FEDERAL COURT OF AUSTRALIA

British American Tobacco Australasia Limited v The person identified by the Australian Customs Service as Gory Sabar

[2007] FCA 1255

BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED v THE PERSON IDENTIFIED BY THE AUSTRALIAN CUSTOMS SERVICE AS “GORY SABAR”

NSD 1544 OF 2007

BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED v THE PERSON IDENTIFIED BY THE AUSTRALIAN CUSTOMS SERVICE AS “GARY MUSSA”

nsd 1545 OF 2007

STONE J

16 AUGUST 2007

SYDNEY

THE COURT:

1.                  DIRECTS that the subpoena issued to the Australian Customs Service on 7 August 2007 be stood over until 9.30am on 22 August 2007.

2.                  ORDERS that until further order the goods listed in Schedule A to these orders not be released by the Chief Executive Officer of the Australian Customs Service.

3.                  DIRECTS the applicant to notify the respondent of these orders and the date of the next directions hearing by sending a letter enclosing a copy of the orders as entered, by pre-paid registered post, to 3 Applebee Street, St Peters, NSW 2042.

4.                  DIRECTS the applicant to notify the Chief Executive Officer of the Australian Customs Service of these orders and provide a copy of the orders as entered by 22 August 2007.

5.                  DIRECTS that the proceedings be listed for directions before Stone J at 9.30am on 22 August 2007.

6.                  ORDERS that the costs of the hearing today be reserved.

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

THE COURT:

1.      DIRECTS that the subpoena issued to the Australian Customs Service on 7 August 2007 be stood over until 9.30am on 22 August 2007.

2.      ORDERS that until further order the goods listed in Schedule A to these orders not be released by the Chief Executive Officer of the Australian Customs Service.

3.      DIRECTS the applicant to notify the respondent of these orders and the date of the next directions hearing by sending a letter enclosing a copy of the orders as entered, by pre-paid registered post, to Unit 21, 124 Hassell Street, Wetherill Park, NSW 2042.

4.      DIRECTS the applicant to notify the Chief Executive Officer of the Australian Customs Service of these orders and provide a copy of the orders as entered by 22 August 2007.

5.      DIRECTS that the proceedings be listed for directions before Stone J at 9.30am on 22 August 2007.

6.      ORDERS that the costs of the hearing today be reserved.

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

1)         one hundred and nineteen (119) cartons containing a total of twenty three thousand eight hundred (22,800) cigarette sticks all with marks the same as or deceptively similar to marks registered by British American Tobacco Australasia Limited, being goods covered by the Australian Customs Service Notice of Seizure to Objector with reference DGR 200705680/1kk; and

2)         Twenty (20) cartons containing a total of four thousand (4,000) cigarette sticks all with marks the same as or deceptively similar to marks registered by British American Tobacco Australasia Limited, being goods covered by the Australian Customs Service Notice of Seizure to Objector with reference DGR 200705642/1kk.

REASONS FOR JUDGMENT

1                     The applicant is the owner of registered trademarks 16384, 270854, 369487, 657297, 750619, 752287, 786027, 917043, 963064 in class 34, all of which relate to its WINFIELD mark and WINFIELD products.  On 6 July 2007 the Australian Customs Service issued under s 134 of the Trade Marks Act 1995 (Cth) four notices of seizure of consignments of cigarettes all bearing the Winfield Blue Logo.  The notices identified the designated owner of two of the consignments as Gory Sabar, 3 Applebee St, St Peters.  The designated owner of the other two consignments was identified as Gary Mussa, Unit 21, 124 Hassall Street, Wetherill Park. 

2                     The applicant had previously been contacted by Customs pursuant to a Notice of Objection to Importation under s 132 of the Trade Marks Act which it had filed with Customs.  The consignments had been inspected by representatives of the applicant who had formed the view that the cigarettes were counterfeit.  Section 137 of the Trade Marks Act provides that any action for infringement of a notified trade mark in respect of seized goods must be commenced within the time limit laid down in the section.  The time limit may be extended by the Chief Executive Officer of Customs and, in respect of the consignments here, it was extended to 8 August 2007.  Both these proceedings were commenced on 7 August 2007.

3                     The applicant seeks, by way of interlocutory relief, an order that, until further order, the goods contained in the consignments not be released by the Customs CEO.  Such an order is contemplated by s 137(5) which provides:

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.

4                     The section contemplates an order directed to the Customs CEO but, as Lehane J observed in Sony Computer Entertainment Australia Pty Ltd v Angrainni (2000) 48 IPR 49 at 50, it also clearly contemplates that the Customs Service will not be a party to the infringement proceedings.  For the reasons given by his Honour in Angrainni I am satisfied that it is within the power of the Court to make such an order directed to the Customs CEO.

5                     In both proceedings the evidence included an affidavit sworn by Barry Philip James Wilson who is employed by British American Tobacco Australia Limited (BATA) as Area Excise and Anti-Illicit Trade manager.  BATA is a subsidiary company of the applicant and an authorised user of the Winfield brand.  It manufactures, imports, distributes and sells a range of branded cigarette products including the Winfield Brand.  Mr Wilson testified that all Winfield products are currently manufactured in Australia by BATA.  This information, in itself, would be sufficient to raise suspicions about the genuineness of the consignments.  Based on his inspection of the cartons and packs of cigarettes in the consignments, however, Mr Wilson was also able to testify to other aspects which support his contention that the goods are counterfeit.  In particular he referred to spelling errors on the packaging, the poor quality of the printing on the packaging, the fact that the distribution of health warnings between the consignment packs and the cartons did not comply with relevant regulations whereas those manufactured by BATA do comply; and the fact that the date codes on the consignment packs were inconsistent with BATA’s records. 

6                     On the basis of Mr Wilson’s evidence I am satisfied that the order preventing release of the goods should be made.  I have reached that conclusion without the benefit of any evidence or submissions being put before me on behalf of the respondents who have not appeared.  I should therefore say something about the respondents and the efforts made by the applicants to identify them and to serve the relevant documents.

7                     These matters first came before Cowdroy J as duty judge on 7 August 2007.  At that time the only information that the applicant had about the designated owners of the consignments came from the notices of seizure referred to in [1] above.  The applicant provided his Honour with evidence to show that it had attempted by various means to contact the designated owners without success.  These efforts included engaging Mr Kenneth James Taylor of Trade Mark Investigation Services to identify and locate Mr Sabar and Mr Mussa.  Mr Taylor gave evidence by affidavit that he had attended the addresses given in the notices of seizure without being able to locate either respondent.  He had caused searches to be made of the Land Titles Register, the electoral rolls, the telephone directory, the Australian Business Register, the internet (via Google) and ASIC databases.  None of these searches yielded any information about either respondent.  Accordingly Cowdroy J ordered that, pursuant to O 7 r 9 of the Federal Court Rules, service on the respondents be effected by leaving sealed copies of the application, the supporting affidavits and his Honour’s orders at the respective addresses of the respondents.  The applicant has filed affidavits of service in each case that satisfy me that it has complied with his Honour’s orders.

8                     As I have indicated above the Trade Marks Act imposes strict time limits within which an order such as is contemplated by s 137(5) must be made if the goods are not to be released.  Despite the absence of the respondents I am satisfied that the orders sought by the applicant and certain consequential directions should be made.

Associate:

Dated:         16 August 2007