FEDERAL COURT OF AUSTRALIA

Nokia Corporation v Truong

[2005] FCA 1141

EVIDENCE – admissibility of opinion – evidence of counterfeit goods.

TRADEMARKS – infringement of trademarks – whether accessories or spare parts covered by specification – whether adding material is, or altering, at trade mark avoids infringement – whether the respondents had an arguable defence.

PRACTICE AND PROCEDURE – application for summary judgment – trade mark infringement – no real or arguable defence or triable issue.

Evidence Act 1995 (Cth) ss 76, 78, 79

Federal Court Rules (Cth) O 13 r 2, O 20 r 1

Trade Marks Act 1995 (Cth) ss 120(1), 120(2)

Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 followed

De Cordova v Vick Chemical Co (1951) 68 RPC 103 considered

Dey v Victorian Railways Commissioners (1949) 78 CLR 62 applied

Fancourt & Anor v Mercantile Credits Limited (1983) 154 CLR 87 applied

Fendi Adele SrL and Anor v Friedland (2003) AIPC 91-836 considered

General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 applied

Geoffrey Inc & Ord v Luik & Anor (1997) 38 IPR 555 followed

Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 followed

Louis Vuitton Malletier SA v Knierum [2004] FCA 1584 distinguished

Makita v Sprowles (2001) 52 NSWLR 705 followed

Nokia Corporation v Mai (2003) 59 IPR 413 considered

Norwich Pharmacal Co v Commissioners of Customs and Excise [1972] RPC 743 cited

Polaroid Corporation v Sole N Pty Ltd (1981) 1 NSWLR 491 followed

R v Leung and Anor (1999) 47 NSWLR 405 followed

Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 followed

Southern Cross Refrigerating Co v Toowoomba Foundry Ltd (1954) 91 CLR 592 followed

NOKIA CORPORATION v DAVID TRUONG & ORS

V389 of 2004

CRENNAN J

19 AUGUST 2005

MELBOURNE

THE COURT ORDERS THAT:

1.      Leave be granted to the applicant to amend its amended statement of claim in the form of the further amended statement of claim dated 17 August 2005.

2.      The applicant pay the respondents’ costs of, occasioned by and thrown away by the amendment.

3.      There be summary judgment pursuant to O 20 r1 of the Federal Court Rules in favour of the applicant and against the first and ninth respondents in the terms of the Declarations and orders hereafter set out.

THE COURT DECLARES THAT:

4.      The use by the first and ninth respondents and each of them, whether by themselves, its officers (in the case of the ninth respondent), their employees or agents or otherwise howsoever of any of the following Australian registered trade marks:

(a)      Australian Registered Trade Mark No. 458364 for NOKIA in class 9;

(b)     Australian Registered Trade Mark No. 490781 for NOKIA AND DEVICE in class 9;

(c)      Australian Registered Trade Mark No. 808735 for NOKIA in class 16;

(d)     Australian Registered Trade Mark No. 867057 for NOKIA in class 9,

(together referred to as the ‘Nokia Trade Marks’) and in particular from using the Nokia Trade Marks 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:

(e) any of the goods in respect of which the Nokia Trade Marks are registered (the ‘Nokia Registered Goods’); or

(f)                 goods of the same description as the Nokia Registered Goods,

not manufactured or provided by or under the authority of the applicant or by any other means whatsoever constitutes an infringement of the Nokia Trade Marks.

THE COURT FURTHER ORDERS THAT:

5. The first and ninth respondents and each of them be restrained, whether by themselves, its officers (in the case of the ninth respondent), their employees or agents or otherwise howsoever from infringing the Nokia Trade Marks or any of them and in particular from using any of the Nokia Trade Marks 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:

(a) any of the Nokia Registered Goods; or

(b) goods of the same description as any of the Nokia Registered Goods,

not manufactured or provided by or under the authority of the applicant.

6.        Within seven (7) days of the date of these orders, the first and ninth respondents and each of them deliver up on oath to the applicant or its duly authorised agent for destruction under supervision all goods in the possession, power, custody or control of the first and ninth respondents or either of them, its officers (in the case of the ninth respondent), their employees or agents or otherwise howsoever to which any of the Nokia Trade Marks 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 has been applied without the licence or authority of the applicant.

7.        Within seven (7) days of the date of these orders, the first and ninth respondents and each of them deliver up on oath to the applicant or its duly authorised agent for destruction under supervision all catalogues, price lists, brochures and other documents and materials, including materials which are or which are capable of being stored, generated or transmitted via any electronic media in the possession, power, custody or control of the first and ninth respondents or either of them, its officers (in the case of the ninth respondent), their employees or agents or otherwise howsoever bearing any of the Nokia Trade Marks 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 without the licence or authority of the applicant.

8.        The first and ninth respondents and each of them make discovery verified by affidavit to the applicant within twenty-eight (28) days of the making of these orders in respect of all acquisitions and/or purchases and sales and/or disposals by each of them or on their behalf of all items bearing the Nokia Trade Marks and any of them or any name, word, sign, mark or device which is substantially identical with or deceptively similar to any one or more of the Nokia Trade Marks.

9.        The first and ninth respondents and each of them pay the applicant damages for infringement of the Nokia Trade Marks, to be assessed together with interest thereon, or, at the option of the applicant, the ninth respondent account for the profits made by it by the said infringements and pay the applicant the amount found to be due on the taking of such account, together with interest thereon.

10.    The first and ninth respondents pay the applicant’s costs of the proceeding to date (other than those paid pursuant to the order of Crennan J on 27 May 2005) which relate to them.

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

REASONS FOR JUDGMENT

1                     By notice of motion dated 23 February 2005 the applicant moved for summary judgment under O 20 r 1 of the Federal Court Rules (‘the Rules’) in respect of liability against the first and ninth respondents in this matter. Consent orders have already been made in relation to the other respondents and on motion dated 20 May 2004 this Court granted summary judgment against the eighth respondent. Further orders are only required in respect of those respondents for hearings in relation to quantum. The applicant is now only proceeding for summary judgment against the first and ninth respondents, Mr David Truong and Kathay Pty Ltd (‘Kathay’).

2                     Leave was sought by the applicant, pursuant to O 13 r 2 of the Rules to further amend the amended statement of claim to make it plain that the first respondent has been sued in respect of alleged infringements because he has been the sole registered director and guiding mind of the ninth respondent and/or participated in the management of the ninth respondent and/or its business. As this amendment facilitates determination of the real questions in controversy, leave to amend has been granted on the usual terms.

Application for summary judgment

3                     O 20 r 1 of the Rules provides that:

‘ (1) Where, in relation to the whole or any part of the applicant’s claim for relief, there is evidence of the facts on which the claim or part is based, and:

(a)    there is evidence given by the applicant or by some responsible person that, in the belief of the person giving the evidence, the respondent has no defence to the claim or part; or

(b)    the respondent’s defence discloses no answer to the applicant’s claim or part;

the applicant may move on notice for such judgment for the applicant on that claim or part and the Court may pronounce such judgment and make such orders as the nature of the case requires.’

4                     The authorities make it clear that the jurisdiction to give summary judgment ought to be exercised with caution: General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129. Before the applicant can succeed on its summary judgment application the Court must be satisfied that the respondents’ have no arguable defence to the applicant’s claim: see Dey v Victorian Railways Commissioners (1949) 78 CLR 62 at 91; General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129-130; Geoffrey Inc & Ord v Luik & Anor (1997) 38 IPR 555 at 563, 565.

5                     Drummond J noted in Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 at 414:

‘It follows that, from the existence within the procedures of this court of the case management system, that it is the text of O 20, r 1 which must govern the outcome of the present application: there is no justification for importing into the Federal Court rule all the detailed restrictions that the cases identify as applicable to the traditional summary judgment rules. But O 20 is not intended to provide an alternative to trial as the ordinary method of resolving litigation in the court: see Bell v Clare (1989) 23 FCR 274 at 280. Its function is limited to providing an expeditious means of resolving litigation where the applicant can clearly demonstrate that there is no real defence to particular claims made by it.’

Applicant’s claim

6                     The applicant, Nokia, is a company incorporated in Finland and the registered owner of the following four Australian trade marks in respect of goods that mainly relate to telecommunications apparatus and instruments (together referred to as ‘the Nokia Trade Marks’):

(a)                Australian Registered Trade Mark No. 458364 for NOKIA in class 9 in respect of the following relevant specification of goods:

‘. . . electrical and telecommunications apparatus and instruments; apparatus for the recording, transmission or reproduction of sound or images;…all included in class 9”;

(b)               Australian Registered Trade Mark No. 490781 for NOKIA AND DEVICE in class 9 in respect of the following relevant specification of goods:

‘ . . . electrical and telecommunications apparatus and instruments; apparatus for the recording, transmission or reproduction of sound or images; . . . all included in class 9’;

(c)                Australian Registered Trade Mark No. 808735 for NOKIA in class 16 in respect of the following relevant specification of goods:

‘Brochures, catalogues, printed matter, books, magazines, calendars, stationery, newsletters, pamphlets, leaflets, directories and manuals’;

(d)               Registered Trade Mark No. 867057 for NOKIA in classes 9, 18, 38, 41 and 42 in respect of the following relevant specification of goods for class 9:

‘Apparatus for recording, storing, transmission, receiving or reproducing of…sound…transmission equipment for use in communications…telephones…housings or casings or covers, clips…holders…headsets, handsfree devices,…accessories and spare parts for all aforesaid goods; all included in class 9.’

The argument in respect of Trade Mark No. 867057 was effectively confined to the class 9 registration.

7                     By its application and further amended statement of claim Nokia alleges that the first and ninth respondents have, without licence or authority, 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.

8                     In support of its application for summary judgment Nokia relies on the affidavits of Luke Andrew Merrick sworn on 20 May 2004, 1 July 2004, 23 February 2005 and 1 August 2005, Houng Nguyen sworn on 2 June 2004 and 11 March 2005, John Clifton Ramsden sworn on 2 June 2004, Kenneth James Taylor sworn on 7 June 2004, 11 March 2005 and 29 July 2005 and Ying Li Lian sworn on 16 August 2005 (and the exhibits accompanying these affidavits). In opposition, the respondents’ rely on the affidavit of David Truong sworn on 4 June 2005.

Applicant’s evidence

9                     Exhibited to Mr Merrick’s affidavit of 20 May 2004 were certified copies of the relevant Certificates of Trade Mark Registration. As required by O 20 r 1, Mr Merrick deposed on 23 February 2005 that he did not believe that the respondents’ had any defence to the allegations made by Nokia in this proceeding.

10                  According to Ms Nguyen’s affidavit of 2 June 2004, on or about 15 April 2002 she went to a retail store located at 227 Victoria Street, Abbotsford (‘the Abbotsford premises’) and purchased one red mobile phone neck strap bearing the wordNOKIA. The neck strap was attached to a handsfree kit exhibited to Ms Nguyen’s affidavit, along with a receipt for the purchase of this item, which read as follows:

‘Original Tax Invoice/Statement 78

Date 15/04/02

To Kate

From SPEEDY LINK

1 Handsfree with string 12.50

Total 12.50’

11                  Ms Nguyen was also provided with a business card, which relevantly stated:

‘SPEEDY LINK

COMMUNICATIONS

MOBILE PHONES & ACCESSORIES

Melbourne Office

227 Victoria Street

Abbotsford Vic. 3067

Tel: +61-3 9425 9188

Fax: +61-3 9425 9199 . . .’

12                  A Geelong office address and postal address were also stated on the business card.

13                  Ms Nguyen swore a further affidavit on 11 March 2005 which states that she went to the Abbotsford premises again on or about 26 February 2005 and purchased two mobile phone covers, both of which bore the word NOKIA on them. Ms Nguyen was given another business card on this occasion, which was the same as the one outlined above, except that it started as follows:

‘SPEEDY LINK

COMMUNICATIONS

WHOLESALE – IMPORT/EXPORT

MOBILE PHONE, ACCESSORIES & PARTS

www.speedylink.com.au . . .’

14                  Mr Ramsden’s affidavit of 2 June 2004 states that he went to the Abbotsford premises on or about 13 May 2003 and observed in excess of 50 mobile phone covers there bearing the trademark NOKIA being displayed and offered for sale. Mr Ramsden selected and purchased two mobile phone covers, both of which had the word NOKIA on them in which the top and bottom of the ‘O’ was rubbed out, so that the ‘O’ is reduced to being like two rounded brackets separated by a small space (referred to hereinafter as a ‘broken O’). He was provided with a receipt, that was exhibited to his affidavit (along with the phone covers), which relevantly stated:

‘Original Tax Invoice/Statement 67

Date 13/05/03

To John

From Speedy…

. . . 2 x HN08210L8310CK 20

Total 55’

15                  Mr Ramsden states that he attended the Abbotsford premises again on or about 24 September 2003. On this day he observed approximately 20 mobile phone covers bearing the trademark NOKIA being displayed and offered for sale. Mr Ramsden purchased two more phone covers that bore the word NOKIA with a ‘broken O’ and was not provided with a receipt. Mr Ramsden was provided with two business cards identical to the ones given to Ms Nguyen on occasions he visited the Abbotsford premises. He received one of each type of card given to Ms Nguyen (as detailed in paragraphs 11–13).

16                  Mr Taylor’s affidavit of 7 June 2004 outlines his experience in identifying counterfeit Nokia products. This experience has been gained as a result of being retained by the applicant to investigate alleged infringements of its intellectual property in Australia since August 2001. During this period Mr Taylor he has also undertaken several training courses conducted by the applicant to familiarise him with its products. Mr Taylor’s evidence was that items bought by Ms Nguyen on 15 April 2002 and Mr Ramsden on 13 May 2003 and 24 September 2003 were counterfeit (in the sense that the Nokia Trade Marks had not been affixed with Nokia’s authority, knowledge or consent and the goods has not been manufactured by or under Nokia’s authority). Specifically, Mr Taylor indicates that, among other indicators, the neck strap Ms Nguyen bought cannot be genuine because the applicant does not distribute neck straps with the word NOKIA on them to the public and that the phone covers bought by Mr Ramsden are not genuine because the applicant does not depict NOKIA with a ‘broken O’.

17                  Mr Taylor further deposed that on 7 November 2003 he went to the Abbotsford premises, where he selected and purchased 26 mobile phone covers bearing the trade mark NOKIA. He goes on to state that these covers were counterfeit. Mr Taylor indicates that some of the phone covers are not genuine because the word NOKIA has a ‘broken O’ and that the other covers purchased on the same day were not genuine because the descriptor ‘For’ appears near the top left hand side of the phone cover and Nokia never depicts its marks in this way. The receipt for these covers relevantly read as follows:

‘ORDER FORM

TEL: 03 94259188 FAX: 03 94259199 EMAIL: speedylink@ains.net.au

SALE PERSON: DATE: /11/03…

…SUBTOTAL125’

18                  In his affidavit of 11 March 2005 Mr Taylor also states that he has examined the mobile phone covers purchased by Ms Nguyen on 26 February 2005 (referred to in her affidavit of 11 March 2005) and considers them to be counterfeit.

19                  In response to the respondents’ outline of submissions, the applicant’s filed three further affidavits. The first was another affidavit of Mr Taylor, dated 29 July 2005, which confirms that Mr Merrick gave Mr Taylor a copy of the Practice Direction on Guidelines for Expert Witnesses in Proceedings in the Federal Court of Australia (‘the Guidelines’) and that he complied with the Guidelines in his investigations for the purpose of this proceeding. Mr Taylor also deposes that he did not receive any written or oral instructions from the applicant or the applicant’s solicitors in relation to the identification of products in this proceeding as counterfeit, other than those which form his general retainer with the applicant.

20                  The second affidavit was that of Mr Merrick, dated 1 August 2005. It relates to the respondents’ submission that neck straps cannot be considered ‘accessories’ in class 9 and the respondents’ attack on the admissibility of Mr Taylor’s evidence. Mr Merrick deposed that he has searched the Trade Marks Register and located several trademarks in class 9 which cover ‘parts and accessories’ for mobile phones. Mr Merrick also exhibited to his affidavit relevant dictionary entries. Accessory is defined in The Macquarie Dictionary, 3^rd edn, A Delbridge et al., The Macquarie Library Pty Ltd, Sydney, 1999 to include ‘a subordinate part or object; something added or attached for convenience’. The New Shorter Oxford Dictionary, ed L Brown, Oxford University Press, Oxford, 1993 defines the word as follows: ‘an additional or subordinate thing; an adjunct, an accompaniment; a minor fitting or attachment . . .’.

21                  In relation to Mr Taylor’s evidence, Mr Merrick indicates that he has been involved in many matters in which a person trained to identify the indicia of genuine products examines the allegedly counterfeit product and then provides evidence of the features of the product which do not match the features of the genuine product and that this type of evidence is often accepted by the Court. By way of example, Mr Merrick refers to Nokia Corporation v Mai (2003) 59 IPR 413, where Kenny J granted summary judgment in favour of Nokia Corporation based on evidence provided by Mr Taylor and his associate that the allegedly infringing items were counterfeit. Kenny J found (at paragraph 11) that Mr Taylor was ‘…qualified to identify counterfeit Nokia products’ and accepted his evidence in its entirety. Reference was also made to Fendi Adele SrL and Anor v Friedland (2003) AIPC 91-836 in which Goldberg J relied on uncontested evidence that items were counterfeit from Ms Tracy-Anne Ford, store manager of a Louis Vuitton boutique in Melbourne. Ms Ford had experience of the Louis Vuitton products and their method and style of manufacture through her work and she deposed that a handbag bearing the Louis Vuitton trade mark was counterfeit. Her opinion was based on the method and style of manufacture of the handbag.

22                  Ying Li Lian’s affidavit was sworn in Singapore on 16 August 2005. Ms Lian gave evidence that she is employed by Nokia Pte Ltd, a subsidiary of the applicant, as the Intellectual Property Rights Enforcement Manager, Brand protection portfolio for the Asia Pacific Region and that in order to perform this role she has had regular training by the applicant in identifying counterfeit Nokia products. Ms Lian confirms that Mr Taylor is authorised by the applicant to identify counterfeit Nokia products and that she has personally trained Mr Taylor to do so, by way of face-to-face training sessions in Australia and regular telephone advice. Ms Lian also deposes that she has read Mr Taylor’s affidavit of 7 June 2004 and all of the affidavits referred to in that affidavit and that she agrees with Mr Taylor’s conclusions that the trap purchase goods were counterfeit. In particular, she confirms that the applicant does not depict the NOKIA mark with the word ‘For’ in front of it, or with a ‘broken O’ and that Nokia does not manufacture or authorise any third party to use the NOKIA trade mark on neck straps for distribution to the public. Thus, Ms Lian corroborated Mr Taylor’s account of relevant facts in respect of Nokia’s use of its trade marks. These facts formed part of the factual substratum upon which his opinions were based about the counterfeit nature of the respondents’ goods.

Respondents’ evidence

23                  In an affidavit sworn on 4 June 2005, Mr Truong deposed that he has been the sole director of the ninth respondent, Kathay, since 31 August 2000. Mr Truong notes that Kathay was registered on 7 November 1996 and deregistered from 15 December 2002 to 4 May 2004 (this is also deposed to in Mr Merrick’s affidavits of 20 May 2004 and 1 July 2004). According to Mr Troung, Kathay has conducted its business of selling mobile phones and mobile phone accessories under the business name of “Speedy Link Communications” since 2001. The ninth respondent is the registered proprietor of this business name.

24                  Mr Troung admits (at paragraph 9 of his affidavit) that Kathay sells mobile phone neck straps bearing the word NOKIA and mobile phone covers bearing the words ‘For’ NOKIA and NOKIA with a ‘broken O’, which were received from an overseas supplier. He deposes that these goods were sold on a consignment-like basis or given away with mobile phone purchases.

25                  Mr Troung also admits (at paragraph 11 of his affidavit) that he usually orders replacement stock for Kathay about twice a month from its suppliers in Hong Kong and China. One of the main suppliers of these goods is said to be Elida Communication in China, which company or entity Mr Troung believes may have sent the allegedly infringing covers and neck straps to Australia.

26                  Mr Troung indicates that Kathay has standing instructions with its suppliers and stock is sent to Australia in accordance with these instructions. However, if there is a particular shortage of stock then Mr Truong makes a specific request for further stock from the suppliers. Mr Truong deposes that he does not believe a specific request was made for any of the allegedly infringing goods.

Summary judgment

27                  Under s 120 of the Trade Marks Act 1995 (Cth) (‘the Act’) a trade mark will be infringed where a mark which is ‘substantially identical with, or deceptively similar to’ a registered trade mark is in relation to the same goods as the registered goods. This requires consideration of whether the use complained of is ‘use by the alleged infringer as a trade mark’ and, as part of this inquiry, the ‘purpose and nature of the impugned use’ should be considered: see Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426 per Kitto J, as quoted in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at347. It is clear from both the trap purchase evidence and admissions made by the first respondent that the respondents’ use of the allegedly infringing marks is use of the purposes of trade.

28                  In its submissions in relation to trade mark infringement the applicant argued that the trade marks used by the respondents’ can be categorised into 3 different groups, namely:

(a)                where the word NOKIA is used, which is identical to Nokia’s Trade Marks (as on the neck strap purchased by Ms Nguyen);

(b)               where the trade mark used is identical to Nokia’s Trade Marks, except that the word NOKIA has a ‘broken O’ (as on some of the phone covers purchased by Mr Ramsden and Mr Taylor); and

(c)                where the word NOKIA is used, but the descriptor ‘For’ also appears near the top left hand side of the phone cover (as on some of the phone covers purchased by Mr Taylor).

29                  With respect to the use category (a) the applicant submitted that there can be no doubt that there is trade mark infringement, as the identical mark has been used. In relation to the use in category (b), the applicant submitted that trade mark infringement is proven as the essential feature of the mark, namely the word NOKIA has been used, albeit with the ‘broken O’. The ‘broken O’ does not change the usual pronunciation of the word NOKIA. With respect to the use in category (c) the applicant submitted that this also infringed its trade marks, as the addition of the word ‘For’ near the word NOKIA does not change the fact that the essential feature of the Nokia Trade Marks, the word NOKIA, had been used and the word ‘For’ is insufficient to indicate that the goods do not emanate from the applicant. Accordingly, the marks are ‘substantially identical’, or at least ‘deceptively similar’ to the Nokia Trade Marks.

30                  In its submissions the respondents admit that they sell mobile phone covers and neck straps that bear marks falling into the three categories outlined above. However, they argue that there is no evidence that the applicant sells handsfree kits bearing the NOKIA mark. This is incorrect, as the neck strap exhibited to Ms Nguyen’s affidavit sworn on 2 June 2004 has a handsfree kit attached to it and the receipt for her purchase describes the goods as ‘handsfree with string’. The handsfree kit and neck strap into which the word NOKIA is woven were also examined by Mr Taylor and identified as counterfeit in his affidavit of 7 June 2004. A trade mark does not have to be physically impressed upon a product. What is required is that it be used ‘in relation to’ goods (s 120(1)) and the relevant exhibit satisfied this requirement as the neck strap was offered for sale together with the handsfree kit and the two items were packaged as a single product for sale in circumstances where the word NOKIA was woven into the neck strap.

31                  The respondents’ further submitted that Nokia’s Registered Trade Mark No. 490781 which contains a distinctive trident device next to the stylised word NOKIA, has not been infringed because the products complained of are not sold by reference to any Nokia trade mark incorporating that trident device. This misconceives the subject matter of the registered trade mark; it is a composite mark, consisting of two elements - the word NOKIA and the trident device. When identifying trade mark infringement the issue is whether one or more of the ‘essential elements’ of the mark have been infringed and this cannot be done by focussing on one element of the mark whilst completely ignoring other elements: see De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106. When the trade mark is viewed in its entirety the word NOKIA is the most distinctive feature. It is the element of the mark by which consumers would ask for the goods and by which the goods are known to the public. In approaching this question by reference to the statement of principle in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415 and comparing the allegedly infringing marks and the registered mark containing the device, a person of ordinary memory and intelligence would find them deceptively similar. Since the trap purchase goods are marked with a trade mark which consists of the essential element of the registered mark, the word NOKIA, this registration is infringed by the use complained about.

32                  The respondents’ also submit that the allegedly infringing goods are not goods in respect of which Registered Trade Marks numbered 458364, 490781 or 808735 are registered. It is conceded by the respondents that the handsfree sets and mobile phone covers are covered by the specification for Registered Trade Mark No. 867057, as they are specifically referred to therein. However, the respondents dispute that neck straps for use with mobile phones are covered by this registration, submitting that they do not fall within class 9 and cannot be included as ‘accessories’ to the goods covered by the registration.

33                  I accept the applicant’s contention that neck straps do fall within the dictionary definitions of ‘accessories’ (as set out above in paragraph 20). If it matters, the common acceptance in the Trade Marks Examiners’ Manual of such goods as ‘accessories, parts and fittings’ support this. Neck straps are accordingly registered goods in respect of Registered Trade Mark No. 867057, being ‘accessories’ for the specifically listed goods in class 9. Even if I am wrong, s 120(2)(a) would apply and the goods are ‘goods of the same description’ as those for which the relevant trade mark is registered. I also accept that the neck straps are ‘goods of the same description’ in respect of Registered Trade Mark No’s 458364 and 490781, having regard to the nature of the goods, namely goods for use as an accessory to a mobile phone or handsfree set, and the fact that neck straps are used to hold these items and that the trade channels through which they are sold, such as mobile phone shops like those operated by the respondents, are common trade channels:see Southern Cross Refrigerating Co v Toowoomba Foundry Ltd (1954) 91 CLR 592 at 606.

34                  The applicant submitted that the counterfeit nature of the goods purchased from the ninth respondent was identified in Mr Taylor’s affidavit of 7 June 2004. The respondents’ attack the evidence of Mr Taylor on a number of grounds. First, on the ground that it is opinion evidence and therefore inadmissible under s 76 of the Evidence Act 1995 (Cth) (‘Evidence Act’). Secondly, it was argued that Mr Taylor’s evidence is also inadmissible as expert evidence, pursuant to s 79 of the Evidence Act. In this respect it was submitted that his independence was questionable, that he did not purport to be bound by the Guidelines in respect of expert witnesses and that his assertions were questionable, as he provides no details of his knowledge of Nokia’s products and their distribution in the marketplace and does not exhibit original products emanating from the applicant for comparison purposes.

35                  As mentioned above, Mr Taylor swore a further affidavit on 29 July 2005 confirming that he did receive a copy of the Guidelines and that he complied with them. His affidavit also gives further details in relation to his training to identify counterfeit Nokia products and asserts that he is independent. In its written submissions in reply the applicant argues that Mr Taylor’s evidence should be admitted under s 78 or s 79 of the Evidence Act. It is important to note in this context that Mr Taylor’s expertise is not scientific. He has been trained to identify genuine products sold under the Nokia Trade Marks. He does not make assumptions, but can say from his own knowledge that genuine products did not contain the use of the word ‘For’ in combination with NOKIA, NOKIA was not used as genuine trade mark with the ‘broken O’ and Nokia did not manufacture neck straps or authorise any manufacturer of neck straps to use any of their trade marks. These matters of fact were corroborated by Ms Lian and they were not put in contest by the respondents. Mr Taylor’s evidence thus conformed with the ‘basal principle’ that he was giving an opinion based on fact: Makita v Sprowles (2001) 52 NSWLR 705 at 731 (per Heydon JA). His opinion was based on simple facts by reference to which he had developed a narrow specialist ability to detect counterfeit products. I accept that this evidence is admissible under s 79 because Mr Taylor has ‘specialist knowledge’ based on his training and experience, even if Mr Taylor is considered an ‘ad hoc’ expert, rather than one with formal or specialised training: see R v Leung and Anor (1999) 47 NSWLR 405 at 413. Whilst it does not bind me, I note similar evidence was accepted by Kenny J in Nokia Corporation v Mai (2003) 59 IPR 413. If I am wrong, it appears to me the evidence would be admissible in any event under s 78 of the Evidence Act. His evidence carried conviction.

36                  The respondents also argue that despite knowing the Mr Truong believes that Elida Communications in China sent the infringing articles to Kathay, Nokia has failed to provide evidence that Elida Communications is not licensed by Nokia to sell these items. This argument is clearly misconceived, as even if Elida Communications were authorised to sell genuine Nokia goods it is not authorised to sell counterfeit goods. In any event, the burden of proving that an arguable defence exists is a burden on the respondents.

37                  In relation to proof of incorporation of Nokia and ownership of the Nokia Trade Marks, I accept the evidence in the affidavit of Mr Merrick, sworn on 20 May 2004. I also accept Mr Merrick’s affidavits of 1 July 2004 and 20 May 2004 as proof of such matters as incorporation, ownership of a relevant business name and the first respondent’s directorship of the ninth respondent. This information is in any event confirmed by admissions in Mr Troung’s affidavit of 4 June 2005. Accordingly, trade mark infringement by the ninth respondent is proven in respect of the trade mark registrations set out in paragraph 6 above.

38                  The first respondent, Mr Truong, denies that he is liable as a joint tortfeasor with the ninth respondent, as he was not a director of the company during the time it was deregistered. Mr Truong also denies he is liable as one who aided, abetted, counselled, procured or conspired each of the alleged acts of trade mark infringement by Kathay. The applicant’s dispute these claims.

39                  It is clear that a director of a company can be privy to trade mark infringement. For example, in Polaroid Corporation v Sole N Pty Ltd (1981) 1 NSWLR 491 Kearney J held that the managing director of a small private company, who actively participated in the day-to-day conduct of the business, should be treated as being privy to and authorising the infringing acts on the part of the company.

40                  In this case, the first respondent was the sole director and secretary of the ninth respondent. Although he was not retrospectively reinstated as a director of Kathay upon its re-registration, he nevertheless does not deny that he continued to operate its business during the period when it was deregistered. Mr Truong also admits in his affidavit that he was in charge of ordering stock for Kathay. The evidence satisfies me that he had the allegedly infringing goods within his control. Anyone who is connected in the course of trade with infringing goods is an infringer and once put on notice of the infringement has a duty to see that the goods are not used or dealt with in breach of the proprietor’s rights: see Norwich Pharmacal Co v Commissioners of Customs and Excise [1972] RPC 743 at 771. There is also clear evidence that first respondent allowed Kathay to continue to sell the infringing goods after the institution of these proceedings. Accordingly, Mr Troung was, at all material times, a joint tortfeasor with the ninth respondent.

41                  The applicant submitted that summary judgment should be granted because the respondents’ proposed defence consists of nothing more than ‘bare denials’ of the relevant allegations and a responsible person, Mr Merrick, has given evidence that there is no defence to the infringement claims. In particular, the applicant refers to the first respondent’s admissions in his affidavit of 4 June 2005 in relation to selling the allegedly infringing goods and notes that he does not state in his affidavit that the goods are genuine, does not deny that he knew of the existence of Nokia’s Trade Marks, nor does he indicate that the respondents’ will stop selling such goods. In addition, despite being aware of these proceedings, the ninth respondent has continued to sell counterfeit phone covers with the word NOKIA on them, as proven by Ms Nguyen’s affidavit of 11 March 2005 and Mr Taylor’s affidavit of the same date.

42                  The respondent argues that the affidavit sworn by Mr Merrick on 23 February 2005 in support for the motion for summary judgment should not be accepted by the Court, as there is no proper basis for it. However, I am satisfied that Mr Merrick had a genuine and reasonable belief that there was no defence on the basis of the evidence in the proceeding at that date and this affidavit has been accepted.

43                  The evidence set out above establishes Nokia’s claims of infringement, as particularised in paragraphs 9 and 17A of its further amended statement of claim, other than a particular in respect of manufacture. I have considered the evidence, the respondents’ written submissions in response to the notice of motion and the oral submissions made on their behalf and consider that the first and ninth respondents do not have a real or arguable defence in respect of the claims made against them. Accordingly, the Court will grant summary judgment for the applicant against the first and ninth respondents, pursuant to O 20 r 1 of the Rules, as there is no triable issue or real question to be dealt with by the court: Fancourt & Anor v Mercantile Credits Limited (1983) 154 CLR 87 at 99.

Permanent injunctive relief

44                  The applicant submitted that it ought to be granted permanent injunctive relief, as the evidence establishes that the respondents had been engaging in infringing activities even after the commencement of the proceedings. The respondents argue that the Court should not grant an injunction, on the basis of the decision in Louis Vuitton Malletier SA v Knierum [2004] FCA 1584. The respondents also submitted that there is no recent evidence of sale of the infringing products, other than one instance earlier this year, and that the granting of permanent injunctive relief on the basis of such ‘scanty’ evidence would be in appropriate. In reply, the applicant argued that it is in the nature of trap purchase evidence that the minimum quantity necessary to prove the cause of action is required and I agree with this submission.

45                  As to the appropriateness of granting permanent injunctive relief, I consider that the decision of Louis Vuitton Malletier SA v Knierum [2004] FCA 1584 can be distinguished from this case. In that decision Finklestein J restricted the length of the injunction granted because the respondent was unrepresented and there was no evidence, as there is in this case, that he had been selling counterfeit goods either before or after the institution of the proceedings. It does not seem likely that the potential double jeopardy referred to in Louis Vuitton Malletier SA v Knierum [2004] FCA 1584 at [5], which may mean that the granting of a permanent injunction in a particular case was oppressive, will occur in this case.

46                  Permanent injunctions are granted conventionally in respect of cases of intellectual property infringement against proven infringement and a proven threat to continue infringing as this avoids multiplicity of proceedings: see R Meagher, D Heydon and M Leeming, Meagher, Gummow and Lehane’s Equity Doctrines & Remedies, 4^th edn, Butterworths, Sydney, 2002 at [21-140]. See also W Cornish and D Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 5^th edn, Sweet & Maxwell, London, 2003 at [2‑37]. There is clear evidence that the respondents have continued to sell the infringing products, despite being aware of these proceedings, and the respondents have given no undertakings not to infringe. I therefore consider it appropriate to exercise my discretion to grant a permanent injunction.

Costs

47                  In relation to costs, the applicant submitted that these ought to follow the event. It was also submitted that costs already ordered to be paid in respect of adjournments sought for the first and ninth respondents should be ‘topped up’ by a further order that the respondents be ordered to pay the difference between party and party costs of those adjournments (already paid) and solicitor and own client costs. This does not appear to be a case where it would be appropriate to award further costs in respect of such cost which have already been paid.

48                  The costs of the application, including any reserved costs, should follow the event and be paid by the respondents as they relate to them.

Associate:

Dated: 19 August 2005