Appellate Review of Discovery Orders in Federal Court: A ...
"...Court orders service by email..."
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12/22/11 Blake Dawson - IP @ Blake Dawson 1/2 www.blakedawson.com/Templates/Publications/x_article_content_page.as« IP @ Blake Dawson 15 December 2011 You¶ve been served! Court orders service by email in SPEEDO trade mark case In brief The Federal Court found that a blogger had been served with court documents when he was emailed originating process by the applicants in a trade mark infringement case. Speedo Holdings B.V. Y EYans [2011] FCA 1089 On 21 September 2011, the Federal Court ordered that a blogger known as “aussiespeedoguy” had been served with court documents when he was emailed originating process by the applicants who were representing the SPEEDO brand in a trade mark infringement case. The respondent, Dave Evans, was responsible for a number of allegedly “offensive” and “pornographic” websites that featured people wearing SPEEDO swimwear and domain names containing the SPEEDO trade mark. While the applicants – the owner of the various registered SPEEDO trade marks, Speedo Holdings B.V., and the distributor and seller of Speedo swimwear, Speedo International Limited – identified Mr Evans as the websites¶ contact, they were unable to determine his residential/postal address. After receiving a response to an email sent to the respondent, the applicants¶ solicitor sent Mr Evans a copy of the filed Originating Application and Statement of Claim commencing the trade mark infringement proceedings. In interlocutory proceedings, the applicants sought orders for deemed and substituted service, as under Rule 10.01 of the FedeUal CoXUW RXleV 2011 (FCR), the documents had not been served personally. Justice Flick found that the originating process had been emailed to a valid address, that the respondent had confirmed receipt of those documents and that the applicants¶ attempts to secure his residential address for service had been unsuccessful. His Honour therefore held that it was not practicable to serve the respondent personally and that the originating process had been brought to the respondent¶s attention for the purposes of Rules 10.23 and 10.24 of the FCR. Orders were made that the originating process was deemed to have been served on the respondent under Rule 10.23 of the FCR and that service on the respondent of any further documents in the proceedings could be similarly effected by email under Rule 10.24 of the FCR, until such time as the respondent¶s residential/postal address was provided. Last month, the Federal Court granted default judgment to the applicants and ordered that the respondent:
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The Federal Court found that a blogger had been served with court documents when he was emailed originating process by the applicants in a trade mark infringement case.
Transcript of "...Court orders service by email..."
12/22/11 Blake Dawson - IP @ Blake Dawson
1/2www.blakedawson.com/Templates/Publications/x_article_content_page.as…
IP @ Blake Dawson
15 December 2011
You’ve been served! Court orders service by email in SPEEDO trade
mark case
In brief
The Federal Court found that a blogger had been served with court documents when he was
emailed originating process by the applicants in a trade mark infringement case.
Speedo Holdings B.V. v Evans [2011] FCA 1089
On 21 September 2011, the Federal Court ordered that a blogger known as “aussiespeedoguy” had been
served with court documents when he was emailed originating process by the applicants who were
representing the SPEEDO brand in a trade mark infringement case.
The respondent, Dave Evans, was responsible for a number of allegedly “offensive” and “pornographic”
websites that featured people wearing SPEEDO swimwear and domain names containing the SPEEDO
trade mark. While the applicants – the owner of the various registered SPEEDO trade marks, Speedo
Holdings B.V., and the distributor and seller of Speedo swimwear, Speedo International Limited –
identified Mr Evans as the websites’ contact, they were unable to determine his residential/postal
address.
After receiving a response to an email sent to the respondent, the applicants’ solicitor sent Mr Evans a
copy of the filed Originating Application and Statement of Claim commencing the trade mark
infringement proceedings. In interlocutory proceedings, the applicants sought orders for deemed and
substituted service, as under Rule 10.01 of the Federal Court Rules 2011 (FCR), the documents had not
been served personally.
Justice Flick found that the originating process had been emailed to a valid address, that the respondent
had confirmed receipt of those documents and that the applicants’ attempts to secure his residential
address for service had been unsuccessful. His Honour therefore held that it was not practicable to serve
the respondent personally and that the originating process had been brought to the respondent’s
attention for the purposes of Rules 10.23 and 10.24 of the FCR.
Orders were made that the originating process was deemed to have been served on the respondent
under Rule 10.23 of the FCR and that service on the respondent of any further documents in the
proceedings could be similarly effected by email under Rule 10.24 of the FCR, until such time as the
respondent’s residential/postal address was provided.
Last month, the Federal Court granted default judgment to the applicants and ordered that the
respondent:
12/22/11 Blake Dawson - IP @ Blake Dawson
2/2www.blakedawson.com/Templates/Publications/x_article_content_page.as…
be restrained from infringing the SPEEDO marks and registering or operating any website featuring
the swimwear at domain names containing the name SPEEDO or any substantially identical or
deceptively similar names;
transfer the domain names containing SPEEDO to the applicants; and
pay to the applicants any amount determined in an inquiry into damages suffered or profits made.
Lessons
This judgment is a reminder of the Court’s position that a respondent who sets a course of
frustrating an applicant from effecting personal service, cannot by their own conduct prevent an
applicant from pursuing claims for relief.
While found not to be relevant in this case, the Court noted that the reference to “not practicable”
under the current FCR, rather than “impractical” under the repealed FCR, did not give rise to a
more constrained meaning, a conclusion supported by the FCR’s Explanatory Statement.
Misuse of a brand/name as part of a domain name can give rise to trade mark infringement
Authors
Jessup, Leah Lawyer [email protected]
Ritson, Lisa Practice Leader [email protected]
Return to IP @ Blake Dawson - 15 December 2011
This publication is intended only to provide a summary of the subject matter covered. It does not purport to be comprehensive
or to render legal advice. No reader should act on the basis of any matter contained in this publication w ithout f irst obtaining
specif ic professional advice.
This article is copyright. For permission to reproduce this article please email Katherine Kulakow ski:
katherine.kulakow ski@blakedaw son.com
© Blake Daw son 2011
