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". THE COURT ORDERS THAT: 3. The first respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Sony Trade Marks and each of them by: (a) without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (b) 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 in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (c) without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in subparagraph 3(a) or 3(b). 4. The Goods, or such of them as have not already been forfeited to the Commonwealth, be forfeited to the Commonwealth. 5. The first respondent deliver up to the applicants all CD-ROMs containing software for use with computer game players which bear or in which are stored electronically representations of marks that are identical with, substantially identical with, or deceptively similar to the Sony Trade Marks or either of them in his possession, power or control. 6. The applicants file and serve any submissions on costs by 21 September 2001. 7. The respondents file and serve any submissions on costs by 19 October 2001. 8. The proceeding be listed on 29 October 2001 at 9.30 am for the making of orders on 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 965 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 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 respondent has infringed the Sony Trade Marks and each of them by importing under the name "Anis Lakari" for the purpose of sale, without the licence of the second applicant, 420 CD-ROMs which were seized on 3 August 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"). THE COURT ORDERS THAT: 2. The respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Sony Trade Marks and each of them by, without the licence of the second applicant,: (a) importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (b) 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 in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (c) procuring or inducing any other person to do any of the acts specified in subparagraph 2(a) or 2(b). 3. The Goods be forfeited to the Commonwealth. 4. The applicants file and serve any submissions on costs by 21 September 2001. 5. The respondent file and serve any submissions on costs by 19 October 2001. 6. The proceeding be listed on 29 October 2001 at 9.30 am for the making of orders on 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 973 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 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 respondent has infringed the Sony Trade Marks and each of them by importing under the name "John Laperovze" for the purpose of sale, without the licence of the second applicant, 350 CD-ROMs which were seized on 3 August 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"). THE COURT ORDERS THAT: 2. The respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Sony Trade Marks and each of them by, without the licence of the second applicant,: (a) importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (b) 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 in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (c) procuring or inducing any other person to do any of the acts specified in subparagraph 2(a) or 2(b). 3. The Goods be forfeited to the Commonwealth. 4. The applicants file and serve any submissions on costs by 21 September 2001. 5. The respondent file and serve any submissions on costs by 19 October 2001. 6. The proceeding be listed on 29 October 2001 at 9.30 am for the making of orders on 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 974 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 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 respondent has infringed the Sony Trade Marks and each of them by importing under the name "Johny Aras" for the purpose of sale, without the licence of the second applicant, 240 CD-ROMs which were seized on 3 August 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"). THE COURT ORDERS THAT: 2. The respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Sony Trade Marks and each of them by, without the licence of the second applicant,: (a) importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (b) 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 in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (c) procuring or inducing any other person to do any of the acts specified in subparagraph 2(a) or 2(b). 3. The Goods be forfeited to the Commonwealth. 4. The applicants file and serve any submissions on costs by 21 September 2001. 5. The respondent file and serve any submissions on costs by 19 October 2001. 6. The proceeding be listed on 29 October 2001 at 9.30 am for the making of orders on 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 83 OF 2001 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 JANAN DIAB SECOND RESPONDENT AHMAD HADDAD THIRD 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 respondents have, and each of them has, infringed the Sony Trade Marks and each of them by importing under the name "Allen Ramzy" for the purpose of sale, without the licence of the second applicant, 1,261 CD-ROMs which were seized on 17 January 2001 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"). THE COURT ORDERS THAT: 2. Each respondent, whether by himself, herself, his or her servants or agents or otherwise, be restrained from infringing the Sony Trade Marks and each of them by: (a) without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears, or in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (b) 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 in which is stored electronically, any representation of either of the Sony Trade Marks or any mark substantially identical with or deceptively similar to either of them or in relation to which any mark substantially identical with or deceptively similar to either of them is otherwise used; (c) without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in subparagraph 2(a) or 2(b). 3. The Goods be forfeited to the Commonwealth. 4. The applicants file and serve any submissions on costs by 21 September 2001. 5. The respondents file and serve any submissions on costs by 19 October 2001. 6. The proceeding be listed on 29 October 2001 at 9.30 am for the making of orders on costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. GENERAL DISTRIBUTION 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 IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 965 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 RESPONDENT IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 973 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 RESPONDENT IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 974 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 RESPONDENT IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 83 OF 2001 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 JANAN DIAB SECOND RESPONDENT AHMAD HADDAD THIRD RESPONDENT JUDGE: LINDGREN J DATE: 29 AUGUST 2001 PLACE: SYDNEY REASONS FOR JUDGMENT introduction 1 These reasons for judgment relate to five proceedings for infringement of registered trade marks. The applicants claim, in all five proceedings, that the respondents (with the exception of the second respondent in proceeding N 243 of 2000) have imported for the purpose of sale or commercial distribution, CD-ROMs which bear, or in which are stored electronically, representations of the Sony Trade Marks (defined below) that are identical with, or substantially identical with, or deceptively similar to the Sony Trade Marks, and that the respondents have thereby infringed the Sony Trade Marks. All five proceedings involve a claim for trade mark infringement on the basis of the importation of counterfeit Sony "PlayStation" games. The issue in dispute over the importations in all five proceedings concerns the true identity of the importer. The first proceeding, N 243 of 2000, also involves a claim by the applicants that the first respondent has infringed the Sony Trade Marks by offering for sale and selling such CD-ROMs at Paddy's Markets Flemington and that the first respondent has contravened the Fair Trading Act 1987 (NSW) in connection with that activity. 2 Proceeding N 243 of 2000 was settled as between the applicants and the second respondent, Sydney Markets Ltd ("Sydney Markets"). It was heard on Monday 20 August 2001 as between the applicants and the first respondent, Mohamed Samir Dannoun ("Mr Dannoun"). Mr Dannoun was the only respondent to the second, third and fourth proceedings, which were heard together on Thursday 23 August 2001. The fifth proceeding was heard on Friday 24 August 2001. Mr Dannoun, Ms Diab and Mr Haddad were respectively the first, second and third respondents to that fifth proceeding. Consequently, all five proceedings involved Mr Dannoun, and one proceeding, N 83 of 2001, involved him along with two other individuals claimed to be also involved in the importation relevant to that case. 3 The second applicant, Kabushiki Kaisha Sony Computer Entertainment ("KKSCE"), is incorporated in Japan and is the manufacturer and distributor of the Sony "PlayStation" computer game console and the owner of Australian registered trade marks Nos 642678 and 642679 ("the Sony Trade Marks") in Class 9 for computer game players combined with CD-ROM drives and associated software. The first applicant, Sony Computer Entertainment Australia Pty Ltd ("Sony Computer Australia"), is the Australian subsidiary of KKSCE, the distributor of the Sony "PlayStation" computer game console in Australia, and the authorised user of the Sony Trade Marks. 4 Registered trade mark No 642678 is the word mark "PlayStation". Registered trade mark No 642679 is a device mark consisting of a stylised representation of a vertical letter "P" and a horizontal "S" intertwined. 5 Sony Computer Australia, with the authority of KKSCE and on its behalf, gave to the Chief Executive Officer of Customs ("Customs CEO") a notice under s 132 of the Trade Marks Act 1995 (Cth) ("the TM Act") objecting to the importation of goods infringing the Sony Trade Marks. Such a notice was in force at the times of the events with which these cases are concerned. 6 I find that, in all five cases, there were imported for the purpose of sale large numbers of CD-ROM computer games containing software for use with computer game players, which bear, or in which are stored electronically, representations of marks that are identical with, or substantially identical with, or deceptively similar to, the Sony Trade Marks. three procedural matters 7 In proceeding N 243 of 2000, on 16 November 2000 I declared that Mr Dannoun had committed a contempt of certain interlocutory orders which the Court had made on 5 September 2000, by, on 15 October 2000 at a stall at Paddy's Markets Flemington, without Sony Computer Australia's licence, offering to supply and supplying compact discs containing software: (a) in which were stored electronically representations of marks; and (b) by reference to marks that were substantially identical with the Sony Trade Marks. 8 Proceeding N 243 of 2000 had been commenced on 21 March 2000 against "Sam Turk". The only infringement then alleged was that involved in an importation by "Mr Sam Turk" of 2,186 CD-ROM games of various titles which had been notified by a "Notice of Seizure to Objector" given to Sony Computer Australia by the Australian Customs Service ("ACS") dated 16 February 2000. The applicants subsequently became convinced that "Sam Turk" was an alias for Mr Dannoun. Accordingly, on their application, the title of the proceeding was amended to name Mr Dannoun, instead of Sam Turk, as respondent. The proceeding has undergone several changes and the case against Mr Dannoun is currently pleaded in a second further amended statement of claim which was filed on 20 December 2000. 9 On 5 September 2000 I ordered that until further order, Mr Dannoun, whether by himself, his servants or agents or otherwise, be restrained from infringing the Sony Trade Marks. By notice of motion filed on 27 October 2000, the applicants sought an order that Mr Dannoun be found guilty of contempt of court by reason of his disobedience on two occasions of the interlocutory orders. Mr Dannoun, who appeared unrepresented, denied an allegation in the statement of charge, that he had sold at Penrith Showground on Wednesday 27 September 2000, but admitted that he had, as alleged in the statement of charge, sold at Paddy's Markets Flemington on 15 October 2000. In relation to the former, Mr Dannoun said that the seller was his son who was not Mr Dannoun's agent. I was not satisfied that the applicants had proved a contempt by Mr Dannoun on 27 September 2000. In relation to the occasion on 15 October 2000, Mr Dannoun provided a written statement to the effect that the infringing "PlayStation" games which he sold, he sold by mistake due to "recklessness", not intentional wrongdoing. He said that after the making of the Court orders on 5 September, he had intentionally sold "only Dreamcast and original [non-counterfeit] second hand Sony games along with 'PlayStation' accessories." He explained that the infringing "PlayStation" games had been returned to him by customers who claimed they were defective; that he had accidentally placed them alongside the original "PlayStation" games; and that due to oversight he had sold them. Mr Dannoun's statement made it clear that the alleged contempt on 15 October 2000 had occurred, and I ordered Mr Dannoun to pay a penalty of $3,500.00. 10 On the present hearing, I asked Mr Dannoun whether, in the light of my earlier finding of contempt, he had any objection to my hearing these proceedings and he said he had not. If he had objected, I would not have disqualified myself in view of the fact that the finding of contempt was based on nothing more than Mr Dannoun's own written statement, which would have been before any Judge hearing the proceedings. 11 The second procedural matter is that in the first proceeding (N 243 of 2000), the second further amended statement of claim includes an allegation of infringement by selling after the commencement of the proceeding. The second further amended statement of claim was filed on 20 December 2000 pursuant to leave granted on 18 December 2000 with Mr Dannoun's consent. The post-commencement sales were alleged to have taken place on 27 August 2000 and 15 October 2000 (the latter was the selling which Mr Dannoun admitted had taken place on the hearing of the contempt motion). Notwithstanding the fact that the leave to file had been given with Mr Dannoun's consent, I raised again with him on the present hearing the question whether he consented to have the post-commencement causes of action dealt with in this proceeding. Mr Dannoun said he wished to have the post-commencement causes of action alleged against him dealt with on the present hearing. If he had not, I could have granted leave to the applicants to commence a fresh proceeding instanter and ordered that the evidence in the proceedings already on foot also be evidence in that proceeding. I would have followed that course, since Mr Dannoun has always understood that the post-commencement causes of action were to be heard on this occasion. 12 The third procedural matter relates to the second, third and fourth proceedings (N 965, N 973 and N 974 of 2000). Proceeding N 965 of 2000 was commenced on 5 September 2000 against "Anis Lakari", proceeding N 973 of 2000 was commenced on 7 September 2000 against "John Laperovze" and proceeding N 974 of 2000 was also commenced on 7 September 2000 against "Johnny Aras". Subsequently, the applicants became convinced that these three names were also aliases for Mr Dannoun and sought leave, which I granted, to amend by naming Mr Dannoun instead of those "persons" as respondent in those three proceedings. relevant provisions of the trade marks act 1995 (CTH) 13 Subsection 120(1) of the TM Act provides as follows: "A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered." Section 17 of the TM Act defines a trade mark as: "…a sign used,…, to distinguish goods…dealt with or provided in the course of trade by a person from goods…so dealt with or provided by any other person." The word "sign" is defined in s 6 of the TM Act to include any "letter, word, name,…device,…". Subsection 7(4) of the TM Act provides that in that Act: "use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)." [I discussed the notion "use of a trade mark in relation to goods" in the context of importation in Sony Computer Entertainment Australia Pty Ltd v Saleh [2001] FCA 717 at [34]-[40].] Proceeding N 243 of 2000 Pleading in N 243 of 2000 14 The causes of action alleged in the second further amended statement of claim can be summarised as follows: Trade Mark Infringement – Importation · Importation of 1,115 CD-ROMs, designated owner "Mohammed Samir Dannoun" of 41 Banksia Road, Greenacre NSW 2190, notified in a letter from the ACS dated 22 October 1999; · Importation of 903 CD-ROMs, designated owner "Mohamed Samir Dannoun" of 41 Banksia Road, Greenacre NSW 2190, notified in a letter from the ACS dated 3 December 1999; · Importation of 2,186 CD-ROMs, designated owner "Mr Sam Turk" of 240 Lakemba Street, Lakemba NSW 2195, notified in a letter from the ACS dated 16 February 2000. In his defence, Mr Dannoun admits the first two of these importations but denies the third. Trade Mark Infringement – Sales · Selling on 27 August 2000 to an agent of Sony Computer Australia, three CD-ROM computer games, namely, "Dance Dance Revolution Third Remix", "X-Men Mutant Academy" and "FIFA 2000 Major League Soccer" at Paddy's Markets Flemington; · Selling on 15 October 2000 to an agent of Sony Computer Australia, three CD-ROM computer games, namely, "Skateboarding", "3 in 1 Driver Collection" and "F1 Racing" at Paddy's Markets Flemington. Mr Dannoun admits both sales, asserting, however, that he did not sell on any occasion other than these two, when an agent of Sony bought from him. In his defence Mr Dannoun admits that he sold approximately 60 pirated CD-ROMs on the basis of one for $10.00 and three for $25.00, and he estimates his total "intake" for selling them at approximately $500.00 in total. He relies on the explanation he gave in his written statement in connection with the contempt motion referred to above. Breach of Undertaking · Breach of written undertaking Mr Dannoun signed on or about 5 November 1999 to refrain from importing, selling or offering for sale any counterfeit computer games or associated hardware for the Sony "PlayStation" computer game console, by reason of the two sales on 27 August 2000 and 15 October 2000 referred to above. Mr Dannoun admits signing the written undertaking on 5 November 1999 and it follows from his admission of importation on the second of the three occasions mentioned and his admission of selling on both occasions mentioned above, that he breached this undertaking. Contravention of ss 42, 44 and 49 of the Fair Trading Act 1987 (NSW) ("the FT Act") · Misrepresenting to members of the public, in trade or commerce, what may be conveniently summarised as the "genuineness" of the CD-ROMs offered for sale. Mr Dannoun denies having misrepresented that the CD-ROMs were genuine, contending that he nearly always informed his customers that they were "pirated" and that, in any event, it was common knowledge that they were. Facts and conclusion in N 243 of 2000 15 As noted earlier, the only issue as to importation concerns the third, that is to say, the importation by "Sam Turk" of 2,186 CD-ROMs notified in the letter from the ACS dated 16 February 2000. Mr Dannoun denied this importation in his written defence as follows: "… I do not agree to [being responsible for the third importation] because this person is SAM TURK not myself. I don't know this person he is of no relation to me. As stated in the applicants affidavit this Sam Turk's address is in 240 Lakemba St, Lakemba where there is also another Mohamad Dannoun residing at these premises, also the phone NO for Sam Turk belongs to a MR SAM DANN who supposidly resides at 6 Shenton Ave, I did live at Shenton Ave and left these premises in 1997." 16 In relation to the alleged infringement by sales, Mr Dannoun has admitted in writing selling at Paddy's Markets Flemington, on 27 August 2000 and 15 October 2000, the occasions on which the applicants rely in their pleading. Both occasions post-date the commencement of this proceeding but the former precedes, while the latter post-dates, the making of the interlocutory orders on 5 September 2000. Both sales pleaded post-date the signing of the undertaking on 5 November 1999. 17 In relation to the alleged contravention of the FT Act, both in his oral evidence and his written defence, Mr Dannoun's case is that he has never misled his customers into believing that they were buying original CD-ROMs of the applicants. On the contrary, he claims that he would inform his customers that the games were "copied games". In particular, he states he informed them that they would need "a modified chip" in their "PlayStation" console, without which the games would be useless. In addition, he states that the price at which he was selling would have made it clear to his customers that the games were not "originals". 18 It follows that there is very little in dispute in this first proceeding, the only issues being whether Mr Dannoun is the "Sam Turk" responsible for the third importation of counterfeit CD-ROMs and whether Mr Dannoun has breached the FT Act. Accordingly, the applicants are entitled to, substantially, the relief which they seek. It is necessary, however, for me to address the disputed issues. I will address the evidence in chronological sequence. 19 On 20 November 1997 Mr Dannoun of 6 Shenton Avenue, Bankstown, applied to Sydney Markets for a permit for a regular "stand" at the Sunday Paddy's Markets Flemington. Mr Dannoun admits he lived at 6 Shenton Avenue, Bankstown in 1997. 20 On 20 June 1999 Mr Dannoun applied to Sydney Markets for an addition to the goods which he was permitted to sell: his existing permit related to clothes and the addition was described as "ACCESERIES FOR PLAYSTATION". 21 The first importation (admitted by Mr Dannoun) of present concern was the importation of 1,115 CD-ROMs notified by the ACS on 22 October 1999, the importer being "Mohammed Samir Dannoun of 41 Banksia Rd, Greenacre NSW 2190". It was following this first importation that Mr Dannoun provided the written undertaking of 5 November 1999. 22 The second importation (admitted by Mr Dannoun) was of 903 CD-ROMs, the subject of a notice from the ACS dated 3 December 1999. The importer was shown as "Mohamed Samir Dannoun of 41 Banksia Road, Greenacre NSW 2190". 23 The third and disputed importation was the subject of a notice dated 16 February 2000 from the ACS and was of 2,186 CD-ROMs. The importer was shown as "Mr Sam Turk of 240 Lakemba St, Lakemba NSW 2195". 24 When this proceeding was commenced on 21 March 2000 against "Sam Turk", service was attempted on such a person at 240 Lakemba Street, Lakemba. It was discovered that those premises housed a business called "Lakemba Continental Delicatessen" and the process server reported to the applicants' solicitors, Allen Allen & Hemsley (now "Allens Arthur Robinson") ("Allens"), that a male occupant at those premises said to the process server: "I'm Mr Danoon…I work here…Chris Doolan lives upstairs…I've never heard of Sam Turk but I have received letters for him…I just send them back." 25 A title search indicated that at 240 Lakemba Street, Lakemba there was a ground floor lock-up shop which was leased by registered lease 6641103 to "Mohamed Dannoun" (the term of the lease expired on 17 December 2000 and there was an option of renewal for a further three years). 26 A search in respect of the registered business name "Lakemba Continental Mixed Business" revealed that the principal place of business for that business was 240 Lakemba Street, Lakemba and that the person carrying it on was "Mohammed Dannoun of 257 Lakemba Street, Lakemba NSW 2195 (as of 27 January 1998)". 27 The telephone number for "Sam Turk" recorded on the importation documents was 0415 669 151. Unidial Australia revealed, pursuant to a subpoena issued on 25 May 2000, that the subscriber for that mobile telephone number was "Mr Sam Dann of 6 Shenton Ave, Bankstown NSW 2200". ACS inquiries, the result of which was communicated to Allens by fax dated 5 June 2000, revealed that the importer was in fact believed to be "Mr Sam Dann of 6 Shenton Ave, Bankstown NSW 2200 ph (mob) 0415 669 151". As noted earlier, Mr Dannoun admits having lived at 6 Shenton Ave, Bankstown, stating that he left those premises in 1997. There is evidence of telephone calls being made from the mobile service in the name of Sam Dann to Mr Dannoun's home at 41 Banksia Road, Greenacre and to his business address at 14A Chapel Road, Bankstown. (Mr Dannoun is the registered proprietor of the business name "Static Clothing", the name of a clothing retail business of which the principal place of business is 14 Chapel Road, Bankstown and the person carrying on the business is Mohamed Dannoun of 41 Banksia Road, Greenacre. The evidence showed that "14A Chapel Road, Bankstown" was the same address as "14 Chapel Road, Bankstown".) Yet his testimony is that he does not know Sam Dann. Further, the mobile service was a prepaid service and the details recorded about the subscriber were minimal. In addition to the name and address given, "Sam Turk" provided a driver's licence number which is, apparently, not a valid one. 28 Ms Miriam Stiel, a solicitor of Allens, gave affidavit evidence that she was informed by Paul Baker, an executive of PricewaterhouseCoopers, that neither the Australian electoral roll nor the New South Wales electoral roll shows any record of either "Sam Dann" or "Sam Turk", and that she believed those names were in fact pseudonyms for Mr Dannoun. 29 Mr Dannoun denied knowing or having met Sam Turk or Sam Dann. I reject his denial except in so far as that it may be considered true on the basis that neither person ever existed. 30 Clearly, Mr Dannoun had had, at least since 20 June 1999, a business of selling CD-ROM computer games and had imported 1,115 counterfeit CD-ROMs in October 1999 and 903 counterfeit CD-ROMs on 3 December 1999. As well, there are the many indications referred to in the evidence summarised above that Mr Dannoun was the "Sam Turk" of 240 Lakemba Street, Lakemba and the "Sam Dann" of 6 Shenton Avenue, Bankstown referred to in the evidence. Further, the timing of the undertaking in November 1999 and the subsequent seizure by the ACS of the second importation in December of that year suggests that the use of aliases after that time resulted from a perception by Mr Dannoun that it would enable him to continue importing and selling counterfeit Sony "PlayStation" games. 31 It follows that Mr Dannoun breached his undertaking of 5 November 1999, both by his admitted importation of 903 CD-ROMs the subject of the ACS notice dated 3 December 1999, and also by reason of his importation of the 2,186 CD-ROMs the subject of the ACS notice dated 16 February 2000. 32 On 27 August 2000 Brett Alexander Vizard, a private inquiry agent engaged by the applicants, bought three "PlayStation" computer games from Mr Dannoun at a stall at Paddy's Markets at Flemington. Although they were being sold as "PlayStation" computer games, nothing was said suggesting that they were genuine. Mr Dannoun quoted a price of $10.00 each or three games for $25.00. The sale on 15 October 2000 was to Mark Miller, another private inquiry agent engaged by the applicants. Mr Miller asked "How much are the PlayStation games?" and Mr Dannoun replied "Three for $25.00". 33 As noted above, it is not disputed that these sales occurred and, therefore, that Mr Dannoun infringed the Sony Trade Marks and breached his written undertaking by conducting these sales. 34 I am not satisfied, however, on the evidence that Mr Dannoun misrepresented to customers and prospective customers that the CD-ROMs were genuine. In oral evidence before me he said that anyone buying three games for $25.00 would know that they were counterfeit. The evidence as to the market price of genuine "PlayStation" games is unsatisfactory, but I am not persuaded that a person buying three computer games for $25.00 would not know that they might well be counterfeit. Contravention of ss 42, 44 and 49 of the FT Act is not proved. Proceedings N 965, N 973 and N 974 of 2000 Pleadings in N 965, N 973 and N 974 of 2000 35 In proceeding N 965 of 2000 the allegation is that Mr Dannoun, under an alias of "Anis Lakari" infringed the Sony Trade Marks by importing into Australia, for the purpose of sale or commercial distribution, 420 CD-ROMs the subject of a Notice of Seizure to Objector from the ACS dated 3 August 2000. 36 In proceeding N 973 of 2000 the claim is that Mr Dannoun, under an alias of "John Laperovze", infringed the Sony Trade Marks by importing into Australia for the purpose of sale or commercial distribution 350 counterfeit CD-ROMs the subject of a Notice of Seizure to Objector issued by the ACS also on 3 August 2000. 37 In proceeding N 974 of 2000 the applicants' case is that Mr Dannoun, under an alias "Johny Aras", infringed the Sony Trade Marks by importing into Australia for sale or commercial distribution 240 counterfeit CD-ROMs the subject of a Notice of Seizure to Objector issued by the ACS also on 3 August 2000. 38 In each case, Mr Dannoun denies that he was the importer. Facts and conclusions in N 965, N 973 and N 974 of 2000 39 I ordered that the evidence in proceeding N 243 above, be evidence in these three proceedings against Mr Dannoun. 40 The three notices from the ACS dated 3 August 2000 came from the ACS Sydney Parcel Centre, PO Box 253, Granville 2142, rather than from Sydney Airport. That is to say, the three importations were not by air. Further, it is significant that all three importations in question were seized by the ACS on the same date, and that all three were imported by "persons" which the evidence shows did not exist. 41 In relation to proceeding N 965 of 2000, the ACS Notice of Seizure to Objector identified "the designated owner" as "Mr Anis Lakari of 41 Banksia Road, Greenacre NSW 2190". Following receipt of the notice from the ACS, on 8 August 2000 Allens wrote a letter of demand seeking undertakings to "Mr Anis Lakari" of that address, but was returned marked "UNKWN AT THIS ADDRESS" [sic]. A search of the on-line Australian electoral roll for "Anis Lakari" did not reveal the existence of any such person, but such a search in respect of the address of 41 Banksia Road, Greenacre revealed that only Mr Dannoun, Sahar Dannoun and Ahmad Haddad resided at that address. On 4 October 2000 a process server was instructed by Allens to serve "Anis Lakari" at 41 Banksia Road, Greenacre. A letter from the process server to Allens dated 11 October 2000 stated that a male occupant had said: "No there's no Anis Lakari … We've lived here three years now". Mr Dannoun admitted that he had lived there since at least October 1999, but said that no person called "Anis Lakari" had lived at that address throughout that time. 42 I am satisfied that Mr Dannoun imported the 420 CD-ROMs on or about 3 August 2000 under the name "Anis Lakari". 43 In relation to proceeding N 973 of 2000, the ACS Notice of Seizure to Objector dated 3 August 2000 identified the "designated owner" of the 350 CD-ROMs as "Mr John Laperovze of 49 Rea Street, Greenacre NSW 2190". 44 Following receipt of that notice from the ACS, Allens wrote a letter of demand on 14 August 2000 to that person at that address but on or about 16 August, the letter of demand was returned in the envelope which bore the words "Hasn't been at this address for 4 years!". 45 An on-line search of the Australian electoral roll for "John Laperovze" did not reveal the existence of any such person, but an on-line search of the Australian electoral roll in respect of the address 49 Rea Street, Greenacre revealed that the residents there were Abdul Nasser Dannoun, Gazwa Dannoun and Houssam Dannoun. 46 On 31 January 2000 the ACS had issued a Notice of Seizure to Objector to Sony Computer Australia in respect of the importation of twenty-seven packs of CD-ROMs by "Albert Hamowi 49 Rea St, Greenacre NSW 2190". On 8 February 2000 Allens sent a letter of demand by courier to that person at that address, seeking undertakings. On 9 February 2000 the courier returned the letter having been informed by a person at 49 Rea Street, Greenacre that there was no "Mr Hamowi" at that address. 47 Service was attempted on "John Laperovze" at that address on or about 11 October 2000 but the process server was told by a male occupant there, Mr Ali Dannoun, that he had no knowledge of John Laperovze. 48 A telephone book found by the applicants' solicitors in a search of Mr Dannoun's home contained the following entry: "John Laperovze custom clearance." Mr Dannoun claimed that the telephone book was not his, but his wife's and he denied writing the entry. When asked by counsel for the applicants "who wrote the entry?" Mr Dannoun responded: "I have no idea about that. It is not my writing, sorry. Maybe you did." I do not accept Mr Dannoun's assertion that he knew nothing about this entry. 49 I am satisfied that Mr Dannoun is one and the same person as "John Laperovze" and that he imported the 350 counterfeit CD-ROMs the subject of the ACS notice dated 3 August 2000, under the alias "John Laperovze". 50 I turn next to proceeding N 974 of 2000. On 3 August 2000, ACS issued a Notice of Seizure to Objector in relation to 240 CD-ROMs. According to the notice, the "designated owner" was "Mr Johny Aras PO Box 701, Greenacre NSW 2190". Allens wrote a letter of demand to that person at that address on 14 August 2000, seeking undertakings, to which there has been no reply. 51 An on-line search of the Australian electoral role for "J Aras" does not reveal any such person in New South Wales. 52 Mr Dannoun is the licensee of that post office box. In fact he applied to Australia Post for a private box on 5 March 1999 under the name "Mohamad Samir Dannoun of 41 Banksia Rd, Greenacre". He gave as his telephone number on the form, 0414 270 156, and acknowledged in oral evidence that the form had been completed in his handwriting. 53 The application and statement of claim commencing this proceeding against "Johnny Aras" were sent by post, addressed to that person at PO Box 701, Greenacre NSW 2190 on 4 October 2000. Mr Dannoun denied ever having received that letter. However, on 11 October 2000 Allens received a reply from "J Aras" of 17 Colston St, Ryde 2112". The letter was as follows: "J. ARAS 17 COLSTON ST RYDE 2112 ATT. M. STiEL DEAR SiRS, IM WRITING IN RELATION TO THE LEGAL MATTER WHICH HAS BEEN BROUGHT TO MY ATTENTION BY YOU THROUGH THE FORM WHICH WAS SENT TO ME ON THE 4TH OF OCTOBER REGUARDING THE CD'S WHICH WERE SEIZED BY CUSTOMS ON THE 3RD OF AUGUST. FIRST OFF, AT NO STAGE DID I REALISE THE SERIOUSNESS OF THE MATTER. OTHERWISE I WOULD NEVER OF EVEN CONTEMPLATED ORDERING GAMES FROM OVERSEAS. I WOULD ALSO LIKE TO BRING TO YOUR ATTENTION THAT AT NO TIME WERE THEY FOR COMMERCEAL PURPOSES OR TO SELL. I ORDERED AN ASSORTMENT OF GAMES TO THE VALUE OF $100 FROM 'UNIQUE GAMES' OF BANKOK. PH 62 38919 WHICH WERE TO BE SENT BY POST. WHEN THE GAMES ARRIVED IN SYDNEY. I WAS NOTIFIED THAT CUSTOMS HAD SEIZED THEM AND THAT THE QUANTITY WAS 240 – I EXPECTED TO RECEIVE ABOUT 30-40 TITLES ONLY SO YOU CAN SEE HOW I WAS SURPRISED. AND SCARED. THEY WERE FOR FAMILY USE ONLY AND NOT TO SELL. I WOULD LIKE YOU TO DO WHATEVER YOU SEE FIT ABOUT THIS MATTER AND I DECLARE THAT I HAVE NO INTENTION TO EVER TRY TO BUY GAMES THAT WAY AGAIN. I HOPE THIS MATTER IS DEALT WITH FAIRLY WITH ALL THIS IN MIND AS I WOULD LIKE IT TO BE FINALISED AS SOON AS POSSIBLE. I APOLOGISE FOR ANY INCONVENIAENCE CAUSED TO YOU OR ANYONE ELSE THAT IS INVOLVED. P.S. YOURS FAITHFULLY, YOU CAN WriTe TO ME J ARAS ON MY ADRESS ABOVE. REF: JWDS.201355433 MNSS" Mr Dannoun was questioned about this letter. He denied that any part of it was in his handwriting. But Mr Dannoun has a distinctive practice in his handwriting of reverting from the capital letter "I" to a lower case "i" and his capital letter "A" differs from that in the body of the letter. I am satisfied that he wrote the words "ATT. M. STiEL" and the words "YOU CAN WRiTe TO ME ON MY ADRESS ABOVE". I am satisfied of this, notwithstanding that I gave Mr Dannoun the opportunity in the course of the hearing to write the word "address" and on that occasion he spelt it correctly, not incorrectly as in the letter. I am not satisfied, however, that Mr Dannoun wrote the letter apart from the two parts which I have mentioned. 54 On 17 November 2000 Allens sent a further letter to "Mr Johnny Aras", this time at 17 Colston Street, Ryde, NSW 2112, as well as again to PO Box 701, Greenacre NSW 2190. On 5 December 2000 this further letter to the post office box was returned to Allens marked "RETURN TO SENDER". 55 The Australian Electronic Telephone Directory lists in respect of the address "17 Colston Street, Ryde NSW 2112", "M Nasrallah" as the subscriber residing at that address with the phone number (02) 9807 5831. Andrew Patrick O'Keefe, a solicitor of Allens, made a telephone call to (02) 9807 5831 on 11 December 2000 asking to speak to Johny Aras, but a male person said that there was no person there by that name, although he agreed that the address was 17 Colston Street, Ryde. 56 I am satisfied that Mr Dannoun, under the alias of "Johny Aras", imported the 240 CD-ROMs the subject of Notice of Seizure to Objector issued by the ACS on 3 August 2000. proceeding N 83 of 2001 Pleading in N 83 of 2001 57 The causes of action pleaded in the further amended statement of claim filed on 22 June 2001 may be summarised as follows: Trade Mark Infringement 58 It is alleged that the three respondents, or one of them, imported into Australia for sale or commercial distribution 1,261 counterfeit Sony CD-ROMs as notified by the ACS in a Notice of Seizure to Objector dated 17 January 2001. Breach of Undertaking 59 Breach of the written undertaking of 5 November 1999 referred to in [14] above, by reason of the importation on or shortly before 17 January 2001 referred to immediately above. On the hearing, the applicants handed up short minutes of the orders they were seeking. Those short minutes did not include a declaration of breach of the undertaking, perhaps because the applicants regarded it as sufficient that they had included such a declaration in the short minutes they handed up in the first proceeding (N 243 of 2000). Be this as it may, I treat the applicants as not pressing for such a declaration in this proceeding. Facts and conclusion in N 83 of 2001 60 I ordered that the evidence in N 243, 965, 973 and 974 of 2000 be admitted in this proceeding, but only as against Mr Dannoun (the second respondent, "Ms Diab", and the third respondent, "Mr Haddad", were not parties to the other four proceedings). 61 This fifth and final proceeding concerns a single importation of 1,261 counterfeit Sony "Playstation" games by "Allen Ramzy" on or shortly before 17 January 2001. The question to be decided is who was responsible for the importation of the counterfeit games under the alias "Allen Ramzy". The respondents claim that Mr Haddad, the third respondent, was alone responsible for the importation. The only issue in dispute in this proceeding, therefore, is whether or not Mr Dannoun and/or Ms Diab were also involved along with Mr Haddad. Mr Dannoun claims that he had "nothing to do" with the relevant importation, whilst Ms Diab claims that her involvement was limited to acting as an "innocent" interpreter for Mr Haddad in his dealings with the import broker. 62 In the present case the Notice of Seizure to Objector issued by the ACS to Sony Computer Australia was dated 17 January 2001 and referred to "Allen Ramzy of 31 Robinson Road, Chester Hill 2162" as "the designated owner" of the 1,261 CD-ROM computer games the subject of that notice. 63 On 22 January 2001 Allens wrote a letter of demand, seeking undertakings, to that person at that address, but the communication was returned in the envelope marked "There is no Robinson Road in Chester Hill". The Gregory's Street Directory for 1999 did not record a "Robinson Road" in Chester Hill and an on-line search of the White Pages telephone directory did not record any individual with the surname "Ramzy" as being resident in Chester Hill. Claudia Jane Wallman, a solicitor of Allens, telephoned the various persons with the surname "Ramzy", according to the "White Pages On-Line", but was told in each case that there was no person named "Allen" who lived there. 64 Allens communicated further with the ACS which, pursuant to s 134(b)(ii) of the TM Act, advised as follows: · "The following facsimile number was used to fax the commercial documents to the customs broker to arrange clearance of the shipment: 02 9708 4924 · The following mobile phone number was quoted under the consignee's name and address on the airwaybill of lading: 0415 140 955 · The customs Brokerage firm that handled the clearance of this importation was: Summit Global Logistics, ph 02 8337 4666, fax no. 02 9693 1512. The broker's name is Mr Steve Cox." 65 On 13 February 2001 Ms Wallman telephoned the mobile number 0415 140 955 given for the consignee. A female answered the call. Ms Wallman asked if she was "Allen Ramzy". The female responded "No" and stated that Ms Wallman must have the wrong number and that she did not know anyone of that name. 66 Also on 13 February 2001, Allens sent a fax to "Allen Ramzy" at fax/telephone number 9708 4924 advising him (Allen Ramzy) that Sony Computer Australia had commenced a proceeding against him in respect of the consignment of 1,261 CD-ROMs seized on 17 January 2001 by the ACS; that service of the court documents had been attempted but without success; and that the proceeding was next before the Court at 9.30am the following morning, 14 February. The letter requested Mr Ramzy to contact Allens. Later on the same day, 13 February, Ms Diab telephoned Mr J Dwyer of Allens advising that she had received the fax but did not know anything about Mr Ramzy and knew nothing about any copies of Sony "PlayStation" games. 67 Inquiries by Allens of Telstra revealed that Telstra's records showed that the service (02) 9708 4924 was billed to "Mr Samir Vannoun, Unit 4, 14 Gordon Street, Bankstown, NSW 2200" during the period 1 November 2000 to 14 February 2001 inclusive, and that the service was "disconnected" on 14 February 2001. An on-line search of the Australian electoral roll for 14 Gordon Street, Bankstown revealed a "Janan Diab" at "Unit 4 14 Gordon St Bankstown 2200 NSW". 68 A search of the on-line White Pages telephone directory for "J Diab" of Bankstown revealed a "J Diab" at 14 Gordon Street, Bankstown 2200 with the telephone number (02) 9708 4924. 69 In oral evidence, both Mr Dannoun and Ms Diab admitted that the "Mr Samir Vannoun" on the Telstra records for the fax/telephone number (02) 9708 4924 was in fact Mr Dannoun. Both stated that the fax/telephone belonged to Ms Diab. Mr Dannoun stated that he paid the bill because he also used that fax and phone number "for business" and because he wanted to "help" Ms Diab, who was his girlfriend. Ms Diab stated in evidence that following the disconnection of the service on 14 February 2001, that same service was re-connected in her name. 70 The import broker, Summit Global Logistics ("Summit"), dealt with "Janine Dannoun (ph no. 9708-4924) who [had] acted on behalf of Allen Ramzy". Stephen Cox, the Customs Manager of Summit, said he had not had personal dealings with Allen Ramzy, either by telephone or via facsimile, and that he had dealt only with "Janine Dannoun". I am satisfied that the supposed "Janine Dannoun" is Ms Diab, the second respondent. Indeed, she conceded she had dealt with Summit, although, on her account, only in the role of "interpreter" for Mr Haddad who speaks Arabic but is not fluent in English. The use by Ms Diab of an alias in her dealings with the import broker tells strongly against her account that her involvement in the matter was an "innocent" one, limited to acting as interpreter. 71 In a letter to Mr Cox of Summit, "Allen Ramzy" gave his address as "31 Robinson Rd, Chester Hill" and his telephone number as 0415 140 955. 72 On 15 February 2001 Allens received a fax from "Allen M Ramzy" from "Albert's Takeaway" fax (02) 9790 3701 in response to their letter of demand dated 13 February. "Albert's Takeaway" is the registered business name of a takeaway food bar, the principal place of business being 14B Chapel Road, Bankstown, next to the business of "Static Clothing" conducted by Mr Dannoun at 14A Chapel Road, Bankstown. The fax took the form of handwriting on the letter faxed from Allens on 13 February 2001 to Allen Ramzy at fax number 9708 4924. The handwriting was as follows: "MY ADRESS ALLen RAMZY 31-52 ROBERTSON RD BASS HiLL N.S.W. ALLEN M. RAMZY" Mr Dannoun said he handed the fax from Allens to Mr Haddad and that Mr Haddad must have written the above material on it. Mr Dannoun states that the handwriting is not his own. I will return to this fax below. 73 Telstra records for the service (02) 9708 4924 billed to "Mr S Vannoun" show many calls to the following numbers: · 0414 270 156 (Mr Dannoun's mobile); · (02) 9709 8297 (subscriber not identified – see below); · (02) 8337 4666 (Summit's number) As well, the Telstra records for (02) 9708 4924 indicate a number of calls to Thailand. 74 As noted earlier, on 5 March 1999, Mr Dannoun applied for a private post office box, giving as his telephone number the number 0414 270 156. 75 Telstra records for the importer's mobile 0415 140 955 indicate frequent calls to: · 0414 270 156 (Mr Dannoun's mobile); · (02) 9709 8297 (subscriber not identified – see below). 76 The subscriber to the importer's mobile telephone number 0415 140 955 was recorded as "Mr Joshua Smith, Anne Street, Campbell NSW 2022". The evidence showed that that name and address did not exist. 77 On 22 March 2001 Ms Stiel received a telephone call from a person who identified himself as Mohamed Dannoun and whose voice she recognised as that of Mr Dannoun. The telephone number which was displayed on the caller identification screen of her telephone during that call was the telephone number 9709 8297. Although the evidence does not identify the subscriber to that telephone service, as noted above, frequent telephone calls were made to it from the supposed importer's telephone/fax number and mobile number, and the evidence shows that Mr Dannoun at least had access to it. 78 There is evidence that Ms Diab and Mr Haddad have been involved in importing counterfeit Sony "Playstation" games in the past. 79 On 8 November 1999 307 CD-ROMs were seized by the ACS. The Notice of Seizure to Objector issued by the ACS on the same date identified "the designated owner" as "Mr Haddad of 4/14 Gordon St, Bankstown NSW 2200". As noted earlier, Unit 4, 14 Gordon St, Bankstown is Ms Diab's address. Indeed, Ms Diab gave the Gordon Street address in her defence. Mr Haddad has declared his address to be at 31/52 Robertson Rd, Bass Hill NSW. In fact Mr Haddad does not reside at Robertson Rd, Bass Hill. Further, Australian electoral records reveal Mr Dannoun and Mr Haddad as residing at 41 Banksia Road, Greenacre. 80 On 16 November 1999 Allens wrote a letter of demand to Mr Haddad at 4/14 Gordon Street, Bankstown, seeking undertakings. An undertaking was returned signed by "A. Haddad", with "AHMAD HADDAD" printed underneath the signature, and dated 30 November 1999. In oral evidence, Mr Dannoun denied signing "A. Haddad" and said that Mr Haddad had signed it himself. Mr Dannoun admitted writing "AHMAD HADDAD" and the date. Mr Haddad stated in cross-examination that the signature was in his handwriting, but could not explain why this signature differed from his signature on his statutory declaration admitted into evidence in this proceeding. 81 On 31 January 2000 the ACS issued a Notice of Seizure to Objector in respect of twenty four packs of counterfeit Sony CD-ROMs imported by "Nabil Haddad of 14A Chapel Street, Bankstown NSW 2200". As noted above, that is the address of Mr Dannoun's "Static Clothing" business. 82 On 18 October 2000 the ACS issued a Notice of Seizure to Objector in respect of 450 counterfeit Sony CD-ROMs imported by "Janan Micaty of 91 Broadarrow Road, Narwee NSW 2209'. Allens wrote a letter of demand [oddly, it bears the date 16 October 2000] to "Mr/Ms Janan Micaty" at that address, seeking undertakings. An undertaking was returned signed by "Janan Micaty" and dated 18 October 2000. In cross-examination Ms Diab stated that the handwriting was not hers and denied that she was in fact "Janan Micaty". 83 An on-line electoral roll search in respect of "91 Broadarrow Road, Narwee 2209 NSW" revealed the residents as Ahmad Diab, Fatat Diab, Mohamed Diab and Moussa Diab. A Land Titles database search in respect of 91 Broadarrow Road, Beverley Hills 2209 (the suburbs "Narwee" and "Beverley Hills" both have the same postcode) revealed the owners as Mohamad Diab and Fatat Diab. 84 I found the evidence of all three respondents totally unreliable and would not accept the evidence of any of them, unless corroborated by other evidence, that is to say, other evidence not being the testimony of either of the other two respondents. 85 Mr Haddad's story was that he imported thirty-six scooters, using the false name "Allen Ramzy" in order to avoid trouble in relation to his pension. He said Ms Diab recommended Summit as a customs broker and he asked her to act as interpreter and translator because he was not fluent in English. Mr Haddad said that the Thai supplier of the scooters offered to include computer games, to which he (Mr Haddad) agreed. In response to questioning by me, Mr Haddad said that the number agreed upon was about 1,000 – 1,200 and the price agreed was fifty cents each. (Mr Dannoun's testimony in a different context was to the effect that it was common knowledge that CD-ROM games priced so cheaply must be counterfeit.) However, when the invoice arrived, it did not refer to the computer games. According to Mr Haddad, Ms Diab told him, when the shipment was detained by the ACS, that the ACS must think there was something other than scooters in the consignment. Mr Haddad told her that he had not paid for the goods. According to Mr Haddad, when it emerged that there were counterfeit Sony CD-ROMs in the shipment, Ms Diab was very angry and said she wanted to have nothing to do with "PlayStation" games. Mr Haddad told her that if anyone should telephone inquiring for "Allen Ramzy", she must tell the inquirer that she knew of no such person. According to Mr Haddad, the next development was that Mr Dannoun telephoned him complaining that he (Mr Dannoun) and Ms Diab were being blamed for what Mr Haddad had done. 86 Mr Haddad said that a girlfriend, rather than Ms Diab, had assisted him by writing out documents in this proceeding which he had signed. When pressed as to the identity of the girlfriend, he said that he had several girlfriends. He said the one who assisted him was called "Linda" but that he did not know her surname or her address. He said that she had gone to Melbourne to live. Another girlfriend was a Thai woman who had proposed marriage to him but whose name he could not remember. 87 Ms Diab had similar failures of memory in relation to Ms Micaty. She agreed that she had lied to Mr Dwyer of Allens when telling him she knew nothing of "Allen Ramzy". She denied that she was "Janan Micaty" but could not assist as to Ms Micaty's whereabouts, notwithstanding that the woman was a family friend and that she (Ms Diab) had once signed for and picked up a letter addressed to her. 88 Ms Diab claimed in her defence that she was acting as translator between Mr Haddad and Summit; that she had "no idea" that there were computer games in the consignment addressed to "Allen Ramzy"; that she was "angry and shocked" when she learned that the consignment included such games; and that she had previously denied knowing anything of "Allen Ramzy" in order to help Mr Haddad because he owed money to "the suppliers". 89 I am satisfied that Ms Diab's defence in this proceeding is in her handwriting and I am also satisfied, contrary to her denial, that she printed "JANAN MICATY 18.10.00" and wrote the signature "Janan Micaty" on the undertaking on the last page of Allens' letter dated 16 October 2000. "JANAN" in "JANAN MICATY" is strikingly similar to "JANAN" in "JANAN DIAB" as admittedly written by Ms Diab. I am also satisfied that Ms Diab wrote for Mr Haddad his statutory declaration dated 28 April 2001 and his unsworn "affidavit" dated 15 June 2001. The way in which "JANAN DIAB" is written on both of those documents is strikingly similar to the way in which it is written in Ms Diab's defence. 90 Mr Dannoun denied that he was the importer "Allen Ramzy". He stated in his defence that he had "nothing to do with this proceeding" and that, as far as he was aware, Ms Diab was a mediator between Mr Haddad and Summit. Further, in an affidavit sworn by Mr Dannoun and filed in this proceeding, he stated that Mr Haddad was the sole importer of this consignment. 91 I am satisfied that, as he admitted under cross-examination, Mr Dannoun wrote the words and date: "AHMAD HADDAD 30-11-99" at the foot of the last page of Allens' letter dated 16 November 1999 to Mr Haddad. Mr Dannoun also admitted that he wrote the letter dated 19 December 2000 signed by "Allen Ramzy" and addressed to the ACS explaining that he had ordered thirty-six scooters and 1,240 CD-ROMs. I have not previously referred to this letter which was in fact as follows: " 19-12-2000 TO AUSTRALiAN CUSTOM SERViCE REF. 1M03501071M IMPORT ALLEN RAMZI I DO PLACE AN ORD. WITH THiS COMPANY IN THAiLAND FOR 36 SCOOTER AND 1240 COMPUTER DiSC. I DiD NOT SEND THEM ANY MONEY YET FOR THiS SHIPMENT. DUE THE GOOD I DiD NOT RECiEVED. WHEN THEY SEND ME THE INVOiCE FOR THE SCOOTER I NOTES THER IS NO MANTiONIG ABOUT THE COMPUTER DiSC. I RiNG THE SUPLiER IN THAiLAND MR SURRONG. HE WAS ON HOLiDAY TiLL NEXT WEEK. TiLL TODAY I FOUND OUT THE COMP. DiSC WAS INSiDE THE SCOOTER BOX. I'M REALLY SORRY FOR THAT MiXED UP. AND ALSO THiS IS MY FiRST TiMe I IMPORT FROM THAiLAND. I DO HAVE A COPY OF THE INVOiCe FOR THE SCOOTER AND THE COMPUTER DiSC. BUT AS I SAiD I DiD NOT SEND THEM ANY MONEY FOR THAT SHiPMENT. YOURS FAiTHFULLY ALLEN RAMZY" I am satisfied that Mr Dannoun also wrote, contrary to his denial, the letter faxed to Allens on 15 February 2001 in response to their letter of demand (see [72] above). I am also satisfied that Mr Dannoun wrote, again contrary to his denial, a letter dated 10 December 2000 from "Nood Surreng", the alleged consignor to "Allen Ramzy", which was as follows: " 10-12-2000 ATT. Mr ALLEN RAMZY THi IS INVOiCe FOR THE ORD. YOU GAVe Me ON The PhONe YeSTeRdAY. 36 SCOOTer AUD$14.00 eACH. 1240 COMPUTER disc MiXED 0.50 CeNTS AUD$620.00 TOTAL INVOiE FOR THiS ORD IS AUD.ONe THOUSANd ONE HUndred SiXTY FOUR DOLLARS. PLeASE SENd ME CHEQUE WHEN YOU ReCiEVED THe GOODS. BeST reGARd Nood SURRENG" As referred to in proceeding N 974 of 2000, Mr Dannoun has a distinctive practice in his handwriting of reverting from the capital letter "I" to a lower case "i". He also has a distinctive practice of reverting from a capital letter "E" to a lower case "e". Both of these distinctive practices are evident on an examination of the defence and affidavit filed in this proceeding alone, and both are evident in the documents referred to above which I have found were in fact written by Mr Dannoun. 92 In the result I am satisfied that all three respondents were involved in the importation and that relief should be granted against all three. I am satisfied that Mr Dannoun was the "master-mind" behind the arrangement and that he and his girlfriend, Ms Diab, agreed with Mr Haddad that Mr Haddad would be their scapegoat. Mr Haddad, was, however, a willing participant and was not in the least way imposed upon by the other two: he knew what he was doing. conclusion 93 There will be orders generally to the effect of those sought by the applicants. I will reserve the question of costs as counsel for the applicants wishes to make a submission that the costs order should be for indemnity costs. I certify that the preceding ninety-three (93) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren. Associate: Dated: 5 September 2001 Proceeding N 243 of 2000 Counsel for the Applicants: Mr A J Maryniak Solicitors for the Applicants: Allens Arthur Robinson The First Respondent appeared in person. Date of Hearing: 20 August 2001 Date of Judgment: 29 August 2001 Proceedings N 965, N 973 and N 974 of 2000 Counsel for the Applicants: Mr A J Maryniak Solicitors for the Applicants: Allens Arthur Robinson The Respondent appeared in person. Date of Hearing: 23 August 2001 Date of Judgment: 29 August 2001 Proceeding N 83 of 2001 Counsel for the Applicants: Mr A J Maryniak Solicitors for the Applicants: Allens Arthur Robinson The Respondents appeared in person. Date of Hearing: 24 August 2001 Date of Judgment: 29 August 2001