FEDERAL COURT OF AUSTRALIA

Sony Computer Entertainment Australia Pty Limited v Yansen [2002] FCA 1000

TRADE MARKS – sale and importation of unauthorised copies of computer games – whether infringement of trade marks – Trade Marks Act 1995 (Cth)

Trade Marks Act 1995 (Cth) s 8, 120, 120(1),131, 132, 133, 133(2), 134, 131(1), 137(3)

Customs Act 1901 (Cth) s 68

Federal Court Rules O 7 r 9, O 32 r 2

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED & ANOR v THEODORE YANSEN

N 1486 OF 2001

HELY J

30 JULY 2002

SYDNEY

THE COURT DECLARES THAT:

1.         The Respondent has infringed the second applicant’s Registered Trade Mark No 642678.

2.                  The Respondent has infringed the second applicant’s Registered Trade Mark No 642679.

THE COURT ORDERS THAT:

1.                  In the absence of the respondent, the trial proceed generally;

2.                  the Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s Registered Trade Mark No. 642678 (the PlayStation Trade Mark) by:

(a)                without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PlayStation Trade Mark or any mark substantially identical with or deceptively similar to the PlayStation Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation Trade Mark is otherwise used;

(b)               without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PlayStation Trade Mark or any mark substantially identical with or deceptively similar to the PlayStation Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation Trade Mark is otherwise used;

(c)                without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in sub-paragraph (a) or (b).

3.         The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s Registered Trade Mark No. 642679 (the PS Trade Mark) by:

(a)        without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PS Trade Mark or any mark substantially identical with or deceptively similar to the PS Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PS Trade Mark is otherwise used;

(b)               without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PS Trade Mark or any mark substantially identical with or deceptively similar to the PS Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PS Trade Mark is otherwise used;

(c)                without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in sub-paragraph (a) or (b).

4.                  The 74 CD-ROMs which use the PlayStation Trade Mark and the PS Trade Mark and which were imported by the Respondent and seized by the Customs Service on 5 October 2001 be forfeited to the Commonwealth.

5.                  The respondent pay the applicants’ costs of the proceedings.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     The applicants commenced this proceeding by Application and Statement of Claim filed on 2 November 2001.  The second applicant, a company incorporated in Japan, is the manufacturer and a distributor of the “Sony PlayStation” computer game console, and the owner of Australian Registered Trade Marks numbers 642678 and 642679 (“the trade marks”).  The trade marks are registered in Class 9 in relation to computer game players combined with CD-ROM drives and software for such devices. The first applicant is the distributor of the Sony PlayStation computer game console in Australia and the authorised user of the trade marks within the meaning of ss 8 and 132 of the Trade Marks Act 1995 (Cth) (“the Trade Marks Act”).

2                     The proceeding concerns the alleged infringement by the respondent of the trade marks by the sale, and by the importation into Australia for the purpose of sale or commercial distribution, of CD-ROMs containing software for use with computer game players which bear or in which are stored electronically representations of marks that are identical with, or substantially identical with, or deceptively similar to, the trade marks. The applicants seek declarations of infringement, injunctions preventing future infringement and an order that the imported CD-ROMS be forfeited to the Commonwealth.

3                     The declarations and other relief sought by the applicants in the pleadings for the alleged contravention of provisions of the Fair Trading Act 1987 (WA) have not been pursued.

4                     On 27 November 2001 I made an order restraining the Chief Executive Officer of Customs from releasing to the designated owner the 74 CD-ROMs which use the trade marks and which were imported by the respondent and seized by the Australian Customs Service (“the Customs Service”) on 5 October 2001.

5                     On 6 June 2002 I made orders pursuant to O 7 r 9 of the Federal Court Rules for substituted service of the Application and Statement of Claim by placement of an advertisement in two consecutive editions of national daily newspapers of Australia and Indonesia.  By operation of those orders, the respondent is now taken to have been served with the Application and Statement of Claim on 28 July 2002.

6                     There has been no appearance by the respondent on any of the occasions on which the matter has come before the Court.  No Notice of Appearance and no defence has been filed by the respondent.

7                     I am satisfied that the respondent has elected not to appear and not to defend the proceeding.  I am also satisfied that it is appropriate to proceed with the trial generally in the absence of the respondent pursuant to O 32 r 2 of the Federal Court Rules.

The Trade Marks Act 1995

8                     Section 120 of the Trade Marks 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.”

9                     Part 13 of the Trade Marks Act is concerned with the importation of goods that infringe Australian trade marks. Section 131 provides:

"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.”

10                  Section 132 provides that the registered owner or an authorised user of a trade mark may lodge with the CEO of the Customs Service a notice of objection to importation in relation to goods that infringe those marks.  Section 133(2) provides that the Customs Service must seize goods that, in the opinion of the Customs Service, have applied to them or in relation to them a sign that is substantially identical with, or deceptively similar to, a registered trade mark the subject of a notice of objection, unless the Customs Service has no reasonable grounds to believe that the registered trade mark is infringed by the importation of the goods.

11                  Upon seizure of the goods, the Customs Service must as soon as practicable give notice to both the “designated owner” of the goods and the objector: s 134. “ Designated owner” is defined in s 6 as the person identified as the owner of the goods on the entry made in relation to the goods under s 68 of the Customs Act 1901 (Cth).

12                  Section 137(1) provides that an objector may bring an action for infringement of a notified trade mark in respect of the seized goods within a specified period, in default of which the seized goods are to be released to the “designated owner”.

13                  Section 137(3) provides:

“In addition to any relief that the court may grant apart from this section, the court may:

(a)       …………

(b)       order that the seized goods be forfeited to the Commonwealth.”

The evidence

14                  The evidence relied upon by the applicants in this proceeding consists of the affidavits of:

·                    Andrew Patrick O’Keefe sworn 23 November 2001;

·                    Jo-Anne Wirth sworn - 23 November 2001;

·                    Nicholas Andrew Foster sworn 23 November 2001;

·                    Hugh William FitzSimons sworn 26 November 2001; 4 February 2002; 3 June 2002 and 19 July 2002.

·                    Geoff Davis sworn 26 November 2001 and 15 May 2002;

·                    Ian McNulty sworn 31 May 2002;

·                    Andrew Ziebath sworn 31 May 2002;

·                    Paul Alexander Currie sworn 31 May 2002; and

·                    Fiona Branscombe sworn 3 June 2002.

15                  I am satisfied from the evidence that the applicants have established the facts alleged in paras 1–14 of the Statement of Claim. In particular:

·        the second applicant is the manufacturer and distributor of the Sony PlayStation computer game console and the registered owner of the trade marks: O’Keefe, par 9 and Ex AOK 1, pp 12-23;

·        the first applicant is the Australian subsidiary of the second applicant, the distributor of the Sony PlayStation computer game console in Australia and an authorised user, within the meaning of s 8 of the Trade Marks Act, of the trade marks: O’Keefe, par 9 and AOK 1, p 28; Foster, paras 3-10;

·        the first applicant lodged with the Customs Service a Notice of Objection under s 132 of the Trade Marks Act in relation to the importation of goods which have applied to them or in relation to them the trade marks, among other marks: O’Keefe, paras 2-8 and Exs AOK 1 – AOK 5.  The Customs Service accepted the most recent notice and it remained in force for two years from 22 October 1999: O’Keefe, AOK 4, p 35;

·        on or about 10 August 2001 the respondent sold to an agent of the applicants four CD-ROMs containing software for use with computer game players which bear or in which are stored electronically representations of marks that are identical with, or substantially identical with, or deceptively similar to, the trade marks: Ziebath, paras 2-5; Currie, paras 2-6; Branscombe, paras 1-7; FitzSimons (3 June 2002), paras 2-5.  The respondent thereby used one or more of the trade marks in relation to goods in respect of which the trade mark is registered;

·        on or about 12 October 2001 the respondent sold to an agent of the applicants seven CD-ROMs containing software for use with computer game players which bear or in which are stored electronically representations of marks that are identical with, or substantially identical with, or deceptively similar to, the trade marks: Ziebath, paras 6-10; Currie, paras 2-6; Branscombe, paras 1-7; FitzSimons (3 June 2002), paras 2-5.  The respondent thereby used one or more of the trade marks in relation to goods in respect of which the trade mark is registered;

·        the CD-ROMs supplied by the respondent were not manufactured by or with the licence of the second applicant: Foster, par 11;

·        on or about 5 October 2001, the respondent imported into Australia 74 CD-ROMs containing software for use with computer game players which bear or in which are stored electronically representations of marks that are identical with, or substantially identical with, or deceptively similar to, the trade marks: O’Keefe, paras 12-19. I am satisfied that the imported CD-ROMs were imported for the purpose of sale or commercial distribution by the respondent; and

·        the manufacture of the 74 CD-ROMs imported into Australia was not authorised by the second applicant: Wirth, par 15.

16                  I find that the respondent’s sale and importation of CD-ROMs constitutes an infringement of the trade marks by use as a trade mark of signs that are substantially identical with, or deceptively similar to, the trade marks in relation to goods in respect of which they are registered: s 120(1) Trade Marks Act.

17                  Accordingly, it is appropriate to make declarations of infringement of trade marks, orders restraining future infringement and an order that the seized CD-ROMs be forfeited to the Commonwealth.

Relief

18                  The Court declares that:

1.         The Respondent has infringed the second applicant’s Registered Trade Mark No 642678.

2.         The Respondent has infringed the second applicant’s Registered Trade Mark No 642679.

The Court orders that:

1.                  In the absence of the respondent, the trial proceed generally;

2.                  the Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s Registered Trade Mark No. 642678 (the PlayStation Trade Mark) by:

(d)               without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PlayStation Trade Mark or any mark substantially identical with or deceptively similar to the PlayStation Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation Trade Mark is otherwise used;

(e)                without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PlayStation Trade Mark or any mark substantially identical with or deceptively similar to the PlayStation Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation Trade Mark is otherwise used;

(f)                 without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in sub-paragraph (a) or (b).

3.         The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s Registered Trade Mark No. 642679 (the PS Trade Mark) by:

            (a)        without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PS Trade Mark or any mark substantially identical with or deceptively similar to the PS Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PS Trade Mark is otherwise used;

(d)               without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PS Trade Mark or any mark substantially identical with or deceptively similar to the PS Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PS Trade Mark is otherwise used;

(e)                without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in sub-paragraph (a) or (b).

4.                  The 74 CD-ROMs which use the PlayStation Trade Mark and the PS Trade Mark and which were imported by the Respondent and seized by the Customs Service on 5 October 2001 be forfeited to the Commonwealth.

5.                  The respondent pay the applicants’ costs of the proceedings.

Associate:

Dated:              30 July 2002