FEDERAL COURT OF AUSTRALIA Nokia Corporation v Millaras (No 2) [2010] FCA 1217 Citation: Nokia Corporation v Millaras (No 2) [2010] FCA 1217 Parties: NOKIA CORPORATION v RENAE MILLARAS File number(s): NSD 1352 of 2010 Judge: JAGOT J Date of judgment: 4 November 2010 Catchwords: TRADE MARKS – interlocutory injunction – prima facie case of infringement – goods seized by Australian Customs Service bearing a mark substantially identical or deceptively similar to the applicant's trademark – injunction restraining Australian Customs from releasing the seized goods to the respondent. Legislation: Trade Marks Act 1995 (Cth) Date of hearing: 4 November 2010 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 12 Counsel for the Applicant: Ms G Rubagotti Solicitor for the Applicant: Baker & McKenzie Solicitors Counsel for the Respondent: The Respondent did not appear IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1352 of 2010 BETWEEN: NOKIA CORPORATION Applicant AND: RENAE MILLARAS Respondent JUDGE: JAGOT J DATE OF ORDER: 4 NOVEMBER 2010 WHERE MADE: SYDNEY On the applicant, through its counsel, giving the usual undertaking as to damages, the Court: 1. Orders that, until further order, pursuant to s. 50 of the Federal Court of Australia Act 1976 (Cth), any publication of confidential exhibit KJT-2 to the affidavit of Kenneth James Taylor sworn 2 November 2010, including publication to the respondent and the Australian Customs Service, is forbidden. 2. Orders that, until further order of the Court, the Chief Executive Officer of the Australian Customs Service be restrained from releasing to the respondent, goods bearing: (a) one or more of: (i) Australian registered trade mark 458364 NOKIA in class 9; and (ii) Australian registered trade mark 867057 NOKIA in class 9, (Registered Trade Marks); or (b) any mark which is substantially identical with or deceptively similar to any one or more of the Registered Trade Marks, which goods are the subject of, and referred to in, the Notification of Seizure to Objector dated 13 September 2010 and marked with the Australian Customs Service file number 2010/042036 (Seized Goods). 3. Orders that, until further order of the Court, the respondent, by herself, her servants, her agents or otherwise, be restrained from collecting the Seized Goods from the Australian Customs Service. 4. Orders that, until further order of the Court, the respondent, by herself, her servants her agents or otherwise, be restrained from: (a) manufacturing; (b) importing; (c) causing or procuring the manufacture or importation of; (d) selling or offering or exposing for sale; (e) advertising or promoting; or (f) otherwise providing, goods bearing one or more of: (i) 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. 5. Directs that these orders be entered ex parte and forthwith. 6. Directs the applicant to notify the respondent of these orders and the date of the next directions hearing by sending an email attaching a copy of the orders as entered to the email addresses the subject of order 3 of the Court made 25 October 2010 by 4pm today. 7. Directs the applicant to notify the Chief Executive Officer of the Australian Customs Service of these orders and provide a copy of the orders as entered by 4pm today. 8. Orders that the respondent pay the applicant's costs of and incidental to the application today, and costs of and incidental to the application made on 25 October 2010, as agreed or taxed. 9. List the proceedings for directions before Jagot J at 9.30 am on 18 November 2010. 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 Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1352 of 2010 BETWEEN: NOKIA CORPORATION Applicant AND: RENAE MILLARAS Respondent JUDGE: JAGOT J DATE: 4 NOVEMBER 2010 PLACE: SYDNEY REASONS FOR JUDGMENT 1 This is an application for interlocutory relief in proceedings in which the applicant, Nokia Corporation, alleges that the respondent, Renae Millaras, has infringed registered trademarks by importing into Australia certain goods which (without the applicant's authority) bear one or more of the applicant's trademarks or a mark which is substantially identically with or deceptively similar to one or more of the applicant's trademarks. 2 The marks in question are the trademark "NOKIA" (registration number 458364) in Class 9 relating to, amongst other things, goods described as "telecommunications apparatus and instruments", and the trademark "NOKIA" (registration number 867057) also in class 9 relating to goods including "telephones, cordless, wireless or satellite telephones", as well as "batteries, battery charges [and] power supplies". 3 The seized goods in question are described in a "Notice of Seizure to Objector" from the Australian Customs and Border Protection Service dated 13 September 2010 (marked with file number 2010/042036) as: 15 mobile phones (5 x N97 and 10 x 8900e) bearing Nokia a sign that is substantially identical or deceptively similar to a trademark notified by Nokia Corporation 4 This matter first came before me on 25 October 2010, at which time I made orders permitting substituted service. The matter has come before me today in relation to the application for interlocutory relief which was notified in the application as filed on 14 October 2010. 5 Order 6 of the orders made on 25 October 2010 confirmed that: … the hearing of the applicant's claim for interlocutory relief (see Part B of the Application filed 14 October 2010) is listed at 10.15am on 4 November 2010 before Jagot J. 6 When the matter came for hearing this the matter was called outside the Court and there was no appearance by the respondent. 7 The matter proceeded before me with the application being supported by four affidavits as follows: (1) the affidavit of Robert Anthony Arnold sworn 14 October 2010, with the exhibit RAA-1; (2) the affidavit of Kenneth James Taylor sworn 15 November 2010, with the exhibit KJT-1; (3) the affidavit of Kenneth James Taylor sworn 2 November 2010, with a confidential exhibit which I have made subject to an order under s 50 of the Federal Court of Australia Act 1976 (Cth), being exhibit KJT-2; and (4) the affidavit of Luba Poukchanski sworn 2 November 2010, with the exhibit LP-2. 8 Ms Rubagotti of counsel has helpfully taken me through the affidavits and provided an outline of submissions setting out the basis upon which the application for interlocutory relief is made. This has included evidence in support of the existence of a prima facie case of entitlement to final relief should the evidence remain the same and evidence in support of the balance of convenience favouring the granting of the interlocutory orders sought. 9 As to the prima facie case I am satisfied, on the basis of the evidence currently available, that: - (i) the applicant has established that it is the registered owner of the "NOKIA" trademarks in relation to mobile telephones and accessories, (ii) the respondent imported into Australia the seized goods, being goods in respect of the registered trademarks, (iii) the seized goods, their batteries, instruction booklets and boxes in which they are packed bear marks substantially identical to the registered trademarks, and (iv) the seized goods are not authorised goods, in that the marks have not been applied to the seized goods, their batteries, instruction booklets or their packaging with the licence or approval of the applicant. I also infer, as Ms Rubagotti invites me to do, that the respondent imported the seized goods for the purposes of sale, not personal use. 10 In these circumstances I accept Ms Rubagotti's submission that, if the evidence remains as it is, there is a probability that at the trial the applicant would be held to be entitled to relief. Accordingly, there is a prima facie case of infringement of the registered trademarks by the respondent under s 120 of the Trade Marks Act 1995 (Cth). 11 On the basis of the available evidence, I am satisfied that the balance of convenience is in favour of the granting of the orders. The seized goods, if released to the public, are likely to be misleading and deceptive. The grant of the orders that are sought on an interlocutory basis would provide interim protection to the applicant's valuable proprietary rights. 12 In these circumstances I consider that orders should be made as sought by the applicant and on the basis of the proffered undertaking as to damages. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot. Associate: Dated: 8 November 2010