FEDERAL COURT OF AUSTRALIA Placitum Pty Ltd v Andreotta [2014] FCA 726 Citation: Placitum Pty Ltd v Andreotta [2014] FCA 726 Parties: PLACITUM PTY LTD (ACN 006 252 384) and JIM'S GROUP PTY LTD (ACN 101 925 268) v PAUL ANDREOTTA File number: VID 154 of 2014 Judge: MURPHY J Date of judgment: 4 July 2014 Catchwords: PRACTICE & PROCEDURE – application for default judgment under r 5.23(2) of the Federal Court Rules 2011 - no notice of address for service filed - no Fast Track Response filed - no appearance at scheduling conference Legislation: Competition and Consumer Act 2010 (Cth) Trade Marks Act 1995 (Cth) Cases cited: Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) (2002) 196 ALR 576 CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170 Deckers Outdoor Corp Inc v Farley (No 5) (2009) 262 ALR 53 Macquarie Bank Ltd v Seagle [2008] FCA 1417 Microsoft Corporation v Short [2011] FCA 247 Speedo Holdings BV v Evans (No 2) [2011] FCA 1227 Date of hearing: 4 July 2014 Date of last submissions: 13 June 2014 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 22 Counsel for the Applicants: Mr P Wallis Solicitor for the Applicants: Jim's Group Pty Ltd Counsel for the Respondent: The Respondent did not appear IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 154 of 2014 BETWEEN: PLACITUM PTY LTD (ACN 006 252 384) First Applicant JIM'S GROUP PTY LTD (ACN 101 925 268) Second Applicant AND: PAUL ANDREOTTA Respondent JUDGE: MURPHY J DATE OF ORDER: 4 JULY 2014 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. Judgment is given for the Applicants on their claim against the Respondent, with damages to be assessed, pursuant to r 5.23(2) of the Federal Court Rules 2011. 2. The Respondent, by himself or by his servants and/or agents or howsoever otherwise, is restrained from infringing each of the Jim's Trade Marks (as defined in the Schedule) and in particular from advertising, promoting or offering for sale (or procuring or inducing any other person to do any of these acts) gardening services under or by reference to: 2.1 either of the Jim's Trade Marks; or 2.2 any other mark substantially identical with or deceptively similar to a Jim's Trade Mark. 3. The Respondent, by himself or by his servants and/or agents or howsoever otherwise, is restrained from, in trade or commerce, engaging in conduct that is misleading or deceptive or is likely to mislead or deceive, by advertising, promoting or offering for sale gardening services under or by reference to: 3.1 either of the Jim's Trade Marks; 3.2 any other mark substantially identical with or deceptively similar to a Jim's Trade Mark; or 3.3 the Jim's Get Up (as defined in the Schedule). 4. The Respondent, by himself or by his servants and/or agents or howsoever otherwise, is restrained from passing off by selling, offering for sale, advertising or promoting gardening services under or by reference to: 4.1 either of the Jim's Trade Marks; 4.2 any other mark substantially identical with or deceptively similar to a Jim's Trade Mark; or 4.3 the Jim's Get Up (as defined in the Schedule). 5. The Respondent, by himself or by his servants and/or agents or howsoever otherwise, is restrained from, in trade or commerce, representing that: 5.1 the Respondent's gardening services are those of the Applicants or either of them; 5.2 the Respondent's gardening services have the licence, sponsorship or approval of (or an affiliation with) the applicants or either of them. 6. The Respondent within 14 days: 6.1 remove the Jim's Trade Marks from any thing in his possession, power or control bearing any of the Jim's Trade Marks; or 6.2 alternatively, deliver up to the Applicants any thing in his possession, power or control bearing any of the Jim's Trade Marks. 7. The Respondent pay the Applicants' costs of and incidental to the proceeding, such costs to be taxed in default of agreement. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. PENAL NOTICE TO: PAUL ANDREOTTA IF YOU (BEING THE PERSON BOUND BY THIS ORDER): (A) REFUSE OR NEGLECT TO DO ANY ACT WITHIN THE TIME SPECIFIED IN THE ORDER FOR THE DOING OF THE ACT; OR (B) DISOBEY THE ORDER BY DOING AN ACT WHICH THE ORDER REQUIRES YOU TO ABSTAIN FROM DOING, YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF PROPERTY OR OTHER PUNISHMENT. ANY OTHER PERSON WHO KNOWS OF THIS ORDER AND DOES ANYTHING WHICH HELPS OR PERMITS YOU TO BREACH THE TERMS OF THIS ORDER MAY BE SIMILARLY PUNISHED. SCHEDULE Jim's Trade Marks means: (a) Australian Registered Trade Mark No. 719872 for the words and device: (b) Australian Registered Trade Mark No. 895897 for the words and device: Jim's Get Up means trailers that are dark green in colour and that contain the Jim's Trade Marks in yellow lettering. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 154 of 2014 BETWEEN: PLACITUM PTY LTD (ACN 006 252 384) First Applicant JIM'S GROUP PTY LTD (ACN 101 925 268) Second Applicant AND: PAUL ANDREOTTA Respondent JUDGE: MURPHY J DATE: 4 JULY 2014 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 Before the Court is an interlocutory application for default judgment by the applicants, Placitum Pty Ltd ("Placitum") and Jim's Group Pty Ltd ("Jim's Group"). 2 The proceeding alleges that the respondent, Paul Andreotta, advertised, promoted and offered for sale gardening services using the applicants' trade marks ("Jim's Trade Marks") and get up. The applicants allege that Mr Andreotta was formerly a franchisee in Jim's Group and had the right to use the trade marks and get up but following termination of the franchise agreement on 17 May 2013 he has continued to offer gardening services while using the Jim's Trade Marks and get up. The applicants allege that Mr Andreotta's conduct: (a) infringes their registered trade marks pursuant to s 120 of the Trade Marks Act 1995 (Cth) ("TMA"); and (b) constitutes misleading or deceptive conduct in breach of ss 18, and false or misleading representations in breach of 29(1)(g) and 29(1)(h), of the Australian Consumer Law ("ACL"), Schedule 2 to the Competition and Consumer Act 2010 (Cth), and passing off. The applicants seek declarations, injunctions and damages. 3 Mr Andreotta has failed or refused to take any step in the proceeding, and has not complied with orders of the Court. The applicants now apply for default judgment, seeking orders for an assessment of damages, injunctions to restrain Mr Andreotta, and an order that he remove the Jim's Trade Marks from anything in his possession, power or control or alternatively deliver up to the applicants any thing which bears the trade marks, together with costs. Procedural history 4 On 7 March 2014 the applicants commenced the proceeding in the Fast Track List by way of Fast Track Application and Fast Track Statement. Attempts to personally serve the proceedings on Mr Andreotta at his residence at 109 Bougainvillea Avenue, Forrestfield, Western Australia, on 19 March 2014, 21 March 2014, 22 March 2014, 24 March 2014, 27 March 2014, 28 March 2014, 29 March 2014 and 23 April 2014 were unsuccessful. 5 On 2 May 2014 I made orders for substituted service that provided for service to be achieved by leaving the Fast Track Application and Fast Track Statement in the letterbox of the house at 109 Bougainvillea Avenue, Forrestfield, Western Australia, as well as sending them by email to paulandreotta@gmail.com and paulyandreo@gmail.com ("Mr Andreotta's email addresses"). However on 3 May 2014 Mr Andreotta was personally served with the Fast Track Application, Fast Track Statement and the Order of 2 May 2014. Out of an abundance of caution on 5 May 2014 Jessica Dabo, a lawyer for the applicants, sent an email to Mr Andreotta's email addresses again providing these documents. 6 The Order of 2 May 2014 provided that the scheduling conference be listed for 23 May 2014. 7 Mr Andreotta did not appear at the scheduling conference. On 23 May 2014 I ordered that: (a) unless or until Mr Andreotta files and serves a Notice of Address for Service, all documents and applications in the proceeding shall be taken to have been served on Mr Andreotta upon those documents having been both sent by pre-paid mail to Mr Andreotta's residence at the address above and sent by email to Mr Andreotta's email addresses; (b) by 30 May 2014 Mr Andreotta file and serve a Notice of Address for Service and a Fast Track Response; and (c) by 13 June 2014 the applicants file and serve any application for orders for default or summary judgment, such application to be listed for hearing on 4 July 2014. 8 On 26 May 2014 Mr Andreotta was served with a copy of the Order of 23 May 2014. As at today's date he has not filed or served a Notice of Address for Service or a Fast Track Response. 9 On 13 June 2014 the applicants filed an interlocutory application for default judgment together with a supporting affidavit of Harpreet Hayer sworn that day, which application was listed for hearing on 4 July 2014. The application (which advised of the return date) and affidavit in support was served on Mr Andreotta on 16 June 2014. Mr Andreotta did not appear at today's hearing. The rules 10 Rule 5.22 of the Federal Court Rules 2011 ("the Rules") provides: A party is in default if the party fails to: (a) do an act required to be done, or to do an act in the time required, by these Rules, or; (b) comply with an order of the Court; or (c) attend a hearing in the proceeding; or (d) prosecute or defend the proceeding with due diligence. 11 Rule 5.23(2) relevantly provides: If a respondent is in default, an applicant may apply to the Court for: … (c) if the proceeding was started by an originating application supported by a statement of claim, or if the Court has ordered that the proceeding continue on pleadings – an order giving judgment against the respondent for the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled; or (d) an order giving judgment against the respondent for damages to be assessed, or any other order… Note 1 The Court may make any order that the Court considers appropriate in the interests of justice – see rule 1.32. 12 In Speedo Holdings BV v Evans (No 2) [2011] FCA 1227 ("Speedo v Evans") at [19]-[25] Flick J summarised some of the principles in respect of default judgment applications under r 5.23(2)(c), and its predecessor the former Order 35A r 3(2)(c). I adopt his Honour's summary. These principles are well established and it is unnecessary to now reiterate them. 13 The applicants have filed affidavit material which shows that Mr Andreotta has been served with copies of the Fast Track Application, the Fast Track Statement, the Orders of 2 May 2014 and 23 May 2014, the interlocutory application seeking default judgment, and the affidavit by Ms Hayer in support of the application. 14 As the applicants contend, Mr Andreotta is in default pursuant to r 5.22(b) of the Rules for having failed to comply with the Order of 23 May 2014 which required him to file and serve a Notice of Address for Service and a Fast Track Response by 30 May 2014. He is also in default pursuant to r 5.22(c)for having failed to attend the scheduling conference on 23 May 2014, and pursuant to r 5.22(d) for having failed to defend the proceeding with due diligence. 15 I am satisfied that each element of the civil wrongs alleged, namely: (a) trade mark infringement under s 120(1) and (2) of the TMA, (b) misleading or deceptive conduct under s 18 of the ACL and false or misleading representations under s 29(1)(g) and (h) of the ACL; and (c) passing off; are properly and discretely pleaded in the Fast Track Application and Fast Track Statement. 16 I am also satisfied on the face of the pleadings, treating the facts pleaded as admitted, that the elements of the causes of actions pleaded are made out. In particular the pleadings establish that the applicants own the Jim's Trade Marks and establish their infringement by Mr Andreotta. The pleadings also make out the elements of misleading or deceptive conduct and false and misleading representations in contravention of the ACL, and the tort of passing off. Finally, I am satisfied on the pleadings that the applicants are entitled to the relief claimed in the interlocutory application in respect of each of the pleaded causes of action. 17 I consider that the discretion to enter default judgment should be exercised in the applicants' favour. 18 The applicants seek an order that judgment be given for the applicants with damages to be assessed, pursuant to r 5.23(2) of the Rules. In my view such an order is appropriate: see CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170 per Perram J, and Speedo v Evans at [34] per Flick J. 19 The applicants also seek an order that Mr Andreotta either remove the Jim's Trade Marks from anything in his possession, power or control which bears the marks, or alternatively, deliver up to the applicants anything in his possession, power or control which bears the Jim's Trade Marks. The applicants do not wish to take delivery of Mr Andreotta's trailer which is alleged to be emblazoned with Jim's Trade Marks but, in the circumstances, seek to compel Mr Andreotta to take positive steps to remove the marks from the trailer. 20 In my view such an order is appropriate. The Court has inherent jurisdiction to order delivery up of the instruments of a respondent's misleading or deceptive conduct. Such an order is in the nature of a mandatory injunction, and may operate in aid of injunctions to restrain the infringing conduct: see Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) (2002) 196 ALR 576 at [43] per Goldberg J; Macquarie Bank Ltd v Seagle [2008] FCA 1417 at [23] per Jagot J. 21 Injunctions to restrain Mr Andreotta from continuing to infringe the applicants' trade marks, and from continuing misleading or deceptive conduct, false or misleading representations and passing off are also appropriate: see Microsoft Corporation v Short [2011] FCA 247 per Stone J; Deckers Outdoor Corp Inc v Farley (No 5) (2009) 262 ALR 53 per Tracey J. 22 I have made the orders sought in the interlocutory application. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Murphy. Associate: Dated: 4 July 2014