FEDERAL COURT OF AUSTRALIA Sony Computer Entertainment Australia Pty Ltd v Warby [1999] FCA 1547 SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD AND KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT v DEREK WARBY N 629 OF 1999 LEHANE J 3 NOVEMBER 1999 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 629 OF 1999 BETWEEN: SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183) First Applicant KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT Second Applicant AND: DEREK WARBY Respondent JUDGE: LEHANE J DATE OF ORDER: 3 NOVEMBER 1999 WHERE MADE: SYDNEY THE COURT: 1. Declares that the respondent has infringed the second applicant's trade mark number 642679. 2. Orders that the respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant's registered trade mark number 642679 consisting of the mark "P.S." (the P.S. mark) by: (a) without the licence of the second applicant supplying or offering to supply in Australia any computer game player or any software including any CD ROM or packaging containing any such software which bears, or to which is otherwise applied, any representation of the P.S. mark or any mark substantially identical with or deceptively similar to the P.S. mark or in relation to which any mark substantially identical with or deceptively similar to the P.S. mark is otherwise used; and (b) without the licence of the second applicant procuring or inducing any other person to do any of the acts specified in subparagraph (a). 3. Further orders that: (a) the respondent deliver up to the applicant's solicitors, Allen Allen & Hemsley, within 28 days after service on him of a copy of this order, any software, including any CD ROM or packaging containing any such software, which bears or to which is otherwise applied any representation of the P.S. mark or any mark substantially identical or deceptively similar to the P.S. mark; and (b) the respondent pay the applicants' costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 629 OF 1999 BETWEEN: SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183) First Applicant KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT Second Applicant AND: DEREK WARBY Respondent JUDGE: LEHANE J DATE: 3 NOVEMBER 1999 PLACE: SYDNEY EX TEMPORE REASONS FOR JUDGMENT 1 This is a motion by which the applicant seeks summary judgment on an application for relief on the ground of alleged infringements of two registered trade marks. The second applicant, a Japanese corporation, is the proprietor of two registered trade marks (the marks), each registered in class 9 for computer game players combined with CD ROM drives and software. The first applicant is claimed to be an authorised user of each of the marks; but as no claim for pecuniary relief is pressed, it is unnecessary to refer further to the position of the first applicant. 2 The allegations against the respondent, in the statement of claim, are that he has sold CD ROMs containing software for use with computer game players which bear, or on which are stored electronically, representations of marks that are identical with, substantially identical with or deceptively similar to the marks. It is alleged that the CD ROMs said to have been supplied by the respondent were not manufactured by or with the licence of the second applicant and that the actions of the respondent have occurred without the consent of either applicant. Evidence read on the motion establishes that the applicant was properly served with the application and statement of claim and also, subsequently, with a letter from the applicants' solicitors informing him of directions which I made when setting the applicants' motion down for hearing, together with the notice of motion and the three substantive affidavits read in support of the motion. 3 The respondent has not lodged an appearance, did not appear before me this morning and has not appeared on any previous occasion when the matter has been before the court. Evidence read before me satisfies me to the necessary extent that the second applicant is the registered proprietor of the marks, that the respondent has supplied in Australia CD ROMs designed for use with the second applicant's computer consoles and that at least one of the CD ROMs so supplied bore a mark which is at least substantially identical with one of the marks. 4 In the circumstances established, the supply of that particular CD ROM undoubtedly, in my view, involved the use as a trade mark of a mark substantially identical with one of the marks. It follows, I think, that the applicants have established infringement by the respondent and I see no reason why in the circumstances declaratory and injunctive relief in appropriate terms should not be granted. I have in the course of argument discussed with counsel for the applicants the form of the orders to be made; for the avoidance of any doubt, I think it is appropriate that I set out in full the appropriate form of orders. 5 The orders which I make are as follows: 1. The Court declares that the respondent has infringed the second applicant's trade mark number 642679. 2. The Court orders that the respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant's registered trade mark number 642679 consisting of the mark "P.S." (the P.S. mark) by: (a) without the licence of the second applicant supplying or offering to supply in Australia any computer game player or any software including any CD ROM or packaging containing any such software which bears, or to which is otherwise applied, any representation of the P.S. mark or any mark substantially identical with or deceptively similar to the P.S. mark or in relation to which any mark substantially identical with or deceptively similar to the P.S. mark is otherwise used; and (b) without the licence of the second applicant procuring or inducing any other person to do any of the acts specified in subparagraph (a). 3. The Court further orders that: (a) the respondent deliver up to the applicant's solicitors, Allen Allen & Hemsley, within 28 days after service on him of a copy of this order, any software, including any CD ROM or packaging containing any such software, which bears or to which is otherwise applied any representation of the P.S. mark or any mark substantially identical or deceptively similar to the P.S. mark; and (b) the respondent pay the applicants' costs. I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice . Associate: Dated: 8 November 1999 Counsel for the Applicant: Mr M Green Solicitor for the Applicant: Allen Allen & Hemsley Date of Hearing: 3 November 1999 Date of Judgment: 3 November 1999