Sony Computer Entertainment Australia Pty Ltd v Dannoun [2001] FCA 1235

FEDERAL COURT OF AUSTRALIA

Sony Computer Entertainment Australia Pty Ltd v Dannoun [2001] FCA 1235 TRADE MARKS – infringement by importation for sale or commercial distribution of CD-ROM computer games bearing counterfeit trade marks – infringement by offering for sale and selling – importation under aliases – breach of inter partes undertaking not to import or offer for sale or to sell – findings of infringement – no question of principle

Trade Marks Act 1995 (Cth) s 120(1)

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED

(ACN 077 583 183) & ANOR v MOHAMED SAMIR DANNOUN & ANOR

N 243 OF 2000

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED

(ACN 077 583 183) & ANOR v MOHAMED SAMIR DANNOUN

N 965 OF 2000

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED

(ACN 077 583 183) & ANOR v MOHAMED SAMIR DANNOUN

N 973 OF 2000

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED

(ACN 077 583 183) & ANOR v MOHAMED SAMIR DANNOUN

N 974 OF 2000

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED

(ACN 077 583 183) & ANOR v MOHAMED SAMIR DANNOUN & ORS

N 83 OF 2001

LINDGREN J

29 AUGUST 2001

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 243 OF 2000

BETWEEN: SONY COMPUTER ENTERTAINMENT AUSTRALIA

PTY LIMITED (ACN 077 583 183)

FIRST APPLICANT

KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT

SECOND APPLICANT

AND: MOHAMED SAMIR DANNOUN

FIRST RESPONDENT

SYDNEY MARKETS LIMITED (ACN 077 119 290)

SECOND RESPONDENT

JUDGE: LINDGREN J

DATE OF ORDER: 29 AUGUST 2001

WHERE MADE: SYDNEY

[In these orders "the Sony Trade Marks" means the second applicant's registered Trade Marks No 642678 (the word mark "PlayStation") and No 642679 (a device mark comprising a stylised representation of a vertical letter "P" and a horizontal letter "S" intertwined).] THE COURT DECLARES THAT: 1. The first respondent has infringed the Sony Trade Marks and each of them by: (A) importing, under the names "Mohammed Samir Dannoun", "Mohamed Samir Dannoun" and "Sam Turk" respectively,: (i) 1,115 CD-ROMs which were seized on 22 October 1999 by a delegate of the Chief Executive Officer of Customs under s 133 of the Trade Marks Act 1995 (Cth); (ii) 903 CD-ROMs which were seized on 3 December 1999 by a delegate of the Chief Executive Officer of Customs under s 133 of the Trade Marks Act 1995 (Cth); and (iii) 2,186 CD-ROMs which were seized on 16 February 2000 by a delegate of the Chief Executive Officer of Customs under s 133 of the Trade Marks Act 1995 (Cth): and which contained software: (a) in which were stored electronically representations of marks; and (b) by reference to marks that are substantially identical to the Sony Trade Marks ("the Goods"). (B) offering to sell and selling at Paddy's Markets Flemington, without the licence of the second applicant, to an agent of the first applicant: (i) on 27 August 2000; and (ii) on 15 October 2000; CD-ROMs containing software: (a) in which were stored electronically representations of marks; and (b) by reference to marks that are substantially identical to the Sony Trade Marks. 2. By importing as referred to in Declaration 1(A)(ii) and (iii) above and offering for sale and selling as referred to in Declaration 1(B) above, the first respondent breached an undertaking in writing he gave on or about 5 November 1999 to the second applicant to "refrain from importing, selling or offering for sale any counterfeit computer games or associated hardware for the Sony 'PlayStation' computer game console".