under certain circumstances including when a party is awarded judgement for less than $100,000 in damages requires an award of costs to be reduced by one third. They failed. Corrs Chambers Westgarth acted for Nokia. The respondent failed to appear.

Background

In February 2008, pursuant to Section 133(2) of the Trade Marks Act 1995, a delegate of the Chief Executive Officer of Customs seized goods bearing marks that infringed various trade marks owned by Nokia (the Nokia trade marks). On 4 June 2008 the Court made orders by consent which amongst other things included an order that the respondent pay the applicant damages for infringement of the Nokia trade marks. Proceedings for the assessment of such damages were fixed for 11 December 2008.

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In Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCAFC 195 (18 December 2008) the Full Federal Court has dismissed an appeal by Polo/Lauren Company L.P. (Polo/Lauren) seeking to prevent the parallel importation of goods embroidered with their signature polo player logo. 

Parallel importation occurs where genuine goods are sourced from overseas markets at a lower price than the authorised product for sale in Australia without the authority of the local licensee. This activity has continued to increase. The limitations against parallel importation imposed by the Trade Marks Act 1995 (Cth) means that brand owners have had to rely on other intellectual property rights to protect their brands. However, this decision confirms that successful claims based on copyright are similarly now limited, and that restricting trade of genuine products by local brand owners is becoming increasingly difficult.

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In Disney Enterprises, Inc v Sondavid Pty Ltd [2008] FCA 1394 (11 September 2008), Disney sought an order pursuant to s 137(5) of the Trade Marks Act 1995 (Cth) (Act) to restrain the Customs CEO (until further order) from releasing certain goods seized by the Australian Customs Service (notified to Disney on 18 July 2008). Section 137 of the Act is within the date-driven Pt 13 scheme, the object of which 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".

Disney is the registered owner in Australia of various trade marks including MINNIE MOUSE and MICKEY MOUSE in class 25 (which includes clothing) and a mark known as the MINNIE MOUSE device in the same class. The respondent had tried to bring in a commercial consignment of 1180 tops bearing images of Minnie Mouse, the words "Original Minnie", "Original Mickey" and "© Disney". These were seized by Customs under s 133 of the Act. On the applicants giving the usual undertaking as to damages, the orders were made ex parte.

Nothing unusual there – pretty boring really – but given that the first MICKEY MOUSE trade mark application (number 71266717) was granted in the United States 80 years ago this week – on 18 September 1928 – and notwithstanding the contentious provenance of the famous character (see HERE and HERE), it is worth a quick look at the beloved rodent’s litigation pedigree, and his contribution to Australian trade marks jurisprudence, which reveals that Mickey does not mind getting the gloves off. Talk about the mouse that roared!

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The Managing IP World Intellectual Property Survey 2008, which publishes detailed rankings of the leading firms practising intellectual property in each country, has listed Nicholas Weston for the first time since the firm was founded in 2005.

The firm is ranked in two categories: for Trade Mark Prosecution in Australia and for Trade Marks Contentious in Australia. Rankings are based on surveys of clients and recommendations from clients and other practitioners.

According to Managing IP magazine:

"The World IP Survey is not simply a list of the biggest firms, or a list of those that have the biggest case load or are the oldest. Instead it is a qualitative ranking of the leading firms in each category and reveals which firms are rated by their peers for the strength of their expertise and the depth of their ability to service clients."

The IP Handbook 2008, published by Managing IP, includes full results of the survey, stating:

"Clients noted the thoroughness of the firm's paperwork and "attention to detail" ".

No firm can vote for its own inclusion or purchase a listing in the MIP World Intellectual Property Survey 2008 or the IP Handbook, which lists the leading firms in trade marks prosecution and contentious work in 65 jurisdictions. The survey is described by its publisher as “the world’s most detailed and authoritative survey of the IP market."

Details of the survey methodology can be found HERE

Survey results for Asia can be found HERE .

About Managing IP

Managing Intellectual Property is the leading international magazine for IP owners, with more than 8,000 readers across the globe. About two-thirds of readers are senior in-house counsel in multinational companies.

Published 10 times a year, Managing IP provides news, comment, data and analysis. Managing IP is part of the Euromoney Legal Media Group, with offices in Hong Kong, London and New York.

About Nicholas Weston

Founded in 2005, Nicholas Weston is small but mighty Australian law firm delivering trade marks and other commercial legal services to clients worldwide in core sectors of disputes, technology, and brands.

Each professional is a dual qualified lawyer and registered trade marks attorney. Nicholas Weston claims practical implementation of thought leadership. The firm is located on Collins Street, Melbourne in the historic Assembly Hall.

For further details contact Nick Weston or Lea Lewin.

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Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog has moved to so-called 'cloud computing' technology architecture with the adoption of the WebTMS browser-based trade mark management system. According to Nicholas Weston, this infrastructure purchase will significantly strengthen this practice area and prove a real asset to the firm.

WebTMS enables Nicholas Weston to offer clients browser-based trade marks portfolio management applications that utilise the same infrastructure powering major US and UK law firms, and US Fortune 500 corporate IP departments. A list of users can be found HERE.

Key Features of WebTMS

The following key features of WebTMS are set out in detail below and can be summarised as follows:

• the most secure, robust and advanced trade mark management and docketing system available and has been used by the world’s leading firms for over 5 years;
• real time access for Clients to the cases Nicholas Weston is handling for them with 24/7 worldwide secure access to a Client's trade mark portfolio details from any computer with an internet connection;
• foreign Agents can update the cases they are handing for Nicholas Weston;
• a repository for all trade mark and intellectual property data, with images and supporting documents;
• database links to the trade marks offices of 12 jurisdictions, for click throughs, data audits and automatic data loading;
• built in trade mark searching for the 12 online trade marks offices, with search results management;
• workflow wizards to maximize efficiency;
• designed by trade mark attorneys for trade mark attorneys, and supported by extensive user input.

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In Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2008] FCA 126 the applicants (Brother) sought an order for indemnity costs against the respondent (Dynamic Supplies) following successful trade marks infringement proceedings in Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; 73 IPR 507. See our earlier article on the Brother case HERE.

Order 23, rule 11(4) of the Federal Court Rules 1979 (Cth) provides that if an offer is made by an applicant and not accepted by a respondent, and the applicant obtains a judgment on the claim to which the offer relates which is not less favourable than the terms of the offer, then, unless the Court otherwise orders, the applicant is entitled to an order against the respondent for costs incurred in respect of the claim up to the day when the offer was made taxed on a party-party basis and after that day taxed on an indemnity basis. The exercise of the discretion requires the Court to see if the relevant offer of compromise is less favourable than the overall effect of the final relief ordered.

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Two Sydney men have been charged on summons with selling fake OMO, or more precisely, with selling goods with a falsely applied trade mark contrary to section 148(a) of the Trade Marks Act 1995 (Act) and importing goods with a falsely applied trade mark contrary to section 148(d) of the Act. They will front the Downing Centre Local Court on Tuesday 12 February 2008.

According to the Australian Federal Police press release, it will be alleged that between 22 March 2006 and 30 August 2007 about 185 tonnes of counterfeit product (washing powder and buckets) were imported into Australia.

The maximum penalty for these offences is two years imprisonment and/or a fine of up to $55,000.

Customs officers have a marvellous sense of humour about piracy. (Photo: Australian Customs Service).

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A recent decision of Tamberlin J in the Federal Court of Australia has provided some interesting insights into the legality (or otherwise) of parallel importing of trade marked goods. See Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 490

When it comes to parallel importing of trade marked goods or grey imports, a key provision in the Australian legislation is s123 of the Trade Marks Act (Cth) 1995. Section 123 provides that:

a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

Tamberlin J’s decision makes it clear that the onus is on the defendant to establish the existence of the necessary application of the trade mark or consent to the application of the trade mark by the trade mark owner. In addition, and more importantly, his obiter comments made it clear that it is not sufficient to demonstrate that another member of the trade mark owner’s corporate group applied the trade mark or consented to the relevant application.

The facts of the case are relatively straightforward. Dynamic Supplies acquired, via the United States, some printer drum units which were made by the Australian trade mark owner, Brother Industries Ltd, a Japanese company, (Brother Japan). Importantly though, Brother Japan did not place its trade mark on these printer drum units. Such products are known as ‘original equipment manufacturer’ products (OEM’s). The OEM’s acquired by Dynamic Supplies via the United States were sold in packaging using the Brother Japan trade marks and which purported to be Brother packaging. Tamberlin J found that, in fact, the packaging was counterfeit and that packaging was neither made by or with the consent of Brother Japan.

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In Chanel Limited v Kim [2007] FCA 2076 (20 December 2007) the applicants (Chanel) sought an order to restrain the Chief Executive Officer of Customs (Customs CEO) pursuant to s 137(5) of the Trade Marks Act 1995 (Cth) (Act) from releasing a consignment seized by the Customs CEO on 19 September 2007 pursuant to s 133 of the TM Act comprising 100 scarves bearing the ‘CHANEL’ trade mark or Chanel’s ‘Crossed C’s Device’ mark. The consignment was seized on the ground that, in the opinion of the Customs CEO, the scarves had applied to them a sign that was substantially identical with, or deceptively similar to, a registered trade mark.

A question of construction arose on ‘an internal inconsistency, or at least infelicity’, (para 27) in the language of s 137(5) , which states:

‘If, after 20 working days from the day on which the action was brought, there is not in force at any time an order of the court directed at the Customs CEO preventing the goods from being released, the Customs CEO must release the goods to their designated owner.’ (Emphasis added)

The Court held that the sub-section is not intended to preclude the Court from making an order preventing the Customs CEO releasing seized goods even after the expiration of the 20 day period and that an order preventing release of the goods may be made and come into force ‘at any time’ after the expiration of the 20 day period.

So what?

Be aware that the Customs seizure process is date driven: an action for infringement must be brought within 10 days of receiving a notice from the Customs CEO, or -- if an extension is applied for before the end of the notified period -- within any extended period granted by the Customs CEO. An order should then be sought to be granted within the 20 day period after the proceedings issue.

As Justice Sackville pointed out (at para 28), the usefulness of a Court order after the expiration of the 20 day period depends upon the Customs CEO not having complied with his or her statutory duty to release the goods in a timely fashion. No point seeking an order after the goods are released. The case ended happily for Chanel this time, but only a thrill-seeker would wait until after the 20 day period expires for an order to be granted.

Oh my! Is that the time already? Happy New Year.

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In PZ Cussons (International) Limited v Rosa Dora Imports Pty Ltd [2007] FCA 1642 the first respondent Rosa Dora Imports Pty Ltd (Rosa Dora), had been selling and supplying alleged counterfeit dishwashing detergent products imported from Thailand bearing the applicants registered trade marks "Morning Fresh" and "Cussons" without the authorisation or approval of the applicants, PZ Cussons Australia Pty Ltd (PZ Cussons) and PZ Cussons (International) Limited (PZ Cussons International).

The respondents did not admit their use of the trade marks was not licensed, authorised, or approved by PZ Cussons and they placed no evidence before the Court that the goods were not counterfeit, nor that they had any such evidence available to them.

In granting summary judgment to the applicants The Federal Court found that the products were not made by PZ Cussons Thailand, and briefly summarised the operation of Section 31A of the Federal Court of Australia Act 1976 (Cth). Extracts [with paragraph numbers] are as follows (per Kenny, J.):

“[13] …under s 31A, in order to grant summary judgment, I must be satisfied that the respondents have no reasonable prospect of success in defending the infringement claim. As s 31A(3) makes clear, this does not mean that I must be satisfied that their defence is hopeless or bound to fail.”

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In a media release on 7 October, 2007, Trade Minister Warren Truss announced that Australia has decided to participate - along with Mexico, Japan and the EC - as a third party in the World Trade Organisation (WTO) dispute brought by the USA against China on the protection and enforcement of intellectual property rights.

The press release is available here. Details of the dispute can be found here. The Chinese Government's response to the US decision to bring the case in the first place can be viewed here.

According to the Minister “the case raised important commercial and systemic issues in relation to WTO rules on intellectual property protection, including the meaning of counterfeiting or piracy 'on a commercial scale’ ”. He added that the action does not mean that Australia is “taking sides”. He may have said that because mainland China recently became Australia's biggest trading partner (overtaking Japan). But he may not have meant it, because a finding that China has failed to comply with WTO rules would make available to Australia WTO sanctioned retaliation measures.

On the Lawfont blog, Kim Weatherall says the case is about technical compliance with the letter of TRIPS rather than improving enforcement and rather wonders why Australia got involved if not simply in uncritical support of the US. Her article can be viewed here.  

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that Professor Mark Davison has joined the firm as a contributor to the Australian Trade Marks Law Blog.

Mark is currently Associate Dean (Undergraduate Studies) at Australia’s Monash University, and the author of several major works relating to intellectual property and competition law. He is the co-author of the third edition of Shanahan’s Australian Law of Trade Mark and Passing Off, the leading reference work on Australian trade mark law and has written The Legal Protection of Databases, a book published in the intellectual property series of Cambridge University Press. He has also published two casebooks dealing with competition law and aspects of consumer protection. In addition to his doctorate on sui generis protection of databases, he has a diploma in Indonesian language and studies and he is the winner of three Australian Research Council large grants.

Besides teaching Contract Law, Intellectual Property, Trade Marks and Commercial Designations and Copyright in the postgraduate and undergraduate courses at Monash, he has taught in various projects in Thailand, Vietnam and Indonesia.

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On 25 September, 2007, Nicholas Weston Principal Nick Weston was appointed to the International Trademark Association’s (INTA) Law Firm Outreach Sub-Committee of the Alternative Dispute Resolution Committee (ADR) for the 2008 – 2009 committee term.

This year, 2,300 volunteers applied to serve on INTA committees. The INTA Law Firm Outreach Sub-Committee promotes the use of ADR and the INTA Panel of Neutrals to law firms, including INTA Associate member law firms.

INTA describes itself as “a not-for-profit membership association founded in 1878 of more than 5,000 trade mark owners and professionals, from more than 190 countries, dedicated to the support and advancement of trade marks and related intellectual property as elements of fair and effective national and international commerce.”

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On 29 October, 2007, Nicholas Weston, Lawyers & Trade Marks Attorneys celebrated the launch of the Australian Trade Marks Law Blog. The initiative is designed to complement the high-quality intellectual property services and high level of service the firm provides to its clients.

Since its inception in February, 2005, Nicholas Weston has focussed on trade marks as a core practice area. Nicholas Weston is an unstuffy Australian law firm delivering trade mark and other commercial legal services to clients worldwide in our core sectors of fashion, technology and U.S. law firms. Each member of the firm holds dual qualifications as a lawyer and also as a registered trade marks attorney. The firm claims practical implementation of thought leadership. In mid 2007, the firm re-located from its office in the Paris end of Collins Street, Melbourne to the historic Assembly Hall, in the heart of Collins Street, Melbourne. Details of the firm’s trade marks services can be found here. Details of the firm’s commercial services can be found here.

The Australian Trade Marks Law Blog is designed to communicate with U.S. law firms and others seeking a reliable source of information and commentary on Australian Trade Marks. The platypus is adopted as our masthead because the platypus -- like Australian Trade Marks Law (and the Australian version of English) -- can seem odd at first encounter. It is efficiently adapted to its environment. It looks like you could pat it. But it has a venomous spur on its hind legs that can cause excruciating pain. Nicholas Weston publishes the Australian Trade Marks Law Blog as a useful resource.