Jemella Australia Pty Ltd v Young (No. 3) [2008] FCA 579 (23 April 2008)

Last Updated: 2 May 2008

FEDERAL COURT OF AUSTRALIA

Jemella Australia Pty Ltd v Young (No. 3) [2008] FCA 579

PRACTICE AND PROCEDURE – consideration of issues arising upon the return date of motions in a proceeding in which search orders were made on 18 and 19 March 2008 in an application pursuant to Order 25B of the Federal Court Rules and Practice Note No. 24





























JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 v MICHAEL YOUNG, MJY HAIR AND BEAUTY PTY LTD ACN 125 666 711, TOM KOTSIMBOS AND JEMELLA LIMITED
QUD57 OF 2008

GREENWOOD J
23 APRIL 2008
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD57 OF 2008

BETWEEN:	JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 Applicant
AND:	MICHAEL YOUNG First Respondent MJY HAIR AND BEAUTY PTY LTD ACN 125 666 711 Second Respondent TOM KOTSIMBOS Third Respondent JEMELLA LIMITED Fourth Respondent

JUDGE:	GREENWOOD J
DATE OF ORDER:	23 APRIL 2008
WHERE MADE:	BRISBANE

THE COURT NOTES THE FOLLOWING UNDERTAKING:

The first respondent and second respondent, whether by itself, its officers, employees or agents or otherwise howsoever permanently undertake that they will cease and forever refrain from importing, distributing, offering for sale, selling or otherwise dealing in the course of trade in any goods to which Australian Trade Mark No. 951664 is applied or any sign that is substantially identical with or deceptively similar to the registered trade mark is applied to such goods without the licence, authority or consent of the registered trade mark proprietor.

THE COURT ORDERS THAT:

1. All parties are granted leave to inspect the documents produced to the Court by the independent solicitor, as received from the independent computer expert and to take copies at their expense of the said documents, being limited to those seized pursuant to the orders of this court dated 18 March 2008 and 19 March 2008.

2. The parties have leave to take copies of all documents seized pursuant to the orders of this Court dated 18 March 2008 and 19 March 2008;

3. That within seven days of the date of this order, the Registrar release to the first respondent or its solicitors all documents seized pursuant to the orders of this court dated 18 March 2008;

4. That within seven days of the date of this order, the Registrar release to Synergy Hair Group Pty Ltd or its advisors all documents and other items seized pursuant to the orders of this court dated 19 March 2008;

5. The orders made by paras 27 and 28 of the orders made on 18 March 2008 and 19 March 2008 shall be extended for a further seven days from the date of this order.

6. The applicant file and serve its statement of claim (including full particulars of loss and damage) on the first and second respondents within 28 days of this order;

7. Each of the first and the second respondents to the proceeding each file a defence in these proceedings within 28 days of service of the applicant’s statement of claim.

8. The parties have liberty to apply to have the matter re-listed upon providing three business days’ notice.

9. The matter will be listed for directions at 9.30am on Monday, 7 July 2008.

10. The costs of and incidental to each of the notices of motion that have been listed this morning are reserved.


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

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD57 OF 2008

BETWEEN:	JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 Applicant
AND:	MICHAEL YOUNG First Respondent MJY HAIR AND BEAUTY PTY LTD ACN 125 666 711 Second Respondent TOM KOTSIMBOS Third Respondent JEMELLA LIMITED Fourth Respondent

JUDGE:	GREENWOOD J
DATE:	23 APRIL 2008
PLACE:	BRISBANE

EX TEMPORE REASONS FOR JUDGMENT

1 The applicants in the proceeding obtained search orders on 18 and 19 March 2008 in reliance upon Order 25B of the Federal Court Rules and matters recited in the Federal Court Practice Note No. 24 supported by the relevant affidavit material and particular undertakings. On 18 March 2008, the Court granted interim orders restraining the first, second and third respondents from engaging in particular conduct. On the return date today, no interim relief is pressed against the third respondent. The first and second respondents have offered an undertaking to the Court in answer to any extension of interlocutory restraining orders pending trial.

2 The following undertaking has been offered by counsel for the first and second respondents, Mr Horak:

The first respondent and second respondent, whether by itself, its officers, employees or agents or otherwise howsoever permanently undertake that they will cease and forever refrain from importing, distributing, offering for sale, selling or otherwise dealing in the course of trade in any goods to which Australian Trade Mark No. 951664 is applied or any sign that is substantially identical with or deceptively similar to the registered trade mark is applied to such goods without the licence, authority or consent of the registered trade mark proprietor.

3 The Court has accepted that undertaking and in reliance upon it finds no basis to extend pending the trial of the action, an interlocutory injunction order against the first or second respondents. The applicants in the face of the undertaking offered to the Court do not seek an extension of the present interim injunction.

4 The applicants in the proceeding have formulated some draft orders which have been discussed with counsel for the respondent this morning. One of the orders that attracted some controversy is a proposal for an order that the operation of paras 27 and 28 of the search orders made on 18 and 19 March 2008 as against the first respondent in the proceedings, Mr Michael Young, be extended until 7 May 2008.

5 Mr Horak, on behalf of the respondents in the proceeding, has emphasised that there are public policy reasons why those orders ought not to be extended consistent with the formulation of the Federal Court practice note number 24, dealing with Anton Piller orders, which suggests that any period during which the respondent is to be restrained from informing any other person of the existence of the search order should be as short as possible and not extend beyond 4.30 pm on the return date of the order.

6 Mr Horak makes submissions that, in order to extend Order 27, which is in these terms, ‘except for the sole purpose of obtaining legal advice, you (Mr Young), must not until 4.30 pm on the return date directly or indirectly inform any person of this proceeding or of the contents of this order or tell any person that a proceeding has been or may be brought against you by the applicant’ and order 28, a notice of motion ought to have been filed seeking specifically that relief. Reliance is placed upon a decision of Madgwick J in Computer Interchange Pty Ltd v Microsoft Corporation [1999] FCA 198 giving emphasis to the importance of the disposition of controversies, whether final or interlocutory, in the well of the Court and thus publicly thereby emphasizing the importance of a party remaining free to talk about a particular action taken against that party.

7 For present purposes, I am not persuaded that it is inappropriate to extend the order for a brief time. I say that because although I accept the force of the proposition that a party ought not to be unduly restrained especially in respect of a prohibition upon discussing operative orders that are made against that party, the circumstances which seem to me to be influential in briefly extending those orders include the consideration that the ordinary course of events would normally reveal, by force of the reports of the independent solicitor and the independent computer experts, the documents which the applicants would examine and then be in a position to form views about issues in the proceeding.

8 Unfortunately, in this particular case, the independent computer experts seem to have misdirected themselves about their duties and responsibilities under the orders and thus did not examine the hard drives and isolate documents and then transfer them to a disk to enable the applicants to have the benefit of that inspection and thus exhaust, in that sense, the operation of the prohibited acts order (Order 27).

9 However, I am persuaded that it is not in the public interest to extend these things too far and what I propose to do is make an order that the operation of paras 27 and 28 of the search orders made on 18 and 19 March 2008 as against the first respondent be extended for seven days from the date of this order.

10 As to the remaining orders, I propose to make orders in these terms:

(1) All parties are granted leave to inspect the documents produced to the Court by the independent solicitor, as received from the independent computer expert and to take copies at their expense of the said documents, being limited to those seized pursuant to the orders of this court dated 18 March 2008 and 19 March 2008.

(2) The parties have leave to take copies of all documents seized pursuant to the orders of this court dated 18 March 2008 and 19 March 2008;

(3) That within seven days of the date of this order, the Registrar release to the first respondent or its solicitors all documents seized pursuant to the orders of this court dated 18 March 2008;

(4) That within seven days of the date of this order, the Registrar release to Synergy Hair Group Pty Ltd or its advisors all documents and other items seized pursuant to the orders of this court dated 19 March 2008;

(5) The applicant file and serve its statement of claim (including full particulars of loss and damage) on the first and second respondents within 28 days of this order;

(6) Each of the first and the second respondents to the proceeding each file a defence in these proceedings within 28 days of service of the applicant’s statement of claim.

(7) The parties have liberty to apply to have the matter re-listed upon providing three business days’ notice.

(8) The matter will be listed for directions at 9.30am on Monday, 7 July 2008.

(9) The costs of and incidental to each of the notices of motion that have been listed this morning are reserved.

I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.

Associate:

Dated: 23 April 2008

Counsel for the Applicant:	Mr O’Brien
Solicitor for the Applicant:	Mr D Brown, McInnes Wilson Lawyers
Counsel for the Respondent:	Mr I Horak
Solicitor for the Respondent:	Zolis Lawyers
Date of Hearing:	23 April 2008
Date of Judgment:	23 April 2008