FEDERAL COURT OF AUSTRALIA Dorel Home Furnishings, Inc. v Faulkner Industries Pty Ltd [2020] FCA 353 File number: VID 1234 of 2019 Judge: DAVIES J Date of judgment: 13 March 2020 Catchwords: PRACTICE AND PROCEDURE – default judgment under r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) – respondent had not entered an appearance or filed a defence or appeared at case management hearing – respondent in default – applicant entitled to relief sought – cancellation of trade marks – judgment given for the applicant Legislation: Federal Court Rules 2011 (Cth), rr 5.02, 5.22, 5.23(2)(c), 16.32 Trade Marks Act 1995 (Cth), ss 58, 59, 60, 62A, 88 Cases cited: Bitek Pty Ltd v IConnect Pty Ltd [2012] FCA 133 Chamberlain Group, Inc v Giant Alarm System Co, Ltd (No 2) [2019] FCA 1606 Dunlop Aircraft Tyres Ltd v The Goodyear Tire & Rubber Co [2018] FCA 1014; 262 FCR 76 Date of hearing: 13 March 2020 Registry: Victoria Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 8 Counsel for the Applicant: Mr I. P. Horak Solicitor for the Applicant: Duncan Cotterill Lawyers Counsel for the Respondent: The Respondent did not appear ORDERS VID 1234 of 2019 BETWEEN: DOREL HOME FURNISHINGS, INC. Applicant AND: FAULKNER INDUSTRIES PTY LTD (ACN 143 293 716) Respondent JUDGE: DAVIES J DATE OF ORDER: 13 MARCH 2020 THE COURT ORDERS THAT: 1. Pursuant to r 5.23(2)(c) of the Federal Court Rules, that judgment be entered against the respondent. 2. Pursuant to s 88(1) of the Trade Marks Act 1995 (Cth), the Register of Trade Marks kept by the Registrar of Trade Marks under s 207 of the Trade Marks Act 1995 (Cth) (the Register) be rectified by cancelling each of Australian Trade Mark Registration Nos. 1572717 and 1753737 (the COSCO Registrations). 3. The applicant serve a copy of these Orders on: (a) the Registrar of Trade Marks; and (b) the respondent; within seven (7) days of this order. 4. The Court directs that the Registrar of Trade Marks record the cancellation of the COSCO Registrations on the Register. 5. The respondent pay the costs of the interlocutory application filed 3 March 2020 together with the costs of 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. REASONS FOR JUDGMENT (REVISED FROM TRANSCRIPT) DAVIES J: 1 The applicant has applied for default judgment against the respondent pursuant to r 5.23(2)(c) of the Federal Court Rules 2011 (Cth) (the Rules). That rule 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 an alternative accompanying document referred to in rule 8.05, 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 or alternative accompanying document to which the Court is satisfied that the applicant is entitled … 2 Rule 5.22 of the Rules prescribes when a party is in default as follows: 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. 3 The applicant has relied upon the following defaults by the respondent: (a) the failure of the respondent to file a defence, as required by r 16.32; (b) the failure of the respondent to file an address for service, as required by r 5.02; and (c) the failure of the respondent to attend a hearing of a case management hearing on 6 December 2019. 4 The relevant legal principles to apply in an application pursuant to r 5.23(2)(c) are usefully set out in Bitek Pty Ltd v IConnect Pty Ltd [2012] FCA 133 at [15]–[27]. There are three matters of which the court must be satisfied before proceeding to default judgment: (a) that there has been default under the Rules; (b) that the applicant is entitled to the relief sought; and (c) the relief should be granted as a matter of discretion. 5 Each of these three requirements are met in the present case. First, the defaults are established. Secondly, the second requirement has been interpreted as meaning that the Court must be satisfied that, on the face of the statement of claim, the applicant is entitled to the relief that is claimed. For that purpose, the facts alleged in the statement of claim are taken to have been admitted: Chamberlain Group, Inc v Giant Alarm System Co, Ltd (No 2) [2019] FCA 1606 at [14]. The relief claimed in the present case is the removal of two Australian trade marks from the Register of Trade Marks, which had been registered by the respondent, on the ground that the registrations are invalid. The particulars of validity are that: (a) the respondent is not the owner of the trade marks subject of the registrations within the meaning of s 58 of the Trade Marks Act 1995 (the Act); (b) the respondent did not have an intention to use either trade mark within the meaning of s 59 of the Act; (c) the respondent filed each of the registrations in bad faith, contrary to s 62A of the Act; (d) registration of the trade marks was contrary to s 60 of the Act in circumstances where the applicant had, at the respective filing dates of the trade mark applications, a reputation in Australia in respect of the trade marks. 6 As such grounds found an order for removal under s 88 of the Act, I am satisfied that the applicant is entitled to the relief sought. 7 Thirdly, it is appropriate to grant judgment in default against the respondent in the exercise of discretion. The respondent, by its defaults, has not indicated an intention to participate in the proceeding or to defend the proceeding. The defaults also indicate that the respondent has not indicated a preparedness to cooperate with the conduct of the proceeding. 8 For those reasons, I will make the orders sought in the terms of the form of order that has been provided, noting that paragraphs 2 and 3 are in a similar form to that made by Justice Nicholas in Dunlop Aircraft Tyres Ltd v The Goodyear Tire & Rubber Co [2018] FCA 1014; 262 FCR 76. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Davies. Associate: Dated: 16 March 2020