Summary Judgment in counterfeit dishwashing detergent case highlights need to know manufacturer
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.”
“[14] …Summary judgment is inappropriate where there is a real dispute about the relevant facts and evidence…”
“[15] The applicants’ motion for summary judgment for trademark infringement falls to be considered by reference to the Trade Marks Act 1995 (Cth) ("the 1995 Act"), the pleadings and the affidavit evidence filed by the parties. The applicants rely on the statutory monopoly granted by trade mark registration: see s 20 of the 1995 Act. Section 120(1) of the 1995 Act provides that a person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. Section 123(1) further 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. The respondents have not, however, pleaded s 123 of the 1995 Act in their Amended Defence.”
“[34] …I accept that there is power to grant leave to the applicants to rely on supplementary affidavits in support of their summary judgment motion…”
“[35] …I consider the possibility that the applicants’ proofs will fail at trial to be sufficiently remote to justify the conclusion that the first respondent has no reasonable prospects of successful defence…”
“[38] Finally, as noted above, the respondents have not pleaded reliance on s 123 of the 1995 Act in their Amended Defence. That is, they have not sought positively to assert that the counterfeit goods were not counterfeit because the marks in question were applied with the consent of the registered owner. Had they done so, then it would have been incumbent on them to make out their case: see Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490 at [72] per Tamberlin J. As things stand, even if they had relied on s 123, in the absence of evidence tending to support this assertion, there would be no reason to believe that they had any reasonable prospect of succeeding on a s 123 defence.”
So what?
The case underlines the importance of a parallel importer, or purchaser of those goods, knowing the source of that product because, as a respondent in counterfeiting proceedings, that party will be required to place evidence before the Court that either the trade marks on the products at issue were applied with the consent of the registered owner, or evidence that evidence of that nature is available. For applicants it demonstrates the efficiency with which the Federal Court will despatch a case where the respondent has no reasonable prospect of success in defending an infringement claim.
