GSM (Trademarks) Pty Ltd v Shao (No 3) [2006] FCA 1745

FEDERAL COURT OF AUSTRALIA

GSM (Trademarks) Pty Ltd v Shao (No 3) [2006] FCA 1745 GSM (TRADEMARKS) PTY LTD (ACN 085 955 291) AND GSM (OPERATIONS) PTY LTD (ACN 085 950 803) v DAVID WEI SHAO NSD 1731 OF 2006

GRAHAM J

29 NOVEMBER 2006

SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 1731 OF 2006

BETWEEN: GSM (TRADEMARKS) PTY LTD (ACN 085 955 291)

First Applicant

GSM (OPERATIONS) PTY LTD (ACN 085 950 803)

Second Applicant

AND: DAVID WEI SHAO

Respondent

JUDGE: GRAHAM J DATE OF ORDER: 29 NOVEMBER 2006

WHERE MADE: SYDNEY

THE COURT DECLARES THAT:

1 The Respondent has infringed the First Applicant's registered trade mark 964518 by importing into Australia the 2,968 mobile phone covers seized by the Australian Customs Service on 10 August 2006 (the 'Seized Goods'), which have had the trade mark BILLABONG applied to them without the authority of the First Applicant.

THE COURT ORDERS THAT:

2 Order 10 made on 21 September 2006, and the Applicants' associated undertaking as to damages, be discharged. 3 The Respondent by himself, his servant or agents, be permanently restrained from: (a) importing; (b) causing or procuring the importation of; (c) selling or offering or exposing for sale, goods bearing: (i) one or more of the trade marks set out in the Schedule to these Orders ('Registered Trade Marks'); or (ii) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks, without the prior consent of the First Applicant. 4 The Respondent by himself, his servants, agents or otherwise be restrained from authorising, aiding, abetting, counselling or procuring any person or entity to: (a) import; (b) cause or procure to be imported; (c) sell or offer or expose for sale; goods bearing: (i) one or more of the Registered Trade Marks, or; (ii) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks; without the prior consent of the First Applicant. 5 Pursuant to section 137(3)(b) of the Trade Marks Act 1995 (Cth), the Seized Goods be forfeited to the Commonwealth for disposal at the direction of the Chief Executive Officer of Australian Customs. 6 Within 14 days of service of this order upon him, the Respondent deliver up to Baker & McKenzie solicitors at Level 27, 50 Bridge Street, Sydney NSW, or any other nominated agent of the Applicants, all goods, documents and other materials in his possession, custody or control, including, without limitation, mobile phone covers, stationery, business cards, brochures and marketing materials which bear, without the authority of the First Applicant: (a) any one or more of the Registered Trade Marks; (b) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks. (Materials) and that the Applicants may destroy or otherwise dispose of the Materials as they see fit. 7 The Respondent pay the Applicants' costs fixed in the sum of $58,680.