FEDERAL COURT OF AUSTRALIA

Gillette Company v Schiavini [2008] FCA 1053

Trade Marks Act 1995 (Cth), Pt 13

Federal Court Rules, O 35A, O 62  

Jemella Australia Pty Ltd v MacKinnon [2008] FCA 1022 cited

Playboy Enterprises International Inc v You Tao Hong (2004) 63 IPR 533, (2004) AIPC 92‑030, [2004] FCA 1205 applied

THE GILLETTE COMPANY and PROCTER AND GAMBLE INTERNATIONAL OPERATIONS PTE LTD v JOSEFINA SCHIAVINI

NSD 877 of 2008

GYLES J

15 JULY 2008

SYDNEY

THE COURT DECLARES THAT:

1.                  The Respondent has infringed the First Applicant’s registered Trade Mark No 28857.

2.                  The Respondent has infringed the First Applicant’s registered Trade Mark No 759667.

3.                  The Respondent has infringed the First Applicant’s registered Trade Mark No 863355.

4.                  The Respondent has infringed the First Applicant’s registered Trade Mark No 1031429.

THE COURT ORDERS THAT:

5.                  The Respondent, whether by itself, its servants or agents or otherwise, be restrained from infringing the First Applicant’s registered Trade Mark No 28857.

6.                  The Respondent, whether by itself, its servants or agents or otherwise, be restrained from infringing the First Applicant’s registered Trade Mark No 759667.

7.                  The Respondent, whether by itself, its servants or agents or otherwise, be restrained from infringing the First Applicant’s registered Trade Mark No 863355.

8.                  The Respondent, whether by itself, its servants or agents or otherwise, be restrained from infringing the First Applicant’s registered Trade Mark No 1031429.

9.                  In full and final settlement of these proceedings, the Respondent pay the Applicants $10,844.68 in respect of costs.

10.              The application otherwise be dismissed.

11.              Exhibit A and confidential exhibit RN2 be returned instanter.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

REASONS FOR JUDGMENT

1                     On 2 July last I made orders pursuant to Pt 13 of the Trade Marks Act 1995 (Cth) dealing with the importation of goods infringing Australian trade marks, the substance of which was that the particular articles be forfeited to the Commonwealth.  The application, supported by a statement of claim, seeks wider relief – what might be called conventional relief for trade mark infringement.  As the respondent has been served but has not appeared – and, I might add, has been kept up-to-date with what has happened procedurally but has not appeared – O 35A of the Federal Court Rules applies, and I am entitled to make orders in default if appropriate.

2                     In the present case, the evidence which has been filed establishes, at a sufficient level for these purposes, the existence of the trade marks and the importation of the goods without the consent of the proprietor of the trade marks.  I am satisfied at that level that the volume of importation is such that it would be inconsistent with personal use – that it is commercial in nature (cf Jemella Australia Pty Ltd v MacKinnon [2008] FCA 1022 at [25]). 

3                     I have been referred to the decision of Lindgren J in Playboy Enterprises International Inc v You Tao Hong (2004) 63 IPR 533, [2004] AIPC 92-030, [2004] FCA 1205, where his Honour considered the question as to whether mere importation is use as a trade mark such as to constitute infringement.  His Honour concluded the answer to that question was yes, based upon a line of authority to which he referred, and he further concluded that it was appropriate to make declarations of infringement where established.  In those circumstances, and bearing in mind the absence of the respondent, I am satisfied that the orders proposed should be made. 

4                     I should say something as to the order for costs, being a lump sum order, which is authorised by O 62 in appropriate circumstances.  I am satisfied that the circumstances are appropriate for a lump sum order.  Bearing in mind that the respondent has not appeared, and that the task of taxation would involve yet further costs, expense and time, I am also satisfied on the evidence that the quantum is reasonable in the circumstances.  I therefore make the declarations and orders in the form I have initialled and placed with the papers.  I further order that the exhibits handed up at today’s hearing – exhibit A and confidential exhibit RN2 – be returned instanter.

Associate:

Dated:         17 July 2008