Chanel Limited v Kim [2007] FCA 2076

FEDERAL COURT OF AUSTRALIA

Chanel Limited v Kim [2007] FCA 2076

CUSTOMS – trade marks – infringing goods seized by Customs – whether order should be made restraining release of seized goods Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 555 Acts Interpretation Act 1901 (Cth) s 15AA Trade Marks Act 1995 (Cth) ss 6, 131, 133, 134(b), 137(2)(b), 137(5)

CHANEL LIMITED & ANOR v MIRA KIM NSD 2084 OF 2007

SACKVILLE J

20 DECEMBER 2007

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 2084 OF 2007

BETWEEN: CHANEL LIMITED

FIRST APPLICANT

CHANEL AUSTRALIA PTY LIMITED

(ACN 000 012 153)

SECOND APPLICANT

AND: MIRA KIM

JUDGE: SACKVILLE J DATE OF ORDER: 20 DECEMBER 2007

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The Chief Executive Officer of the Australian Customs Services be restrained, until further order, from releasing the consignment consisting of 100 scarves, bearing the CHANEL mark and/or the Chanel Crossed C's Device, seized pursuant to s 133 of the Trade Marks Act 1995 (Cth) on 19 September 2007, which goods are referred to in the Notice of Seizure to Objector dated 19 September 2007 (reference 200708541). 2. A sealed copy of these orders be served on the Chief Executive Officer of the Australian Customs Service by 5 pm on 21 December 2008. 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 NSD 2084 OF 2007

BETWEEN: CHANEL LIMITED

FIRST APPLICANT

CHANEL AUSTRALIA PTY LIMITED

(ACN 000 012 153)

SECOND APPLICANT

AND: MIRA KIM

JUDGE: SACKVILLE J

DATE: 20 DECEMBER 2007

PLACE: SYDNEY

REASONS FOR JUDGMENT

The proceedings 1 By a notice of motion filed on 12 December 2007, the applicants ('Chanel') seek an order against the Chief Executive Officer of Customs ('Customs CEO') pursuant to s 137(5) of the Trade Marks Act 1995 (Cth) ('TM Act'). The order sought by Chanel would restrain the Customs CEO until further order from releasing a consignment consisting of 100 scarves bearing the 'CHANEL' trade mark or Chanel's 'Crossed C's Device' mark. The consignment of scarves was seized by the Customs CEO on 19 September 2007 pursuant to s 133 of the TM Act. This action was taken on the ground that the scarves had applied to them a sign that, in the opinion of the Customs CEO, was substantially identical with, or deceptively similar to, a registered trade mark. 2 The motion was brought before me by Chanel ex parte, on 13 December 2007. At that time, I raised concerns with Mr Bova, who appeared for Chanel, as to whether the evidence demonstrated that Chanel had complied with the time constraints imposed by s 137 of the TM Act. I also drew attention to an issue of construction that appeared to arise in relation to s 137(5) of the TM Act. I adjourned the matter until 18 December 2007 and directed Chanel to file written submissions and to serve the submissions on the Customs CEO. 3 Chanel duly filed written submissions and served them on the Customs CEO. Although the Customs CEO's solicitors sent a response by email to Chanel's solicitors, the response did not address the question of construction of s 137(5). It was therefore not entirely clear to me whether the Customs CEO wished to be heard on that question. 4 Section 137(2)(b) of the TM Act provides that the Court hearing an action for infringement of a notified trade mark in respect of seized goods 'must allow the Customs CEO to appear and be heard'. While that provision is not entirely free from ambiguity, I thought the appropriate course was to adjourn the proceedings again in order to give the Customs CEO a further opportunity to address the question of construction I had identified. I sent an email to Customs CEO's solicitors inviting a submission on that question. In the event, the Customs CEO filed further written submissions but made no comment on the construction issue.