REASONS FOR JUDGMENT

1                     This is a notice of motion filed in respect of an application dated 14 October 2010.  The primary application is in respect of alleged infringements of registered trademarks and seeks orders pursuant to, amongst other sections, section 137(3)(b) of the Trade Marks Act 1995 (Cth) that certain goods be forfeited to the Commonwealth for disposal.

2                     The notice of motion before me today is brought on an ex parte basis.  It seeks orders that, pursuant to O 7 r 9 of the Federal Court Rules, service by the applicant on the respondent (Renae Millaras) be deemed to have been effected by the applicant having taken steps nominated in subparagraphs (a) through to (d) of the notice of motion.  The notice of motion seeks a further order that service of further documents in the proceedings, including affidavits, may be effected by the applicant taking certain nominated steps.

3                     The basis for these orders as sought is contained in a series of affidavits which have been read on the ex parte application.  They are the affidavit of Robert Anthony Arnold sworn 14 October 2010, the affidavit of Kenneth James Taylor sworn 15 October 2010, a second affidavit of Robert Anthony Arnold sworn 21 October 2010, the affidavit of Luba Poukchanski sworn 21 October 2010, the affidavit of Susan Gaye O’Connor sworn 21 October 2010, and the affidavit of Anthony Reymond sworn 21 October 2010.

4                     I have also been assisted by short written submissions, prepared by Ms Rubagotti of counsel, setting out the nature of the proceeding and the evidence contained in these affidavits.  In short, Ms Rubagotti’s submissions identify that Part 13 of the Trade Marks Act establishes a regime to protect registered Australian trademarks.  The evidence before me satisfies me, at least on this ex parte application, that the applicant manufactures telecommunications devices (including mobile telephones) bearing Australian registered trademarks 458364 and 867057, the marks being “NOKIA”.

5                     There is evidence of the importation for which the respondent is responsible of 15 mobile telephones bearing the mark “NOKIA” which has not been authorised by the applicant.  The evidence shows that the applicant, despite consistent and concerted efforts, has not been able to effect personal service of the originating process or the supporting affidavits on the respondent as required by the Federal Court Rules.  However, there has been service to an email address and an acknowledgement of receipt. 

6                     The evidence establishes that there should be orders for substituted service on the respondent of the originating process and an order that the applicant may serve further documents by the methods indicated.  There is power to make these orders where, for any reason, it is impractical to serve a document in a manner set out by the Rules.  In this case, the evidence satisfies me that it is impractical to serve documents in the proceedings by way of personal service. 

7                     Indeed I am also satisfied, as the applicant has submitted, that despite the inability to effect personal service, the originating process has come to the respondent’s attention and it is likely that documents sent to the nominated email address will bring relevant documents to the respondent’s attention. 

8                     For these reasons, I consider that orders should be made as sought in the notice of motion.

Associate:

Dated:         29 October 2010