GSM (Trademarks) Pty Ltd v Shao [2006] FCA 1272

GSM (Trademarks) Pty Ltd v Shao [2006] FCA 1272

The Court held that service should be confirmed because it was impractical to effect personal service, but steps had been taken to bring the application and affidavits to the respondent's notice, including delivery to 728 Parramatta Road and evidence that the respondent received them. The Court also held that the seized goods should not be released because they were 2,965 mobile phone covers bearing the BILLABONG mark, the first applicant owned the relevant registered trade mark, the second applicant was an authorised user, proceedings had been commenced within the time permitted by section 137 of the Trade Marks Act 1995, and Customs did not oppose the order. On the evidence,...

Jurisdiction
Australia
Judgment Date
21 September 2006
Procedural Posture
Trade Mark Infringement Proceeding Concerning Seized Goods / Interlocutory Notice of Motion for Service Orders, an Order Preventing Release of Seized Goods, and Interlocutory Injunctive Relief
Outcome
Interlocutory orders made in favour of the applicants; costs reserved; matter listed for further directions.
Legal Topics
['registered Trade Mark Infringement' 'imported Goods Bearing BILLABONG Mark' 'service and Informal Service' 'interlocutory Injunction' 'release of Seized Goods Under Trade Marks Act 1995']
['intellectual Property' 'trade Marks' 'civil Procedure' 'customs Seizure'] ['registered Trade Mark Infringement' 'imported Goods Bearing BILLABONG Mark' 'service and Informal Service' 'interlocutory Injunction' 'release of Seized Goods Under Trade Marks Act 1995']

Case Brief

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Procedural Posture

Trade Mark Infringement Proceeding Concerning Seized Goods / Interlocutory Notice of Motion for Service Orders, an Order Preventing Release of Seized Goods, and Interlocutory Injunctive Relief

Legal Issues

  1. 1 ['Whether the application and supporting affidavits should be taken to have been served on the respondent under Order 7 rule 10 of the Federal Court Rules.' 'Whether an order should be made under section 137(5) of the Trade Marks Act 1995 preventing the Chief Executive Officer of the Australian Customs Service from releasing the seized goods to the respondent.' "Whether the respondent should be restrained until further order from importing, causing or procuring importation of, or selling or offering for sale goods bearing the applicants' BILLABONG trade marks or substantially identical or deceptively similar marks."]

Ratio Decidendi

The Court held that service should be confirmed because it was impractical to effect personal service, but steps had been taken to bring the application and affidavits to the respondent's notice, including delivery to 728 Parramatta Road and evidence that the respondent received them. The Court also held that the seized goods should not be released because they were 2,965 mobile phone covers bearing the BILLABONG mark, the first applicant owned the relevant registered trade mark, the second applicant was an authorised user, proceedings had been commenced within the time permitted by section 137 of the Trade Marks Act 1995, and Customs did not oppose the order. On the evidence,...

Court Disposition

Interlocutory orders made in favour of the applicants; costs reserved; matter listed for further directions.

Orders

  • ['Applicants granted leave to file the Notice of Motion dated 20 September 2006 and supporting affidavits.' 'Requirements of Order 19 rules 3 and 4 dispensed with and the Notice of Motion made returnable instanter.' 'The application and affidavits of Kenneth James Taylor sworn 7 September 2006 and Marianne David...