FEDERAL COURT OF AUSTRALIA

The Pokémon Company International, Inc v Pokemon Pty Ltd [2022] FCA 1561

ORDERS

UPON THE APPLICANT, BY THE APPLICANT’S COUNSEL, UNDERTAKING TO SUBMIT TO SUCH ORDER (IF ANY) AS THE COURT MAY CONSIDER TO BE JUST FOR THE PAYMENT OF COMPENSATION, TO BE ASSESSED BY THE COURT AS IT MAY DIRECT, TO ANY PERSON, WHETHER OR NOT A PARTY, ADVERSELY AFFECTED BY THE GRANT OF INTERLOCUTORY RELIEF

THE COURT ORDERS THAT:

1.    The First Respondent (PPL), whether by itself, its employees, agents, or officers or howsoever, be restrained, until further order, from:

a.     representing (in any manner whatsoever) that:

i.    PPL is:

1.    licensed to develop Pokémon Games by or on behalf of the Applicant (TPCI) or The Pokémon Company or Nintendo Co., Ltd or to authorise others to do so;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo;

(PPL Representations)

ii.    Kotiota Studio is:

1.    licensed to develop Pokémon Games by or on behalf of TPCI or The Pokémon Company or Nintendo or to authorise others to do so;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo

(Kotiota Representations)

iii.    that any Pokémon NFTs to be issued or offered by it are:

1.    licensed by TPCI or The Pokémon Company or Nintendo;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo

(NFT Representations)

iv.    PokeWorld is:

1.    licensed by TPCI or The Pokémon Company or Nintendo;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo

(PokeWorld Representations);     

b.    using:

i.    the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in the course of trade.

ii.     the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in PPL’s name and/or in the domain name of any website and/or in the name of any Twitter account and/or any other online profile or social media account;

iii.    the words “Pokemon” and/or “Pokémon” and/or ‘PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar and/or the images of Pokémon characters and/or the names of Pokémon characters to promote products and/or services of PPL and/or any other company or business associated with Liu (whether on the website located at the domain name kotiota.com.au (Kotiota Website) or the website located at the domain name pokeworld.game (PokeWorld Website) or on Twitter or on any other website or howsoever);

iv.    the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, images of Pokémon characters and/or the names of Pokémon characters on the Kotiota Website or the PokeWorld Website or on Twitter or on any other website;

c.    operating the PokeWorld Website;

d.    launching or allowing access to the PokeWorld game; and

e.    selling or otherwise making available Pokémon NFTs.

2.    The Second Respondent (Liu), whether personally or by his or her employees, agents, or officers or howsoever, be restrained, until further order, from:

a.    representing (in any manner whatsoever) that:

i.    PPL is:

1.    licensed to develop Pokémon Games by or on behalf of TPCI or The Pokémon Company or Nintendo or to authorise others to do so;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo;

ii.    Kotiota Studios is:

1.    licensed to develop Pokémon Games by or on behalf of TPCI or The Pokémon Company or Nintendo or to authorise others to do so;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo

iii.    that any Pokémon NFTs to be issued or offered by Liu are:

1.     licensed by TPCI or The Pokémon Company or Nintendo;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo

iv.    PokeWorld is:

1.    licensed by TPCI or The Pokémon Company or Nintendo;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo;

b.    using:

i.    the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in the course of trade.

ii.     the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in PPL’s name and/or in the domain name of any website and/or in the name of any Twitter account and/or any other online profile or social media account;.

iii.    the words “Pokemon” and/or “Pokémon” and/or ‘PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, and/or images of Pokémon characters and/or the names of Pokémon characters to promote products and/or services of PPL and/or any other company or business associated with Liu (whether on the Kotiota Website or the PokeWorld Website or on Twitter or on any other website or howsoever);

iv.    the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, images of Pokémon characters and/or the names of Pokémon characters on the Kotiota website or the PokeWorld Website or on Twitter or on any other website;

c.    operating the PokeWorld Website;

d.    launching or allowing access to the PokeWorld game; and

e.    selling or otherwise making available Pokémon NFTs.

3.    By 4.00 pm on 20 January 2022, PPL and Liu each:

a.    give discovery of all documents (whether in hard copy or electronic form) in their control (as defined in the Federal Court Rules 2011 (Cth)) which record or evidence communications with third parties which are not publicly available and which contain any:

i.    PPL Representations;

ii.    Kotiota Representations;

iii.    NFT Representations; and/or

iv.    PokeWorld Representations, and

b.    file and serve an affidavit identifying:

i.    all information in their possession about:

1.    the development and marketing of PokeWorld; and

2.    the issuing and/or offering for sale of Pokémon NFTs; and

ii.    details of any communications each has been involved in regarding:

1.    Kotiota Studio being a developer for or on behalf of Pokémon, The Pokémon Company or Nintendo;

2.    the development of PokeWorld;

3.    the development and sale of Pokémon NFTs;

and the substance of those communications.

4.    Costs be reserved.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

COLLIER J:

1    Before the Court is an originating application filed 19 December 2022 by the applicant, the Pokémon Company International, Inc (TPCI). In summary, the final relief sought by the applicant includes permanent injunctions under s 232 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)(Australian Consumer Law)) restraining the respondents from representing that:

    the first respondent (PPL) or Kotiota Studios (Kotiota) is licensed to develop Pokémon Games by or on behalf of Pokémon or The Pokémon Company or Nintendo Co. Ltd (Nintendo) or to authorise others to do so; or is affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by Pokémon or The Pokémon Company or Nintendo;

    any Pokémon NFTs issued or offered by the respondents are licenced or approved by the applicant or its related companies; or

    PokeWorld is licenced or approved by the applicant or its related companies.

2    Further, the applicant seeks permanent relief under s 232 of the Australian Consumer Law restraining the respondents from:

    using the words “Pokémon” and/or “Pokemon” and/or PokeWorld or any name or word misleadingly, deceptively and/or confusingly similar, in the course of trade, or in any online or social media account;

    using images of Pokémon characters and/or the names of Pokémon characters to promote products; and

    operating the PokeWorld Website, launching or allowing access or the PokeWorld game, and selling or otherwise making available Pokémon NFTs.

3    The applicant further seeks declaratory relief, and damages.

4    Relevantly however for present purposes, the applicant seeks interlocutory relief in the following terms:

Interlocutory relief

And Pokémon claims by way of interlocutory relief until the hearing and determination of this proceeding:

Injunctions

13.     An injunction under s 234 of the ACL restraining the First Respondent (PPL), whether by itself, its employees, agents, or officers or howsoever from:

a. representing (in any manner whatsoever) that:

i. PPL is:

1.     licensed to develop Pokémon Games by or on behalf of Pokémon or The Pokémon Company or Nintendo or to authorise others to do so;

2.     affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by Pokémon or The Pokémon Company or Nintendo;

ii. Kotiota Studios is:

1.     licensed to develop Pokémon Games by or on behalf of Pokémon or The Pokémon Company or Nintendo or to authorise others to do so;

2.     affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by Pokémon or The Pokémon Company or Nintendo

iii. that any Pokémon NFTs to be issued or offered by it are:

1.    licensed by Pokémon or The Pokémon Company or Nintendo;

2.     affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with Pokémon or The Pokémon Company or Nintendo

iv. PokeWorld is:

1.     licensed by Pokémon or The Pokémon Company or Nintendo;

2.     affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with Pokémon or The Pokémon Company or Nintendo;

b. using:

i.     the words “Pokémon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in the course of trade.

ii.     the words “Pokémon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in PPL’s name and/or in the domain name of any website and/or in the name of any Twitter account and/or any other online profile or social media account;

iii.     the words “Pokémon” and/or “Pokémon” and/or ‘PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar and/or the images of Pokémon characters and/or the names of Pokémon characters to promote products and/or services of PPL and/or any other company or business associated with Liu (whether on the Kotiota Website or the PokeWorld Website or on Twitter or on any other website or howsoever);

iv.     the words “Pokémon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, images of Pokémon characters and/or the names of Pokémon characters on the Kotiota Website or the PokeWorld Website or on Twitter or on any other website;

c. operating the PokeWorld Website;

d. launching or allowing access to the PokeWorld game; and

e. selling or otherwise making available Pokémon NFTs.

14.     An injunction under s 234 of the ACL restraining the Second Respondent (Liu), whether by himself, his employees, agents, or officers or howsoever from:

a. representing (in any manner whatsoever) that:

i. PPL is:

1.     licensed to develop Pokémon Games by or on behalf of Pokémon or The Pokémon Company or Nintendo or to authorise others to do so;

2.    affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by Pokémon or The Pokémon Company or Nintendo;

ii. Kotiota Studios is:

1.     licensed to develop Pokémon Games by or on behalf of Pokémon or The Pokémon Company or Nintendo or to authorise others to do so;

2.     affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by Pokémon or The Pokémon Company or Nintendo

iii. that any Pokémon NFTs to be issued or offered by him are:

1.     licensed by Pokémon or The Pokémon Company or    Nintendo;

2.     affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with Pokémon or The Pokémon Company or Nintendo

iv. PokeWorld is:

1.    licensed by Pokémon or The Pokémon Company or Nintendo;

2.     affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with Pokémon or The Pokémon Company or Nintendo;

b. using:

i.     the words “Pokémon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in the course of trade.

ii.     the words “Pokémon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in PPL’s name and/or in the domain name of any website and/or in the name of any Twitter account and/or any other online profile or social media account;.

iii.     the words “Pokémon” and/or “Pokémon” and/or ‘PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, and/or images of Pokémon characters and/or the names of Pokémon characters to promote products and/or services of PPL and/or any other company or business associated with Liu (whether on the Kotiota Website or the PokeWorld Website or on Twitter or on any other website or howsoever);

iv.     the words “Pokémon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, images of Pokémon characters and/or the names of Pokémon characters on the Kotiota website or the PokeWorld Website or on Twitter or on any other website;

c. operating the PokeWorld Website;

d. launching or allowing access to the PokeWorld game; and

e. selling or otherwise making available Pokémon NFTs.

Discovery and disclosure

15.     By 4.00 pm on 20 January 2022, PPL and Liu each:

a.     give discovery of all documents (whether in hard copy or electronic form) in their control (as defined in the Federal Court Rules 2011 (Cth)) which record or evidence communications with third parties which are not publicly available and which contain any:

i.     PPL Representations;

ii.     Kotiota Representations;

iii.     NFT Representations; and/or

iv.     PokeWorld Representations. and

b.     file and serve an affidavit identifying:

i.     all information in their possession about:

1.     the development and marketing of PokeWorld; and

2.     the issuing and/or offering for sale of Pokémon NFTs; and

ii.     details of any communications each has been involved in regarding:

1.     Kotiota Studios being a developer for or on behalf of Pokémon, The Pokémon Company or Nintendo;

2.     the development of PokeWorld;

3.     the development and sale of Pokémon NFTs;

and the substance of those communications.

16.     Costs.

17.     Such further or other orders, directions or relief as the court sees fit.

5    It is this interlocutory relief which is the subject of the following reasons.

MATERIAL ALLEGATIONS

6    The applicant was incorporated in 2001 in Delaware in the United States of America, and is and was a wholly owned subsidiary of the Pokémon Company, a company incorporated in Japan. The applicant was registered to oversee the brand management, licensing and marketing of merchandise related to the Pokémon computer and video games published and distributed by Nintendo.

7    In summary, Pokémon Games are popular games based upon fictional animated characters called "Pokémon", who inhabit a fictional universe known as the Pokémon universe.

8    In support of the interlocutory relief sought, the applicant has filed affidavits of Mr David Fixler, the solicitor with carriage of the matter for the applicant in Australia, and Ms Katherine Fang, its Attorney based in the United States of America.

9    The facts alleged by the applicant can be summarised as follows.

10    The first respondent, Pokemon Pty Ltd (PPL) is a corporation incorporated in Australia, registered on 7 December 2016. A company search of PPL revealed that the second respondent, Xiaoyan Lui, is the sole director and secretary of PPL. An Australian Business Number search confirmed that PPL holds the business name AUTELCO.

11    In November 2022 the applicant became aware of a purported Pokémon website located at the domain name https://pokeworld/game/ (PokeWorld Website). A WHOIS search of the PokeWorld Website domain name states that the domain name was registered on 16 August 2022, and that the registrant of the name is Xiaoyan Liu (who is the second respondent to these proceedings). A further two WHOIS searches of https://kotiota.com.au/ and autelco.com.au identifies the registrant as PPL and Xiaoyan Liu.

12    The PokeWorld Website advertises a new game “brought to you by The Pokémon Company International and Kotiota”. I understand that Kotiota Studios (Kotiota) is an entity related to the respondents in their business endeavour the subject of these proceedings. On that website, there is a section titled “2022-2023 ROADMAP” which appears to outline the timeline for the launch of PokeWorld and release of non-fungible tokens (NFTs) related to Pokémon characters. A review of that webpage indicates that the PokeWorld game will launch in January 2023. Notably, extracts from the webpage are as follows:

13    On the PokeWorld Website there is a link titled “White Paper” which leads to a further website (White Paper Website). Extracts from the White Paper Website include the following:

14    On 25 November 2022 the applicant instructed its solicitors to engage a specialist cybercrime investigation firm, IFW Global, to investigate the respondents and the conduct in issue. Mr Fixler gave evidence that he believed that there was no company directory board at the reception of an address in Parramatta, New South Wales nominated as the contact address for the first respondent on the PokeWorld website, and further that the company which provides serviced office and co-working spaces at that address has no record of “Kotiota”.

15    On 29 November 2022, and 6, 11, 12 and 15 December 2022, IFW Global sent emails to info@pokeworld.game and info@kotiota.com.au in an attempt to engage with the respondents, enquiring about gaining access to Pokeworld, however received no response.

16    Ms Katherine Fang gave an affidavit dated 19 December 2022. She described the “History of Pokémon” as follows:

The Pokémon video games, trading card games, movies and animated TV series

9.    The Pokémon (pronounced POH-kay-mahn) fictional universe comprises a group of more than 800 characters that players of Pokémon video games or trading card games can find, capture, train, trade, collect, and use in battle against their rivals in the quest to become top Pokémon Trainers. Key Pokémon characters include, but are not limited to, the following:

(i)    Pikachu (pronounced PEE-ka-choo );

(ii)     Bulbasaur (pronounced BUL-ba-sore);

(iii)     Squirtle (pronounced SKWIR-tul);

(iv)     Charmander (pronounced CHAR-man-der);

(v)     Charizard (pronounced CHAR-iz-ard);

(vi)     Snorlax (pronounced SNOR-lacks); and

(vii)     Eevee (pronounced Eee-vee),

collectively referred to in this affidavit as the Pokémon Characters.

10.    The Pikachu, Bulbasaur, Squirtle, Charmander, Charizard, Snorlax and Eevee Pokémon Characters listed in paragraph 9 above are the Pokémon characters depicted alongside their respective names in paragraph 11 (a)-(g) of the Statement of Claim.

11.    Each Pokémon character is classified into a specific type (such as Fire, Water, Grass, Psychic, and Fighting), and has its own strengths and weaknesses.

12.    The first two Pokémon video games, Pocket Monster Red and Pocket Monster Green, were released for the Nintendo Game Boy in Japan in 1996. These Pokémon video games were first released in the U.S. in 1998, and in Australia later in 1998, under the names Pokémon Red and Pokémon Blue. These first video games included the Pokémon characters Pikachu, Bulbasaur, Squirtle, Charmander, Charizard, Snorlax and Eevee.

13.     Costumed Pikachu first featured in the Pokémon Omega Ruby and Pokémon Omega Sapphire video games as an option for players to enter a dressed up Pikachu into a contest. Pokémon Omega Ruby and Pokémon Omega Sapphire have been sold in Australia since November 2014.

14.     Following the release of these games, a wide variety of related Pokémon products, featuring the Pokémon Characters were launched across the world , including the Pokémon Trading Card Game, the animated TV series, movies, and spin-off video game titles. The animated TV series feature the Pokémon Characters in the adventures of a 10-year-old boy named Ash and his best friend Pikachu.

15.    The Pokémon Trading Card Game was launched in Japan in 1996 and subsequently launched in the United States of America in 1998, and in Australia in 1999. The Pokémon Trading Card Games cards feature images of Pokémon characters, including the Pokémon Characters.

16.    In the Pokémon video games and the animated TV series, Pokémon Trainers catch and befriend Pokémon characters and train them to battle each other.

17    Ms Fang deposed that, since incorporation, TPCI had overseen licensing for the Pokémon brand outside of Asia, including in Australia, North America, South America, Europe and Africa.

18    Ms Fang gave evidence that more than 440 million Pokémon video games had been sold worldwide as of September 2022, that more Pokémon video games are released every year, and that core Pokémon video games introducing new characters are typically released every two to four years. Ms Fang also deposed that 23 animated Pokémon movies have been released worldwide since 1999, including in Australia.

19    Ms Fang also gave evidence that the Pokémon animated television series is broadcast in more than 160 countries, including in Australia, that the series features the adventures within the Pokémon universe of Pokémon trainers and characters, and that the character Pikachu features in each of the seasons. She also deposed that the Pokémon Trading Card Game is distributed in Australia, and that it is distributed extensively internationally.

20    Ms Fang deposed that TPCI licensed partners to use Pokémon intellectual property, including images of the Pokémon characters on products, usually in return for a royalty payment on sales of the branded items. Ms Fang gave evidence that:

50. The goods promoted and sold in Australia under licence include:

(i)    Pokémon apparel including T-shirts, outerwear, hats and socks, since at least 2005;

(ii)     Pokémon drinkware including tumblers, since at least 2015;

(iii)     Pokémon stationery, including writing cards, binders, notebooks, stickers and sticker books, since at least 2002;

(iv)     Pokémon accessories including bags, totes and keyrings, since at least 2005;

(v)     Pokémon showbags, since at least 2001;

(vi)     Pokémon Trading Card Game accessories including playmats, sleeves, deckboxes and binders, since at least 2003;

(vii)     Pokémon movies on DVD and VHS, since at least 2010;

(viii)     Pokémon comic books and books, since at least 2002;

(ix)     Pokémon toys (including Plush toys and various role play sets), since at least 2001;

(x)     Pokémon figures (ie three-dimensional depictions of Pokémon characters or items from the Pokémon universe), since at least 2001; and

(xi)     Pokémon manchester including fleece throws and cushions, since at least 2002,

(the Pokémon Merchandise)

21     Ms Fang continued:

52.    According to License Global Magazine's May Top 150 Global Licensors for 2021, TPCi was ranked as number 8 with global retail sales for 2021 at US$5.1 billion for Pokémon licensed goods. Annexed hereto and marked Annexure KF-4 is a copy of the relevant extract to License Global Magazine's May Top 150 Global Licensors for 2021 .

53     The Pokémon character, Pikachu, is the best known Pokémon character. Pikachu has featured on each type of merchandise listed in paragraph 50 above sold in Australia.

22    Ms Fang deposed that TPCI licensed partners to sell authorised Pokémon apparel in Australia, which featured Pokémon characters including Pikachu, Bulbasaur, Squirtle, Charmander, Charizard, Snorlax and Eevee.

23    Ms Fang deposed that TPCI licensed partners to sell authorised Pokémon drinkware, stationery, accessories, showbags, trading card game accessories, toys and figures and manchester in Australia.

24    Ms Fang deposed that the character Pikachu is the best known Pokémon character. The character Pikachu is as follows:

25    Ms Fang deposed that TPCI was particularly concerned to ensure that Pikachu was not represented in any way that impinged on Pikachu’s visible facial features, or in any way impeded the ability to see its facial expressions.

26    At [98] et seq of her affidavit, Ms Fang gave evidence of the detailed approval process for new merchandise and digital representations of the Pokémon Characters, which she stated was strictly adhered to by TPCI. Ms Fang also gave evidence of Australian promotions during the last thirteen years, including with McDonald’s Australia, and events (including video and trading card game championships).

27    In relation to social media presence, Ms Fang deposed:

121.    TPCi uses several social media sites to interact with its fans on a regular basis including Facebook, Twitter and lnstagram. TPCi uses these accounts to post statements, videos, images, news and information about Pokémon for the benefit of its fans. TPCi also uses these social media platforms for advertising.

122.    TPCi's Facebook, Twitter and lnstagram pages are all titled 'Pokémon' and can be found at https://www.facebook.com/Pokémon/?ref=page internal (the Pokémon Facebook Page), https://twitter.com/Pokémon (the Pokémon Twitter Page) and https://www.instagram .com/Pokémon/ (the Pokémon lnstagram Page) (collectively, the Pokémon Social Media Pages).

123.     As at 15 December 2022:

(i) The Pokémon Facebook Page has 7,572,734 likes;

(ii) the Pokémon Twitter Page has 7,600,000 followers; and

(iii) the Pokémon lnstagram Page has 4.2 million followers.

124.    The Pokémon Social Media Pages are used actively by both TPCi and fans.

28    Ms Fang gave evidence of unauthorised conduct of Kotiota as follows:

126.    On about 19 August 2022 TPCi's marketing team was contacted by email by Sergio F Cara of NotiPress news agency in Mexico in relation to "Kotiota Studios" (Cara email). Mr Cara stated that NotiPress had received an email from the legal department of Kotiota Studios in Australia to ask NotiPress to add the mention of Kotiota as a developer of Pokémon in published material, and enquiring of TPCi whether it was correct to mention Kotiota. The Cara email was forwarded to my attention on 25 August 2022. The Cara email was the first time TPCi had heard of or encountered Kotiota or Kotiota Studios.

127.    Attached hereto and marked Annexure KF-18 is the email from NotiPress dated 19 August 2022 to TPCi with subject line "RE: NotiPress - Kotiota Studios".

128.    On 25 August 2022 TPCi's PR team was contacted by Gavin Sheehan, the games editor at the BleedingCool pop culture news website, about contact he had received purportedly from the legal team from "Kotiota Studios" (Sheehan email). Kotiota claimed it had intellectual property rights related to Pokémon video games and requested that an article by BleedingCool be amended to name Kotiota as a game developer.

129.    Attached hereto and marked Annexure KF-19 is the email from Gavin Sheehan of Bleeding Cool to TPCi on 25 August 2022.

130.    The TPCi legal and business development teams investigated the Sheehan email and the Cara email, including by reviewing the Kotiota Studios website at kotiota.com.au and existing online app and game articles that claimed Kotiota Studios was involved in the development of Pokémon apps or games. These investigations included speaking to stakeholders like The Pokémon Company's business team to confirm that Kotiota Studios was not an authorised game developer. I am informed by the business team and believe that they undertook an extensive investigation before confirming in early September 2022 that Kotiota Studios was not an authorised game developer.

131.    Attached hereto and marked Annexure KF-20 are screenshots taken from kotiota.com.au (Kotiota Website).

132.    Among other things, the Kotiota Website features:

(a)    images of the listed Pokémon characters including Charmander, Squirtle, Snorlax, Bulbasaur, Eevee and Pikachu; and

(b)    statements to the effect that:

i.    Xiaoyan Liu is a director of Kotiota Studio;

ii.    Kotiota Studio is one of The Pokémon Company's contractors, which handles the full range of animation and game development;

iii.    Kotiota Studio was involved in game character design and animation for Pokémon Sleep;

iv.    Kotiota Studio was involved in app design and animation for Pokémon Home;

v.    Kotiota Studio was involved in open-world game design and animation for Pokémon Scarlet and Pokémon Violet;

vi.    PokeWorld is a first multi-metauniverse blockchain online game and AR mobile application for Android OS and iOS;

vii.    PokeWorld will be released in 2022; and

viii.     Pokémon and Nintendo own copyright in the Kotiota website.

29    Ms Fang deposed that she was aware, following inquiries by TPCI’s business development team, that paragraphs 132(b)(ii)-132(b)(v) were not true.

30    Ms Fang gave evidence that she was aware that TPCI, The Pokémon Company and Nintendo had made a deliberate decision not to launch any Pokémon NFTs.

31    Ms Fang gave evidence as follows:

136.    Among other things, the Poke World Website features:

(a)     images of Pokémon characters including Pikachu, Bulbasaur, Charmander, Squirtle, Charizard and Eevee;

(b)     A link to a "white paper" outlining in depth the details of PokeWorld; and

(c)     statements to the effect that:

i.    PokeWorld is structured as a multi-meta universe game that consists of the idea of raising and improving your own Pokémon.

ii.     In-game assets, including Pokémon, amulets, belts and poisons are minted as tradeable NFTs (non-fungible tokens) which are owned by players.

iii.     PokeWorld has a marketplace where users can buy and sell Pokémon and all of their items.

iv.     PokeWorld is a leading P2E game.

v.     there are 10310 Pokémon NFTs.

vi.     PokeWorld is filled with Pokémon that players can collect.

vii.     there will be a first round NFT sale in November 2022 and information is available by following @PokeWorldP2E.

viii.     PokeWorld Game Release will be announced in January 2023;

ix.    There will be a public sale of NFTs in the fourth quarter of 2022, launch of an ingame marketplace in the first quarter of 2023 and release of PokeWorld in the second quarter of 2023.

x.     Pokémon owns 8% of PokeWorld.

xi .     The PokeWorld game is brought to consumers by Pokémon and Kotiota Studio.

Paragraphs 136(c)(x) and 136(c)(xi) are not true

32    Ms Fang gave evidence of a PokeWorld Twitter Account, which among other things:

(a)    features videos featuring the listed Pokémon characters including Pikachu, Bulbasaur, Charmander, Squirtle, Eevee and Charizard and images of the listed Pokémon character Pikachu;

(b)     contains statements to the effect that PokeWorld is the official Pokémon P2E NFT collection, brought to consumers by Kotiota Studio and Pokémon; and

(c)     promotes PokeWorld.

33    Her evidence continued:

143.    As at 18 December 2022, the PokeWorld Twitter Account has approximately 13,500 followers. It has posted five promotional videos for PokeWorld with the first post published on 18 October 2022. A video posted on that day has received more than 31,000 views.

144.    PPL is not authorised to use the images of any of the Pokémon characters, and PokeWorld is not the official Pokémon P2E NFT collection for the reasons outlined above.

145.    On 9 November 2022 the TPCi Customer Service team was contacted through the Zendesk portal by Matisse of Kryptonite Agency in Dubai, UAE, with respect to a license agreement which purports to be a licence to PPL from TPCi. The representative of Kryptonite Agency indicated that Kryptonite Agency recently started working with a company called Pokémon PTY, which was building a new game in the Web3 space (containing the creation of NFTs and more) and claimed to have an official license agreement with The Pokémon Company International. Kryptonite Agency stated that they were sent a license agreement by Pokémon PTY and sought that TPCi confirm that there was in fact a license and affiliation between both parties.

34    Ms Fang referred to a purported licence agreement which represents, inter alia, that PPL is licensed to develop Pokémon Games by or on behalf of TPCI or Nintendo, and which bears a falsified seal of an officer of TPCI.

35    Ms Fang gave evidence:

152.    In the course of my investigations (which I undertook as a result of TPCi's discovery of first the Kotiota Website, second the PokeWorld Website, and third the PokeWorld Twitter Account between August and early November 2022) I made enquiries at TPCi with our business development team and confirmed through further queries to The Pokémon Company and Nintendo of America, Inc, Ltd, and my consultation of TPCi records that:

I.    Kotiota Studio is not one of the TPCi's listed contractors;

II.     Kotiota Studio was not involved in game character design and animation for Pokémon Sleep;

Ill.     Kotiota Studio was not involved in app design and animation for Pokémon Home;

IV.     Kotiota Studio was not involved in open-world game design and animation for Pokémon Scarlet and Pokémon Violet;

V.     Neither PPL nor Kotiota Studio has the licence or approval of any of Pokémon or The Pokémon Company or Nintendo to use the word Pokémon or any words which are deceptively similar to the word Pokémon;

VI.     Neither PPL nor Kotiota Studio has the licence or approval of any of Pokémon or The Pokémon Company or Nintendo to use the names or images of any of the Pokémon characters, including the listed Pokémon characters; and

VII.     Pokémon does not have any ownership, interest in or association with PokeWorld and has not licensed PPL or Kotiota Studio to develop or publish PokeWorld.

153.    For each of the reasons outlined above, (and given the fraudulent licence agreement) I know that PokeWorld website is unauthorised including based on the knowledge that no such NFT project had been authorised by TPCi, The Pokémon Company, or Nintendo, and the use of Pokémon intellectual property, including trademarks and copyrighted content, in a manner inconsistent with rightsholder and licensing guidelines.

36    Ms Fang gave evidence that TPCI was concerned that the respondent would launch PokeWorld to the general public, and/or sell Pokémon NFTs, all without the consent of the applicant.

37    In relation to the impact of the respondent’s conduct and threatened conduct, Ms Fang gave the following evidence:

159.    TPCi is very concerned about the irreparable and long-term impact of the above mentioned misrepresentations by the Respondents. TPCi is particularly concerned about the damage that TPCi, The Pokémon Company, Nintendo of America, Inc, the Nintendo Co. Ltd, and each of their licensees and consumers would suffer if the Respondents make the PokeWorld game available and/or issue Pokémon NFTs.

160.    It appears that the Respondents are engaging in a deliberate strategy to mislead consumers into believing that PokeWorld and its Pokémon NFTs are authorised by or affiliated with TPCi, including by engaging with third parties to create backdated media articles which suggest that this is the case and by creating websites to support this account. The conduct of the Respondents is of a concerted scale and, given the absence of any genuine connection or authorisation by TPCi, Nintendo or The Pokémon Company, is clearly deliberate.

161.    The Respondents have generated significant interest in the PokeWorld game on Twitter (approximately 13,500 followers). The PokeWorld website identifies that a "whitelist is opening soon" (indicating the date of November 2022 and that the game will be released in January 2023). I understand that joining a "whitelist" will enable a limited number of users to obtain early access to PokeWorld at first instance. Further, the Respondents may make NFTs available imminently, and by as soon as January 2023.

162.    As set out in paragraph 9 - 125 above, TPCi has spent significant time, resources and money to develop the Pokémon brand and reputation in Australia and globally. The continuation of the Respondents' misrepresentations has the capacity to seriously damage and erode the investments made by TPCi and the very significant goodwill enjoyed by TPCi in respect of its brand in Australia, including through its tightly controlled management of its games, product channels, and all forms (including digital forms) of representations of the Pokémon Characters.

38    Finally, Ms Fang gave evidence that TPCI was willing to give the usual undertaking as to damages to pay compensation in the event that the respondents or any third party were adversely affected by the interlocutory injunction sought by TPCI.

SERVICE OF PROCESS AND SUPPORTING MATERIALS ON THE RESPONDENTS

39    At the hearing of the interlocutory application for injunctive relief and discovery and disclosure orders this morning, there was no appearance by the respondents.

40    In respect of service of the originating application and supporting materials on the respondents, the applicant relies on a further affidavit of Mr Fixler sworn 20 December 2022. In summary, Mr Fixler deposed in that affidavit that at or around 4.40pm (AEDT) 19 December 2022 he instructed Ms Sarah Catania, a solicitor in the employ of Corrs Chambers Westgarth, solicitor for the applicant, to serve on the respondents copies of:

(1)    A cover letter addressed to the respondents advising as to the tentative interlocutory hearing before Justice Collier on 21 December 2022 and enclosing a confidentiality undertaking in relation to the applicant’s affidavits;

(2)    Originating Application dated 19 December 2022;

(3)    Statement of Claim dated 19 December 2022;

(4)    Genuine Steps Statement dated 19 December 2022; and

(5)    Affidavit of Mr Fixler dated 19 December 2022.

41    Annexed to Mr Fixler’s affidavit is a copy of the email sent by Ms Catania serving those documents on the following email addresses:

(1)    info@pokeworld.game;

(2)    info@kotiota.com.au;

(3)    Osheahayes31@outlook.com; and

(4)    Pokemon.pty.ltd@outlook.com.

42    Mr Fixler then deposed that the email addresses used by the applicant and outlined above were sourced from various online searches undertaken by the solicitor for the applicant and IFW Global.

43    Mr Fixler deposed that Ms Catania requested a “read receipt” on the email sent to the respondents and annexed a copy of the “relay” message received in response. A relay message refers to a confirmation that an email has been received by a recipient but the organisation has not, or does not, provide “read receipts”.

44    Mr Fixler then proceeded to instruct Ms Catania to serve on the same email addresses a sealed copy of the documents previously served, and this was sent at around 5.25pm (AEDT) 19 December 2022.

45    On 19 December 2022 the solicitor for the applicant also engaged IFW Global to personally serve relevant documents on the registered address of PPL and the address of the second respondent at the time that PPL was registered. Mr Fixler also instructed a paralegal of Corrs Chambers Westgarth to conduct a search of the Australian Electoral Roll for addresses associated with the name of the second respondent. This search revealed an already known address and a further Victorian address.

46    In relation to the personal service by IFW Global, Mr Fixler deposed at [18]–[24]:

18    Corrs has received three emails from Ken Gamble of IFW Global outlining the process the investigator completed to personally serve the documents on Xiaoyan Liu and to serve the documents on PPL. Now produced and shown to me and marked as “Annexure DGF-21” are copies of those emails.

19     Based on those emails from Mr Gamble, and from my discussions with the investigator, Edward Hallal, I have been informed of and believe the following matters.

20     Mr Hallal is a sub-contractor engaged by IFW Global. Mr Hallal is the owner of Behind the Truth Investigations, a company specialising in private investigations. Mr Hallal is a licenced private investigator through Victoria Police…

21     At or about 9.44 am on 20 December 2022, Mr Hallal attended and rang the doorbell at the Rosella Street Address. This was the address for Xiaoyan Liu at the time that PPL was registered. A woman answered the door who confirmed that she did not know of a person named Xiaoyan Liu. Mr Hallal also checked the names on the letter boxes at Units 2 and 3 but did not locate a name that resembled Xiaoyan Liu so left the premises at about 9.48 am.

22     At or about 10.23 am on 20 December 2022, Mr Hallal attended and rang the doorbell of the Thames Street Address which is the registered address and principal place of business of PPL and which is listed as the current address of Xiaoyan Liu. No one answered. Mr Hallal also rang the doorbell for Unit 4 at the front gate and no one answered. Mr Hallal spoke to the neighbour in Unit 3, who stated to Mr Hallal that an “Asian male” lived in Unit 4. Mr Hallal knocked at Unit 5 and a woman opened the door of Unit 5. Mr Hallal said to the woman that he was looking for Xiaoyan Liu, to which she responded “yes, that’s me”. Mr Hallal asked the woman “are you Xiaoyan Liu?” and she said “yes, that’s me”. Mr Hallal then served her with the documents, and the woman said “thank you”.

23     Later that morning, Mr Hallal returned to the Thames Street Address. Mr Hallal left one copy of the documents at the front doorstep of Unit 4 and another copy in the Unit 4 letterbox. Now produced and shown to me and marked as “Annexure DG 22” is an email from Mr Hallal with photographs showing he placed the envelope of documents in the Unit 4 letterbox.

24     Upon Mr Hallal’s return to the Thames Street Address as referred to in paragraph 23 above, the individual who opened the door at Unit 5 and previously identified herself as Xiaoyan Liu (as referred to in paragraph 22 above) was leaving the premises. Mr Hallal observed that the woman was wearing a name badge showing what appeared to be the name ‘Leslie’. Mr Hallal spoke to the woman again and asked her whether she had heard of PPL. The woman informed Mr Hallal that she had never heard of PPL, knew nothing about this matter and that it must be a case of mistaken identity or identity theft by her neighbour. Mr Hallal observed that the name on the letterbox for Unit 5 was “Yu’Shiyan Liu”.

47    Mr Fixler deposed at [16] that he was informed by Mr Watson, an investigator at IFW Global that a direct message was sent to the Twitter account of PPL, @PokeWorldP2E as follows:

“Dear Account Holder

We are process services acting for The Pokémon Company International, Inc (TPCi). TPCi has sued the suspected operators of this account in the Federal Court of Australia and a hearing has been set for 21 December. Refer to the attached letters for details.

Please also respond to this message with an email address via which TPCi’s lawyers may contact you and provide you with relevant Court documents.”

48    I am satisfied that the applicant has genuinely and meaningfully attempted to serve the documents on the respondents by the following means:

(1)    By email;

(2)    By direct message to PPL’s Twitter account;

(3)    By personal service to the known addresses of the respondents.

49    I am further satisfied that the present proceedings and this morning’s hearing have been brought to the attention of the respondents.

50    In the present circumstances, noting the urgency of the interlocutory relief sought by the applicant and notwithstanding the non-attendance of the respondents or failure to enter an appearance in the proceedings, I considered it appropriate for the present interlocutory application to be heard ex parte and a decision to be made on the relief sought by the applicant.

INTERLOCUTORY RELIEF

51    Further to the substantive relief sought by the applicant pursuant to s 232 of the Australian Consumer Law, the applicant seeks two forms of interlocutory relief. First, it seeks an interlocutory injunction pursuant to s 234 of the Australian Consumer Law. Second, it seeks discovery orders in order to progress the substantive relief it seeks in the substantive application.

52    Principles referable to the grant of interlocutory relief pursuant to s 234 of the Australia Consumer Law are not controversial. Section 234 relevantly provides:

234 Interim injunctions

(1) If an application is made under section 232, the court may, if it considers it is desirable to do so, grant an interim injunction under this subsection pending the determination of the application.

(2) If a responsible Minister or the regulator made the application under section 232, the court must not require the applicant or any other person to give any undertakings as to damages as a condition of granting the interim injunction.

(3) If:

(a) in a case to which subsection (2) does not apply the court would, but for this subsection, require a person to give an undertaking as to damages or costs; and

(b) a responsible Minister gives the undertaking;

the court must accept the undertaking by the responsible Minister and must not require a further undertaking from any other person.

53    The legal framework underpinning interlocutory applications of the present nature was comprehensively set out by Gleeson J explained in Reckitt Benckiser (Australia) Pty Limited v Procter & Gamble Australia Pty Limited [2015] FCA 753. As her Honour there explained:

31.    Section 18(1) provides that a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

32.    Section 29(1)(f) provides that a person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services, make a false or misleading representation concerning:

(i) a testimonial by any person; or

(ii) a representation that purports to be such a testimonial;

relating to goods or services.

33.    Section 33 provides that a person must not, in trade or commerce, engage in conduct that is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose or the quantity of any goods.

54    Her Honour continued:

Interlocutory injunctive relief

43.    Section 234 (1) of the Australian Consumer Law provides that if an application is made under s 232, the court may, if it considers it is desirable to do so, grant an interim injunction under the subsection pending the determination of the application.

44.    In Warner-Lambert Co LLC v Apotex Pty Ltd [2014] FCAFC 59; (2014) 106 IPR 218 at [68]-[70], the Full Court set out the principles which govern applications for interlocutory relief in the following terms:

...There are two inquiries that must be undertaken when determining whether an applicant should be granted an interlocutory injunction. The first relates to the strength of the applicant’s claim to final relief. The second relates to the balance of convenience or, as it is sometimes expressed, the balance of the risk of doing an injustice by either granting or withholding the interlocutory relief sought.

The principles to be applied in determining whether or not to grant interlocutory relief were considered by the High Court in Australian Broadcasting Corporation v O’Neill [2006] HCA 46; (2006) 227 CLR 57, including by Gummow and Hayne JJ at [65]-[72]. Gleeson CJ and Crennan J agreed at [19] with the explanation of the relevant principles in those paragraphs. In O’Neill Gummow and Hayne JJ stated at [65]:

The relevant principles in Australia are those explained in Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1; [(1968) [1968] HCA 1; 118 CLR 618]. This Court (Kitto, Taylor, Menzies and Owen JJ) said that on such applications the court addresses itself to two main inquiries and continued [at 622-623]:

    “The first is whether the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief ... The second inquiry is ... whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted.”

By using the phrase “prima facie case”, their Honours did not mean that the plaintiff must show that it is more probable than not that at trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. That this was the sense in which the Court was referring to the notion of a prima facie case is apparent from an observation to that effect made by Kitto J in the course of argument [at 620]. With reference to the first inquiry, the Court continued, in a statement of central importance for this appeal [at 622]:

    “How strong the probability needs to be depends, no doubt, upon the nature of the rights [the plaintiff] asserts and the practical consequences likely to flow from the order he seeks.”

Whether an applicant for an interlocutory injunction has made out a prima facie case and whether the balance of convenience favours the grant of such relief are related questions. It will often be necessary to give close attention to the strength of a party’s case when assessing the risk of doing an injustice to either party by the granting or withholding of interlocutory relief especially if the outcome of the interlocutory application is likely to have the practical effect of determining the substance of the matter in issue or if other remedies, including an award of damages, or an award of compensation pursuant to the usual undertaking, are likely to be inadequate.

45.    The Court is required to make an assessment of the applicant’s case for the purpose of deciding whether it has made out a prima facie case of sufficient strength to justify the grant of an interlocutory injunction to restrain the advertisements: cf Samsung v LG at [87].

46.    In considering whether to grant an interim injunction, the Court should also weigh up the real consequences to each party, taking into account both the public interests and the private interests involved: cf Trade Practices Commission v Santos Ltd [1992] FCA 523; (1992) 38 FCR 382 at 397.

47.    …To the extent that the grant or refusal of interlocutory relief is going to have the practical consequence of deciding the applicant’s claims for final relief, the applicant is required to demonstrate a relatively strong case: cf Samsung Electronics Co Ltd v Apple Inc [2011] FCAFC 156; (2011) 217 FCR 238 (“Samsung FC”) at [87]; Generic Health Pty Ltd v Otsuka Pharmaceutical Co., Ltd [2013] FCAFC 17; (2013) 296 ALR 50 per Emmett J at [26], Greenwood J at [253], and Bennett J at [121]-[128].

…

49.    The consideration of the balance of convenience involves a consideration of whether the likely harm to the applicant if no injunction is granted outweighs or is outweighed by the assessment of prejudice or harm to the respondent an injunction is granted (Samsung FC at [55], [62] and [66]). The question of whether damages will be an adequate remedy will ordinarily be considered as part of the balance of convenience (Samsung FC at [61]).

55    Turning to the present case, I have had regard to the evidence on which the applicant relies. I note that this evidence was filed to support interlocutory relief sought. Evidence at an interlocutory level may be acceptable notwithstanding that it may be inadequate at the final hearing: Victorian Egg Marketing Board v Parkwood Eggs Pty Ltd (1978) 33 FLR 294; [1978] FCA 27, Director, Fair Work Building Industry Inspectorate v Construction, Forestry, Mining and Energy Union [2016] FCA 1225 at [13], Bettles as trustee of the bankrupt estate of Bruce v Bruce [2021] FCA 1248 at [57]. I note that this evidence is not rebutted by any material filed by the respondents, and I am prepared to accept it at this interlocutory time. I further accept it, noting the level of detail of the evidence provided, and the authority of the deponents for the applicant.

56    I am satisfied that the applicant has demonstrated a strong prima facie case of contravention by the respondents of a provision of the Australian Consumer Law. Specifically, the evidence of the applicant strongly suggests conduct by the respondents, both historical and proposed conduct, which is designed to mislead consumers and other businesses (in contravention of the Australian Consumer Law) into erroneously believing that either the first respondent or Kotiota:

    is licensed or otherwise authorised by TPCI, Pokémon or Nintendo to:

•    design and develop Pokémon Games;

•    design and develop PokeWorld;

•    to operate the PokeWorld website;

•    issue, offer for sale and sell NFTs under and by reference to the name Pokémon; and/or

•    use the words “Pokemon” and/or Pokémon and/or PokeWorld; and/or

    is affiliated with, associated with or otherwise connected in the course of trade with, or approved by, TPCI, Pokémon or Nintendo.

57    Insofar as concerns the second respondent, the applicant has demonstrated in the evidence before the Court a strong prima facie case that the second respondent is knowingly involved in conduct of the first respondent, in that it appears that:

    Xiaoyan Liu is the sole director of, and shareholder in, the first respondent;

    Xiaoyan Liu is identified as a director of Kotiota on the Kotiota website;

    Xiaoyan Liu is a registrant of the Kotiota website;

    Xiaoyan Liu is a signatory to a licence agreement which falsely represents that the applicant is a party.

58    I accept that consumers in Australia who are or could be affected by the conduct of the respondents are those interested in Pokémon goods and/or services. I further accept that the Pokémon brand is very well-known in Australia, and in light of the evidence of historical promotion of the Pokémon brand in Australia, and what appears to be extensive uptake of products bearing that brand, I am satisfied that the relevant class of consumer involves a significant cross-section of the public.

59    On the evidence before me, both written and image, I am satisfied that a significant proportion of consumers would be misled by the conduct of the respondents into believing that there is a legitimate connection in the course of trade between the first respondent or Kotioto, and the applicant. I am satisfied that if the respondents were to commence operating a game under the name PokeWorld, or selling Pokémon NFTs, a substantial number of consumers and traders would be likely to be deceived into using the PokeWorld game or buying Pokémon NFTs. I further consider that there is a real prospect of reputational risk to the applicant from the conduct of the respondents (both historical and proposed), and that it is likely to suffer damage to its interests should the respondents not be immediately restrained pending final determination of the originating application.

60    I am satisfied that the interlocutory relief sought by the applicant would not have the practical consequence of determining the applicant’s claims for final relief, as in the event that the respondents successfully resisted the applicant’s claims they would be at liberty to continue their business activities.

61    Further, I am satisfied that the balance of convenience favours the grant of the interlocutory relief sought by the applicant, in circumstances where:

    I accept the submission of the applicant that it will be difficult to identify the number of customers who may have played PokeWorld, and/or bought Pokémon NFTs in the mistaken belief that those products were authorised by TPCI, Pokémon or Nintendo;

    if the respondents launch PokeWorld and sell Pokémon NFTs, the loss of goodwill on the part of TPCI, Pokémon and Nintendo in the Pokémon name, the Pokémon characters and their names would be difficult to quantify;

    if the products or services offered by the respondents are not of comparable quality to that offered by the applicant there is likely to be a significant loss of goodwill to the applicant;

     there is the potential for harm to consumers who play the PokeWorld game or purchase Pokemon NFTs in the mistaken belief of an association with the applicant, as well as the potential harm to licensees who have entered into commercial arrangements with the applicant because of the value of the applicant’s goodwill;

    I am satisfied that damages would be an inadequate remedy as matters presently stand, particularly in the absence of any further information concerning the respondents or their financial position; and

    In circumstances where the applicant has offered the usual undertaking as to damages.

62    It follows that the applicant is entitled to the interlocutory relief it has sought.

DISCOVERY

63    The applicant has sought an order for discovery in the ordinary exercise of the Court’s case management powers under Part 20 of the Federal Court Rules 2011 (Cth), relying in particular on rule 1.32 as well as sections 23 and 37P(3)(a) of the Federal Court of Australia Act 1976 (Cth). The applicant relies further on such decisions as Norwich Pharmacal Co & Ors v Commissioner of Customs and Excise [1973] 2 All ER 943 and Computershare Ltd v Perpetual Registrars Ltd (2000) 1 VR 626 as authority for the proposition that relief of this type is granted by Courts in aid of the administration of justice, in that it facilitates an applicant pursuing its rights in circumstances where critical information as to the respondent’s conduct rights is exclusively in the hands of another party (including an existing respondent to the proceeding).

64    The applicant further submits that the orders for discovery and disclosure it seeks are an appropriate means of identifying information known exclusively to the respondents, namely:

    the extent to which each of the respondents has engaged in additional misleading conduct;

    how the respondents have sought to deploy misleading representations in their current business activities; and

    any third party to which misleading representations have been made by the respondents.

65    Given the strength of the applicant’s prima facie case of misleading conduct on the part of the respondents, the submitted difficulty the applicant would experience in obtaining this information from anyone other than the respondents, and the desirability of this disclosure being made early in the proceedings, I am prepared to make the discovery and disclosure orders sought.

CONCLUSION

66    As I have already observed, the applicant is prepared to give the usual undertaking as to damages. I am further satisfied that the applicant is in a financial position to make good such an undertaking should it be required.

67    The applicant has asked for its costs of the present interlocutory proceedings. Notwithstanding that the applicant has been successful in obtaining the interlocutory relief it has sought, in light of the absence of the respondents I consider the preferable approach is to reserve costs at this stage.

68    Finally, at the hearing Mr Caine KC for the applicant submitted that any interlocutory orders made should incorporate a Penal Notice in terms contemplated by the Federal Court Enforcement, Endorsement and Contempt Practice Note (GPN-ENF), and recently ordered by Halley J in Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd (No 2) [2022] FCA 1458. While I note the seriousness of the matters currently before the Court, at this time I am not prepared to make orders including a penal notice, where:

    The relief presently ordered is interlocutory, following demonstration of a serious prima facie case, in contrast with final relief such as that ordered by Halley J in Powins (No 2);

    The matter was listed urgently, with expedited service;

    There was no appearance by the respondents at the hearing;

    It is not clear that the respondents will disregard interlocutory restraining orders made against them; and

    The applicant is plainly at liberty to bring further action to enforce the interlocutory restraining orders should those orders be disregarded by the respondents.

Associate:

Dated:    21 December 2022