Disney Enterprises, Inc v Sondavid Pty Ltd [2008] FCA 1394

Disney Enterprises, Inc v Sondavid Pty Ltd [2008] FCA 1394

The interlocutory orders were warranted because the applicants sought relief under s 137(5) within the required time, had commenced infringement proceedings, and adduced evidence that the seized imported tops bore images and words substantially identical or deceptively similar to the first applicant's registered Disney Trade Marks and were not manufactured or imported with the first applicant's consent. The Customs CEO had been served and did not object, the first respondent had been served and indicated consent, attempts had been made to serve the second respondent, and the applicants gave the usual undertaking as to damages.

Jurisdiction
Australia
Judgment Date
11 September 2008
Procedural Posture
Trade Mark Infringement Proceedings Concerning Goods Seized by the Australian Customs Service / Ex Parte Notice of Motion for Interlocutory Orders Under S 137(5) of the Trade Marks Act 1995 (cth)
Outcome
Interlocutory orders granted ex parte.
Legal Topics
['registered Trade Marks' 'seizure of Imported Goods' 'interlocutory Relief' 'ex Parte Orders' 'order Preventing Release of Goods by Customs']
['intellectual Property' 'trade Marks' 'customs'] ['registered Trade Marks' 'seizure of Imported Goods' 'interlocutory Relief' 'ex Parte Orders' 'order Preventing Release of Goods by Customs']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Trade Mark Infringement Proceedings Concerning Goods Seized by the Australian Customs Service / Ex Parte Notice of Motion for Interlocutory Orders Under S 137(5) of the Trade Marks Act 1995 (cth)

Legal Issues

  1. 1 ['Whether the Chief Executive Officer of Customs should be restrained under s 137(5) of the Trade Marks Act 1995 (Cth) from releasing seized goods bearing the Disney Trade Marks or substantially identical or deceptively similar marks.' 'Whether the Court could make an interlocutory order directed to the Chief Executive Officer of Customs, a non-party to the proceedings.' 'Whether the evidence supported the making of ex parte orders where the Customs CEO did not object, the first respondent indicated consent, and service on the second respondent had not been effected.']

Ratio Decidendi

The interlocutory orders were warranted because the applicants sought relief under s 137(5) within the required time, had commenced infringement proceedings, and adduced evidence that the seized imported tops bore images and words substantially identical or deceptively similar to the first applicant's registered Disney Trade Marks and were not manufactured or imported with the first applicant's consent. The Customs CEO had been served and did not object, the first respondent had been served and indicated consent, attempts had been made to serve the second respondent, and the applicants gave the usual undertaking as to damages.

Court Disposition

Interlocutory orders granted ex parte.

Orders

  • ['On the applicants giving the usual undertaking as to damages, the Chief Executive Officer of Customs is restrained until further order from releasing any of the goods bearing the Disney Trade Marks or any mark which is substantially identical or deceptively similar to the Disney Trade Marks, which goods are the...