FEDERAL COURT OF AUSTRALIA Specsavers Pty Ltd v Buyinvite Pty Ltd [2012] FCA 230 Citation: Specsavers Pty Ltd v Buyinvite Pty Ltd [2012] FCA 230 Parties: SPECSAVERS PTY LTD (ACN 097 147 932) v BUYINVITE PTY LTD (ACN 134 648 589) and STEPHEN PATRICK COLES File number: NSD 389 of 2012 Judge: FOSTER J Date of judgment: 13 March 2012 Legislation: Australian Consumer Law Federal Court Rules 2011, rr 5.22, 5.23(2)(d) and 10.24 Date of hearing: 13 March 2012 Place: Sydney Division: GENERAL DIVISION Category: No Catchwords Number of paragraphs: 7 Counsel for the Applicant: Mr DB Studdy SC Solicitor for the Applicant: Minter Ellison Solicitor for the Respondents: The Respondents did not appear IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 389 of 2012 BETWEEN: SPECSAVERS PTY LTD (ACN 097 147 932) Applicant AND: BUYINVITE PTY LTD (ACN 134 648 589) First Respondent STEPHEN PATRICK COLES Second Respondent JUDGE: FOSTER J DATE OF ORDER: 13 MARCH 2012 WHERE MADE: SYDNEY THE COURT: 1. GRANTS leave to the applicant to file in Court the affidavit of Elisabeth Ailsa Koster sworn on 13 March 2012, the affidavit of Themis Papas sworn on 12 March 2012 and a copy of the affidavit of Ken Taylor sworn on 12 March 2012, and notes the undertaking to the Court of the applicant by their Senior Counsel to file the original of the affidavit of Ken Taylor with the Registry as soon as is practicable. 2. ORDERS that, pursuant to r 10.24 of the Federal Court Rules 2011, service on the second respondent of the Application and supporting affidavits herein be effected by email to the email addresses: 'reception@buyinvite.com.au' and 'member.relations@buyinvite.com.au'. 3. ORDERS that, for so long as the applicant and its franchisees have the exclusive right to offer for sale in Australia Alex Perry branded spectacle frames or glasses, the first respondent by itself, its officers, employees and agents and otherwise howsoever, be restrained from making the representation '80% off Alex Perry Glasses' or '80% off Alex Perry Frames' or any other representation suggesting that it offers for sale Alex Perry glasses or Alex Perry frames or that information relating to Alex Perry glasses or Alex Perry frames is available at the website 'www.buyinvite.com.au'. 4. ORDERS that the first respondent forthwith take all steps necessary to prevent any Google Adword advertisement placed by the respondents, or either of them, being displayed in response to Google searches containing any of the key words 'Alex Perry' or 'Perry' in conjunction with the words 'glasses' or 'frames' or other words to similar effect. 5. ORDERS that the first respondent pay the applicant's cost of the proceeding to date. 6. ORDERS that the proceeding be adjourned for directions to 9.30 am on 22 March 2012 before Foster J. 7. ORDERS that these orders may be entered forthwith. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 389 of 2012 BETWEEN: SPECSAVERS PTY LTD (ACN 097 147 932) Applicant AND: BUYINVITE PTY LTD (ACN 134 648 589) First Respondent STEPHEN PATRICK COLES Second Respondent JUDGE: FOSTER J DATE: 13 MARCH 2012 PLACE: SYDNEY REASONS FOR JUDGMENT 1 On Friday last, the applicant approached the duty judge seeking urgent ex parte interim injunctive relief against the respondents in respect of certain advertisements which appeared on the Internet when the searcher typed in "Alex Perry glasses" using the search engine Google. At that stage, when that search was engaged, advertisements came up almost opposite the advertisement placed by the applicant for its Alex Perry glasses in the following terms: 80% off Alex Perry frames. www.buyinvite.com.au As seen on Today Tonight! Alex Perry frames at irresistible prices. 2 The applicant has the exclusive right to offer Alex Perry branded glasses for retail sale in Australia. The first respondent's advertisement is, therefore, misleading and deceptive and false because it suggests that the first respondent has the capacity to supply Alex Perry branded glasses when it clearly does not. 3 The duty judge last week granted an interim injunction up to and including today and made other orders requiring the originating process and supporting affidavit to be served upon the respondents. 4 When the matter was called on today, Mr Studdy SC appeared for the applicant, but there was no appearance either by or on behalf of either of the respondents. In addition to the material filed last Friday, Mr Studdy sought and was granted leave to file three affidavits, namely, those of Themis Papas sworn yesterday, Ken Taylor sworn yesterday and Elisabeth Ailsa Koster sworn this morning. I am satisfied that the orders for service made by the duty judge last Friday in respect of the first respondent have been complied with and that service has been duly effected on that party. 5 As far as the second respondent is concerned, some difficulties have presented. It would appear that the second respondent may be overseas, although the evidence of this comes from someone who is probably an associate of his and may not be entirely reliable. I note that the second respondent appears to have been in email contact with the solicitors for the applicant yesterday. In the circumstances, I propose to grant an order for substituted service in the terms sought by the applicant. 6 As far as the first respondent is concerned, I am of the view that the evidence relied upon by the applicant discloses a clear breach of the Australian Consumer Law. Because the first respondent has failed to appear this morning, it is in default within the meaning of r 5.22 of the Federal Court Rules 2011. Under r 5.23(2)(d) of those Rules, the applicant may apply for an appropriate order. In the circumstances, the applicant seeks final injunctive relief against the first respondent by reason it its default. Having regard to its failure to appear and to the evidence relied upon by the applicant, I propose to grant final injunctions restraining the first respondent from continuing to contravene the Australian Consumer Law. 7 Accordingly, I make the following orders: (1) Pursuant to r 10.24 of the Federal Court Rules 2011, service on the second respondent of the Application and supporting affidavits herein be effected by email to the email addresses "reception@buyinvite.com.au" and "member.relations@buyinvite.com.au". (2) For so long as the applicant and its franchisees have the exclusive right to offer for sale in Australia Alex Perry-branded spectacle frames or glasses, the first respondent by itself, its officers, employees and agents, or otherwise howsoever, be restrained from making the representation "80% off Alex Perry Glasses" or "80% off Alex Perry Frames" or any other representation suggesting that it offers for sale Alex Perry glasses or Alex Perry frames or that information relating to Alex Perry glasses or Alex Perry frames is available at the website "www.buyinvite.com.au". (3) The first respondent forthwith take all steps necessary to prevent any Google Adword advertisement placed by the respondents, or either of them, being displayed in response to Google searches containing any of the key words "Alex Perry" or "Perry" in conjunction with the words "glasses" or "frames" or other words to similar effect. (4) The first respondent pay the applicant's costs of this proceeding to date. (5) The proceeding be adjourned for directions to 9.30 am on 22 March 2012 before me. (6) The orders which I have just made be entered forthwith. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Foster. Associate: Dated: 16 March 2012