Case: Chanel Ltd v Kim (2007) 166 FCR 1
Outcome: cited
The other matter which flows is a question of statutory construction. That question is whether or not, in the events which transpired, there was an invalid extension of time under s 137(1). That particular issue having been drawn to my attention, it seemed to me appropriate, in the circumstances and having regard to the potentially limited timeframe for the making of an order under s 137(5), that notice of the question which had arisen be given to the respondents and also to the Chief Executive Officer of the Australian Customs Service, before any final decision was made in respect of the meaning and effect of that provision in the circumstances. I note that Sackville J followed a similar course of giving notice of a question concerning the meaning and effect of s 137(5) of the Act in Chanel Ltd v Kim (2007) 166 FCR 1. I therefore gave directions for the giving of notice concerning the issue and the making of submissions in respect of it, to the Respondents and the Chief Executive Officer of Customs. 12 I am satisfied on the evidence before me that such notice has been given. I am further satisfied on the evidence that the existence of the proceedings has not only been drawn to the attention of the Chief Executive Officer of Customs but that there has been an opportunity for the Chief Executive Officer to take advice from the Australian Government Solicitor in respect of the question. 13 It suffices to note that correspondence has been directed to the Court from the Australian Government Solicitor, the effect of which is that the Chief Executive Officer is aware of the submissions made in respect of the provisions at s 137(1) by Jemella Australia, but does not wish to make any submission concerning the meaning and effect of that section on his own behalf. I am also satisfied on the evidence that the substantive applications have been served both on Mr Bowman and Mr MacKinnon. I note that in respect of Mr Bowman there was an appearance on his behalf by a firm of solicitors in Echuca at the first return date of the application. That appearance was not repeated on the adjourned date when substantive submissions were made in respect of the meaning and effect of s 137(1). 16 Neither in the helpful submissions made on behalf of Jemella Australia, nor as a result of my own researches has any authority directly impinging on the construction of s 137(1) of the Act been disclosed. The closest point to which one gets is a passage at paragraph 31 in the reasons for judgment of Sackville J in the Chanel case: Had the draughter wished to make it clear that no application for an order preventing release of the goods could be made after the 20 day period, or that the court could not make any such order, it would have been easy to say so. Section 137(1), for example, makes it quite clear that an action for infringement must be brought within the 10-day period specified in the notice or with any extended period granted by the Customs Chief Executive Officer, provided the objector has applied for an extension "before the end of the notified period". There would have been no difficulty about incorporating similar language in s 137(5). 17 In the Chanel case Sackville J was confronted with a case which required the construction of s 137(5) of the Act. In that case which concerned a consignment of scarves bearing the applicant's trademark which had been seized by the Customs, the applicant applied for an order to restrain the Customs from releasing the scarves to the respondent. The question which arose for decision was whether it was possible for an order to be made where, as was the case there, more than 20 days had elapsed from the date on which the applicant had commenced its action for infringement of its trademark. It suffices to note that his Honour found that s 137(5) of the Act was not intended to be an exhaustive statement of the circumstances in which this court might make an order preventing the Chief Executive Officer of Customs from releasing seized goods. In other words, it was possible, albeit not under s 137(5), but under more generally conferred powers even after a lapse of the 20 day period, to make an order which prevented the Chief Executive Officer of Customs releasing seized goods. 18 One sees then from the passage which I have quoted from Sackville J's judgment in the Chanel case some indication of a view that there is a degree of rigidity in relation to the 10-day period that one sees in s 137(1). 19 No particular guidance as to the construction of the provision is to be obtained either from the relevant explanatory memorandum or the relevant second reading speech. Section 137(1) falls with Pt 13 of the Act. That part is directed to the importation of goods infringing Australian trademarks. The place of s 137 in that part seems to be to provide a means by which an objector may secure a holding of allegedly infringing goods in the Customs zone, pending the hearing and determination of an infringement application. 20 There is utility in that provision in that it preserves the subject matter of a proceeding and in particular preserves the utility of an infringement proceeding by preventing the passage of allegedly infringing goods from the Customs zone into domestic trade and commerce. 22 There are, therefore, readily identifiable and potentially conflicting commercial purposes which are resolved by the Parliamentary value judgment that I have mentioned. The time that is specified prime facie is quite short. It seems to me that that time represents Parliament's view of a reasonable proportionality between potentially conflicting commercial interests. In those circumstances it seems to me unlikely that Parliament envisaged that there would be any ability for there to be what one might term "slippage" in the time limit prima facie specified in s 137(1). The language of s 137(1) also tends to reinforce that particular impression gleaned from evident purposes in the statute. Sackville J was plainly of the view that the language of s 137(1) had that quality. 23 In my opinion it is not the case though that a failure to institute a proceeding within the 10-day period renders the infringement application incompetent. Part 13 serves a very particular purpose, but it is not in any way exhaustive of the circumstances in which an infringement application may be brought in this court. 24 In short then my opinion is that there was no occasion for the granting of an extension of time to Jemella Australia by the Chief Executive Officer of Customs. It seems to me that what follows from that is that there is no engagement of the particular mechanism found in s 137(5) for the making of an order directed to the Chief Executive Officer of Customs. That is not to say that the court has no power to make such an order, see the Chanel case. 25 The evidence before me satisfies me firstly that there is a serious question to be tried in respect of infringement. There is evidence of a confidential nature in respect of particular identifying qualities of the hairstyling irons, which would lead one to the at least tentative conclusion that the goods which have been seized by the Customs have about them an absence of relevant identifiers. Further, in each instance, the volume of the goods concerned is such that they are unlikely to be merely for personal consumption, but rather there is a likelihood from the volume alone that they are intended to be articles of commerce in this country and have been imported for that purpose. 26 Jemella Australia has made reference to evidence in each case of what is said to be other indicia which suggest that the articles concerned are infringing and have been imported for commercial purposes. It is not necessary, in my opinion, to refer to that evidence, because it seems to be plain enough from the evidence of identification and volume that they are intended for commerce in this country.