FEDERAL COURT OF AUSTRALIA Jemella Australia Pty Ltd v Steffensen [2009] FCA 293 Trade Marks Act 1995 (Cth) ss 135, 136, 137 JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 v BERNADETTE STEFFENSEN and JEMELLA LIMITED QUD38 of 2009 LOGAN J 2 MARCH 2009 BRISBANE IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY QUD38 of 2009 BETWEEN: JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 Applicant AND: BERNADETTE STEFFENSEN First Respondent JEMELLA LIMITED Second Respondent JUDGE: LOGAN J DATE OF ORDER: 2 MARCH 2009 WHERE MADE: BRISBANE THE COURT ORDERS THAT: 1. Pending the hearing and determination of this proceeding, the Chief Executive Officer of the Australian Customs Service is not to release the goods the subject of the notice of seizure dated 30 December 2008. 2. The application for interlocutory injunctive relief is dismissed. 3. Costs in respect of the application for interlocutory injunctive relief are reserved, pending the receipt of written submissions from the parties. 4. The First Respondent is to file and serve on the Applicant such written submissions, if any, as she proposes to make in respect of the costs of the application for interlocutory injunctive relief on or before 4:00pm on 9 March 2009. 5. The Applicant is to file and serve such written submissions, if any, as it proposes to rely upon, in respect of costs for the application for interlocutory injunctive relief, on or before Friday 13 March 2009. 6. The District Registrar is to notify the First Respondent by prepaid letter post of the orders made today. 7. The matter is adjourned for directions to Friday 20 March 2009 at 9:30am. 8. Costs are reserved. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using eSearch on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY QUD38 of 2009 BETWEEN: JEMELLA AUSTRALIA PTY LTD ACN 104 455 138 Applicant AND: BERNADETTE STEFFENSEN First Respondent JEMELLA LIMITED Second Respondent JUDGE: LOGAN J DATE: 2 MARCH 2009 PLACE: BRISBANE REASONS FOR JUDGMENT 1 Jemella Australia Pty Ltd (Jemella Australia), is a wholly owned subsidiary of a United Kingdom incorporated company, Jemella Limited, which is the Second Respondent in the proceedings. Jemella Australia is, within Australia, the exclusive distributor of products manufactured by or on behalf of its parent company under the registered trademark GHD. The parent company is the owner of that registered trademark. It has licensed Jemella Australia to use it in Australia and New Zealand. Further, it has authorised Jemella Australia to institute the present proceedings. 2 The trademark GHD is a registered trademark for hair, beauty and fashion products. In particular, the mark is used in respect of hair styling irons. This particular hairstyling iron, the GHD styler, is, on the evidence, one which has a wide acceptance in the market and a good repute. It is a matter of record in this Court that Jemella Australia has taken quite a number of proceedings to check the importation of products which are counterfeit; counterfeit in the sense that they purport to be GHD hairstyling irons whereas, in truth, they are not manufactured by or on behalf of the parent company. The particular goods are five in number. The evidence shows that they are counterfeit GHD hairstyling irons, at least prima facie. 3 The goods concerned have as their apparent owner the First Respondent in these proceedings, Ms Bernadette Steffensen. They were intercepted in the customs zone by the Australian Customs Service (Customs) and seized pursuant to the procedures laid down in the Trade Marks Act 1995 (Cth) (Trade Marks Act). 4 On 5 January 2009 Jemella Australia received from Customs a seizure note to objector relating to the seizure of the subject goods. Thereafter, Jemella Australia issued a series of letters to Ms Steffensen inviting, in effect, the signing of a consent to the forfeiture of the subject goods pursuant to s 135 of the Trade Marks Act. This correspondence, which seems to have paralleled notice of seizure given to Ms Steffensen by Customs did not bear fruit until 28 January 2009. On that date Ms Steffensen executed a consent to forfeiture document. It appears that this document was received by Customs, on 3 February 2009. That same day Jemella Australia instituted the present proceedings. 5 Included in the relief sought in those proceedings is interlocutory relief in the nature of an order for forfeiture and, for that matter, interlocutory injunctive relief. The Trade Marks Act lays down a timeframe within which an action for infringement must be instituted lest Customs be at liberty to release the seized goods to an owner pursuant to s 136 of the Trade Marks Act. It appears that Jemella Australia has deferred until the last possible moment the institution of an action for infringement as provided for by s 137 so as to allow Ms Steffensen the maximum opportunity voluntarily to consent to forfeiture. As it happens, the date of institution of proceedings has coincided exactly with the date upon which it appears that the Customs received from Ms Steffensen her consent to the goods being forfeited. 6 Section 135 of the Trade Marks Act is in these terms: (1) The designated owner of any seized goods may at any time before an objector starts an action for infringement of a notified trademark in respect of the goods, consent to the goods being forfeited to the Commonwealth by giving a notice in writing to that effect to the Customs CEO. (2) If the designated owner gives such a notice, the goods are forfeited to the Commonwealth. 7 Ms Steffensen is the designated owner but, in my opinion, she has not given the notice to Customs' CEO within the timeframe contemplated by s 135. I am of that opinion because it seems to me that the notice was not given until one might expect it would have arrived in the ordinary course of the post. In this instance that seems to coincide with the date upon which the notice was, in fact, received. That being so my opinion is that the operation of s 135(2) has not occurred. That subsection forfeits the goods per force of statute in the circumstances where it can be seen that before action notice of consent to forfeiture has been given. 8 In those circumstances, forfeiture becomes a consequence only of a court order under s 137 following the disposal of a substantive action for infringement. In the interim, s 137 provides for an order that the seized goods be held by the Customs and not released pending the hearing and determination of the substantive proceeding. Jemella Australia is, in my opinion, entitled to such an order pursuant to s 137. That will prevent the release of the goods pending the hearing and determination of the proceeding. 9 There then becomes a question as to whether interlocutory injunctive relief ought to be given. The number of the goods imported, five, makes it unlikely that they were for personal use. An inference therefore arises that the importation of these counterfeit goods is intended by Ms Steffensen for the sale of the goods domestically, in trade or commerce. She has, however, consented to the forfeiture if, albeit, late. There is no other evidence which would suggest that there is any continuance by her of other importations or for that matter that she has in the past imported goods. Ms Steffensen has, I am satisfied, been served with the substantive application and the application for interlocutory injunctive relief. She has confirmed as much in the course of seeking, via a Deputy District Registrar on 27 February, permission to appear today by telephone. See exhibit 1 which is a file note of the conversation. 10 In the result, I did authorise the Deputy District Registrar to contact her to grant her permission today exceptionally to appear by telephone. I have been informed by the court officer that, notwithstanding numerous attempts by him this morning at the designated time to contact Ms Steffensen, the phone number given by her rings to MessageBank. There is some evidence in earlier contact attempts by Jemella Australia of a similar diversion of calls. It seems to me that whilst the consent to forfeiture is ineffective for the purposes of s 135 it does have some resonance in relation to whether, as a matter of convenience, interlocutory injunctive relief ought to go against the background of an absence of any pattern of importation either before or afterwards. 11 Thus, while I am satisfied that the Applicant, Jemella Australia, has established a serious question to be tried at the least in relation to its claim for infringement, I am not satisfied in the circumstances that the balance of convenience favours the grant of interlocutory injunctive relief. 12 Jemella Australia has been put to the expense today of an appearance to seek such relief. It has also been disposed to commence the proceedings. It seems that there has been a lag as between the Customs and Jemella Australia in terms of notification by the Customs of its receipt of the notice of forfeiture. It may be, though, that that lag is but a matter of mere hours in the sense that the proceeding commenced on the day the notice was received. In any event, there is a question of costs in respect of today but that question does, in my opinion, require, if only out of an abundance of caution, the affording of Ms Steffensen an opportunity to be heard. I should record that the contact which she made with the Deputy District Registrar was direct, direct in the sense that it was not made with the benefit of a legal practitioner acting for her. She also notified the Deputy District Registrar that she was a single mother with a child of some twenty-one months. 13 In these circumstances, the appropriate course is, in my opinion, to afford her an opportunity in writing to make submissions in respect of whether costs should be awarded in respect of today or reserved. Jemella Australia should also have an opportunity to make in writing a submission in response. It may be, of course, that matters of private negotiation between the parties resolve that issue and perhaps more substantive issues in the proceedings. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Logan. Associate: Dated: 31 March 2009 Solicitor for the Applicant: Mr L Fox (In-House Solicitor for Applicant) Solicitor for the First Respondent: No appearance by the First Respondent Date of Hearing: 2 March 2009 Date of Judgment: 2 March 2009