Nokia Corporation v Truong [2004] FCA 1109 (20 August 2004)

Last Updated: 7 September 2004

FEDERAL COURT OF AUSTRALIA

Nokia Corporation v Truong [2004] FCA 1109

INTELLECTUAL PROPERTY – Infringement of trademarks – Admission of liability – Summary judgment.


Federal Court Rules (Cth) O 20 r 1
Trade Marks Act 1995 (Cth)



General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125 referred to

NOKIA CORPORATION V DAVID TRUONG & ORS
V389 of 2004


CRENNAN J
20 AUGUST 2004
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 389 OF 2004

BETWEEN:	NOKIA CORPORATION APPLICANT
AND:	DAVID TRUONG FIRST RESPONDENT TELPOWER PTY LTD (ACN 086 347 766) SECOND RESPONDENT CHUNG YUN YAU THIRD RESPONDENT DIANE CHERYL ARDREY FOURTH RESPONDENT BETTA FONES PTY LTD (ACN 100 510 290) FIFTH RESPONDENT PHILIP WAHBA SIXTH RESPONDENT YOU INTERNATIONAL TRADING PTY LTD (ACN 003 975 479) SEVENTH RESPONDENT 8 DRAGONS PTY LTD (ACN 097 592 544) EIGHTH RESPONDENT KATHAY PTY LTD NINTH RESPONDENT
JUDGE:	CRENNAN J
DATE OF ORDER:	20 AUGUST 2004
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1 There be summary judgment for the applicants pursuant to O 20 r 1 of the Federal Court Rules in terms of the declarations and orders hereinafter set out.

In relation to claims against the eighth respondent for summary judgment on liability

THE COURT DECLARES THAT:

2 The court declares that the use of by the eighth respondent, whether by itself, its officers, its 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 classes 9, 18, 25, 38, 41 and 42;

(together, referred to as "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 respectively registered ("Registered Goods");
(f) goods of the same description as Registered Goods; or
(g) services that are closely related to Registered Goods;

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

AND THE COURT FURTHER ORDERS THAT:

3 The eighth respondent be restrained whether by itself, its officers, its employees or agents or otherwise howsoever from infringing any of the Nokia Trade Marks and in particular from using the Nokia Trade Marks or any of them 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 Registered Goods;
(b) goods of the same description as Registered Goods; or
(c) services that are closely related to Registered Goods;

not manufactured or provided by or under the authority of the applicant or by any other means whatsoever or otherwise procuring or inducing any other person to do any of the acts specified in this paragraph (2).

4 Within fourteen (14) days of the service of these orders upon it, the eighth respondent deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all goods in its possession, power, custody or control, or the possession, power, custody or control of its officers, its employees or agents or otherwise, 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.

5 Within fourteen (14) days of the service of these orders upon it, the eighth respondent deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all catalogues, price lists, brochures and other documents and materials in their possession, power, custody or control, or the possession, power, custody or control of its officers, its employees or agents or otherwise, 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.

6 The eighth respondent make discovery verified by affidavit to the applicant within twenty-eight (28) days of the making of these orders in respect of all purchases and sales by it of all items bearing the Nokia Trade Marks, or 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, which has been applied without the licence or authority of the Applicant.

7 The eight respondent 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 eighth 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.

8 The eighth respondent pay the applicant’s costs of the proceeding insofar as they relate to it.

In relation to claims against the fourth, seventh and eighth respondents on quantum

9 The hearing in respect of damages or an account of profits be adjourned for hearing by the Registrar on a date to be fixed by the Registrar.

In relation to claims against the first and ninth respondents

10 Insofar as the applicant’s Motion, notice of which was given on 20 May 2004, relates to the first and ninth respondents, it be adjourned to a date to be fixed by the Registrar.

11 Costs be otherwise reserved.

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

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 389 OF 2004

BETWEEN:	NOKIA CORPORATION APPLICANT
AND:	DAVID TRUONG FIRST RESPONDENT TELPOWER PTY LTD (ACN 086 347 766) SECOND RESPONDENT CHUNG YUN YAU THIRD RESPONDENT DIANE CHERYL ARDREY FOURTH RESPONDENT BETTA FONES PTY LTD (ACN 100 510 290) FIFTH RESPONDENT PHILIP WAHBA SIXTH RESPONDENT YOU INTERNATIONAL TRADING PTY LTD (ACN 003 975 479) SEVENTH RESPONDENT 8 DRAGONS PTY LTD (ACN 097 592 544) EIGHTH RESPONDENT KATHAY PTY LTD NINTH RESPONDENT
JUDGE:	CRENNAN J
DATE OF ORDER:	20 AUGUST 2004
WHERE MADE:	MELBOURNE

REASONS FOR JUDGMENT

1 By notice of motion dated 20 May 2004 the applicant sought summary judgment under O 20 r 1 of the Federal Court Rules against the second, fourth, seventh and eighth respondents. Consent orders have already been made in relation to other respondents, and on this motion, in respect of the second, fourth and seventh respondents. Further orders are only required in respect of those respondents for further hearings in relation to quantum. The applicant is now only proceeding for summary judgment against the eighth respondent, 8 Dragons Pty Ltd.

2 The applicant filed an application on 25 March 2004 under the Trade Marks Act 1995 (Cth) seeking declaratory and injunctive relief relating to the alleged breach of four (4) Australian Registered Trade Marks, collectively referred to as the "Nokia Trade Marks". Insofar as this judgment deals with the application for summary judgement it only affects the eighth respondent. Although other orders (set out below) deal with the other respondents, it is not necessary to detail the applicant’s claims in relation to the other seven (7) respondents. In relation to the eighth respondent, the applicant claimed generally that:

"...the eighth respondent has, without licence or authority of the applicant 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 were substantially identical or deceptively similar to one or more of the Nokia Trade Marks."

3 The eighth respondent did not dispute its liability. The motion for summary judgment was first heard on 2 July 2004. The eighth respondent did not appear at the hearing. The applicant submitted that on 5 February 2004 it had received a Deed of Undertaking and a Statutory Declaration admitting liability in response to a letter sent by the applicant’s solicitor on 15 December 2003, which demanded that the eighth respondent cease certain conduct which allegedly infringed the Nokia Trade Marks. However, the applicant claimed that it had initiated proceedings for summary judgment against the eighth respondent because the eighth respondent did not agree to delivery up of the infringing goods or to payment of damages or to provide an account of profits.

4 O 20 r 1 of the Federal Court Rules provides that:

"1.(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."

5 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] HCA 69; (1964) 112 CLR 125 at 129.

6 The application for summary judgment on 2 July 2004 was not granted because the strict formal requirements in respect of summary judgment had not been met. O 20 r 1 subr (1)(a) requires that a responsible person give evidence that in their belief there is no defence to the claim. The applicant filed affidavit evidence from such a responsible person on 1 July 2004. However that affidavit was not served on the eighth respondent prior to the hearing of the motion for summary judgment on 2 July 2004. For that reason, the application was adjourned to today. The applicant has now served that affidavit on the eighth respondent on 6 August 2004 and an affidavit of service dated 19 August 2004 has been filed.

7 By letter dated 15 August 2004 the eighth respondent informed the court that:

"The company, 8 Dragons Pty Ltd, has ceased trading as of 31 January 2004. Since then, we have moved out of the premises and sold the stock on hand to pay for the debts as well as the outstanting (sic.) bills.
...
As I have mentioned to [the applicant solicitor] earlier, I am willing to cooperate in any manner. However [neither] the company nor myself have any funds."

8 The applicant, having satisfied all the requirements of the Federal Court Rules in relation to summary judgment, the court will give summary judgment for the applicant pursuant to O 20 r 1 of the Federal Court Rules in the terms of declarations and orders which I now make and I include other orders sought by the applicant on its motion in respect of the first, fourth, seventh and ninth respondents.

I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Crennan.

Associate:


Dated: 20 August 2004

Counsel for the Applicant:	M Barker
Solicitor for the Applicant:	Corrs Chambers Westgarth
Solicitor for the 7th Respondent:	Ponte Earle Harrick
Date of Hearing:	20 August 2004
Date of Judgment:	20 August 2004