IN THE FEDERAL COURT OF AUSTRALIA
VICTORIADISTRICT REGISTRY	V517 OF 2003

BETWEEN:	NOKIA CORPORATION APPLICANT
AND:	TRUYEN MAI FIRST RESPONDENT JIMMY MAI SECOND RESPONDENT
JUDGE:	KENNY J
DATE OF ORDER:	2 SEPTEMBER 2003
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. The second respondent herein be removed from the title of this proceeding pursuant to O 6 r 9 of the Federal Court Rules.

2. The amended statement of claim, amended application and notice of motion herein be amended in accordance with the second amended statement of claim, the second amended application and the amended notice of motion filed herein by the applicant.

THE COURT DECLARES BY CONSENT THAT:

3. The use by the respondent (otherwise known as Jimmy Mai) whether by himself, his employees or agents or otherwise howsoever of any of the following Australian Registered Trade Marks:

(a) Australian Registered Trade Mark No 458364 for NOKIA in class 9;

(b) Australian Registered Trade Mark No 490781 for NOKIA AND DEVICE in class 9

(d) Australian Registered Trade Mark No 867057 for NOKIA in classes 9, 18, 25, 38, 41 and 42,

(together referred to as "the Nokia Trade Marks") or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to:

(e) any of the goods in respect of which the Nokia Trade Marks are respectively registered ("the registered goods");

(f) goods of the same description as registered goods; or

(g) services that are closely related to registered goods,

not manufactured or provided by or under the authority of the applicant constitutes an infringement of the Nokia Trade Marks.

THE COURT ORDERS BY CONSENT THAT:

4. The respondent (otherwise known as Jimmy Mai) be restrained whether by himself, his employees or agents or otherwise howsoever from infringing any of the Nokia Trade Marks and in particular from using the Nokia Trade Marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to:

(a) any of the registered goods;

(b) goods of the same description as registered goods; or

not manufactured or provided by or under the authority of the applicant or otherwise procuring or inducing any other person to do any of the acts specified in this paragraph (4).

5. The respondent (otherwise known as Jimmy Mai) perform the Deed of Undertaking signed by him and attached as Annexure A hereto.

6. Within fourteen (14) days of the service of these orders upon him, the respondent (otherwise known as Jimmy Mai) deliver up on oath to the applicant or its duly authorised agents for destruction under supervision all goods in his possession, power, custody or control, or the possession, power, custody or control of his employees or agents or otherwise, to which any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the applicant.

7. Within fourteen (14) days of the service of these orders upon him, the respondent (otherwise known as Jimmy Mai) deliver up on oath to the applicant or its duly authorised agent for destruction under supervision of all catalogues, price lists, brochures and other documents and materials in his possession, power, custody or control, or the possession, power, custody or control of his employees or agents or otherwise, bearing any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the applicant.

8. Within twenty-eight (28) days of the service of these orders upon him, the respondent (otherwise known as Jimmy Mai) provide discovery to the applicant verified by affidavit in respect of all sales by him of items bearing the Nokia Trade Marks and any of them.

AND THE COURT FURTHER ORDERS THAT:

9. The respondent (otherwise known as Jimmy Mai) pay the applicant damages for infringement of the Nokia Trade Marks, to be assessed together with interest thereon, or, at the option of the applicant on a date to be fixed, the respondent (otherwise known as Jimmy Mai) account for the profits made by him by the said infringements and pay the applicant the amount found to be due on the taking of such account, together with interest thereon.

10. The respondent (otherwise known as Jimmy Mai) pay the applicant's costs of the respondent's motion, notice of which is dated 15 August 2003, on the indemnity basis.

11. Save as provided for in paragraph (10), the respondent (otherwise known as Jimmy Mai) pay the applicant's costs of the proceeding to date, including the costs of the motion, first dated 7 August 2003 and amended on 19 August 2003.

12. The matter be fixed for mention on a date to be fixed.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIADISTRICT REGISTRY	V517 OF 2003

BETWEEN:

NOKIA CORPORATION

APPLICANT

AND:

TRUYEN MAI

FIRST RESPONDENT

JIMMY MAI

SECOND RESPONDENT

JUDGE:	KENNY J
DATE:	2 SEPTEMBER 2003
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

introduction

1 Pursuant to O 20 r 1 of the Federal Court Rules ("the Rules"), Nokia Corporation ("Nokia") moves for summary judgment against Truyen Mai, who is also known as Jimmy Mai. Mr Mai also moves for orders that:

1. The proceeding against the Second Respondent be dismissed

2. The Applicant pay the First Respondent's cost of the motion

3. Such other orders as the Court deems fit

I turn first to the application for summary judgment.

application for summary judgment

2 Order 20 r 1 of the Rules relevantly provides that:

Where, in relation to the whole or any part of the applicant's claim for relief, there is evidence of the facts on which the claim or part is based, and -

(a) there is evidence given by the applicant or by some responsible person that, in the belief of the person giving the evidence, the respondent has no defence to the claim or part

...

the applicant may move on notice for such judgment for the applicant on that claim or part and the Court may pronounce such judgment and make such orders as the nature of the case requires.

3 Before Nokia can succeed on its summary judgment application, it must appear to the Court that Mr Mai has no arguable defence to Nokia's claim: see Geoffrey Inc & Ors v Luik & Anor (1997) 38 IPR 555, at 563 and 565 per R D Nicholson J; Flocast Australia Pty Ltd v Purcell & Ors (1997) 39 IPR 177, at 178-179 per Heerey J, citing Caterpillar Inc & Anor v Sun Forward Pty Ltd (1996) 36 IPR 411 ("Caterpillar"), at 413-414 per Drummond J. As Drummond J noted in Caterpillar, at 414:

[T]here is no justification for importing into the Federal Court rule all the detailed restrictions that the cases identify as applicable to the traditional summary judgment rules. But O 20 is not intended to provide an alternative to trial as the ordinary method of resolving litigation in the court: see Bell v Clare (1989) 23 FCR 274 at 280. Its function is limited to providing an expeditious means of resolving litigation where the applicant can clearly demonstrate that there is no real defence to particular claims made by it.

In other words, upon Nokia's application, the standard of satisfaction required for summary judgment is that stated in Dey v Victorian Railways Commissioners (1949) 78 CLR 62, at 91 per Dixon J and General Steel Industries Inc v Commissioner for Railways (1964) 112 CLR 125, at 129-130 per Barwick CJ.

the claim made by nokia

4 Nokia is a Finnish company and is the registered owner of four trade marks variously in Classes 9, 16, 18, 25, 38, 41 and 42 in respect of goods (and services) including electrical and telecommunications apparatus and instruments, carrying cases for communications apparatus and its accessories and accessories and spare parts for such goods (in Class 9) (referred to below as "the Nokia trade marks").

5 By its application and statement of claim (which have been amended twice) Nokia alleges that Mr Mai has, without its licence or authority, manufactured or caused to be manufactured, imported or caused to be imported, advertised, offered for sale, distributed, supplied and sold goods bearing one or more of the Nokia trade marks. Nokia also alleges that, by reason of this conduct, Mr Mai has breached an enforceable undertaking given by him to Nokia on 9 December 2002.

6 In support of its summary judgment application, Nokia relies upon the affidavits of Luke Andrew Merrick sworn on 6 August 2003, Kenneth James Taylor sworn on 6 August 2003, Huong Nguyen sworn on 6 August 2003, Stephen Marcus Stern sworn on 7 August 2003 and John Clifton Ramsden sworn on 11 August 2003 (and the exhibits accompanying these affidavits). In opposition, Mr Mai relied on the affidavits Truyen Mai sworn on 20 August 2003 and Katherine Jane Hay sworn on 19 August 2003.

7 I interpolate here that, in support of his own motion, Mr Mai also relied on an affidavit sworn by him on 18 August 2003 and by Kamilla Jane Shaw on 21 August 2003. In opposition, Nokia relied on an affidavit sworn by Mr Merrick on 20 August 2003

the evidence - summary judgment

(a) The evidence for Nokia

8 Exhibited to Mr Stern's affidavit were certified copies of the relevant Certificates of Trade Mark Registration. In conformity with O 20, r 1, he deposed that he did not believe that Truyen Mai (or Jimmy Mai) had any defence to the allegations made by Nokia in this proceeding.

9 On 13 April 2002 Ms Nguyen went, so she deposed, to Kiosk 3, 80 Harvester Road, Sunshine in Victoria ("the Sunshine premises"). At the Sunshine premises she observed 79 mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 1 mobile phone cover bearing the nokia trade mark for a Nokia 3310 mobile phone; 5 mobile phone neck straps bearing the nokia trade mark; and 5 mobile phone covers bearing the nokia trade mark for Nokia 8310 mobile phones. She bought 3 transparent plastic mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 5 opaque plastic mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones; 4 mobile phone neck straps bearing the nokia trade mark; 1 black mobile phone pouch bearing the nokia trade mark for a Nokia 8210 mobile phone; and 2 black mobile phone pouches bearing the nokia trade mark for Nokia 8850 mobile phones.

10 Ms Nguyen exhibited to her affidavit a receipt for the purchase of these items. The receipt was endorsed as follows:

Direct communications specialist

ABN: 57 179 034 246

A sales attendant also gave her a business card, which read:

Jimmy Mai

Manager

Tel: (03) 9312 6700

Fax: (03) 9312 6800

Mob: 0416 152 687

Sunshine Market Place

(Next to Village)

Kiosk 3 (in front of Big W)

80 Harvester Road

Sunshine Vic 3020

direct communications specialist

11 The evidence of Mr Taylor, who is qualified to identify counterfeit Nokia products, was that all the items bought by Ms Nguyen on 13 April 2002 were counterfeit (in the sense that the nokia trade marks had not been affixed with Nokia's authority, knowledge or consent and the goods had not been manufactured by or under Nokia's authority). Amongst other things, Mr Taylor deposed that all the neck straps were counterfeit since Nokia did not manufacture or authorize the manufacture of any mobile phone neck straps.

12 Mr Taylor further deposed that, also on 13 April 2002, he went to a stall at the Laverton market, Leaks Road, Laverton ("the Laverton premises"). Whilst he was there, he counted 22 mobile phone covers bearing the nokia trade mark for Nokia 8210/8250 mobile phones that were on display and being offered for sale. He purchased one of these phone covers, which, so he deposed, was also counterfeit (in the sense referred to above, including that it bore an unauthorized nokia trade mark). At the time of his purchase, Mr Taylor received a receipt and a business card that gave the same information as the card received by Ms Nguyen.

13 Mr Taylor also deposed that, on or about 1 June 2002, he attended the Sunshine premises and observed in excess of 30 mobile phone covers for Nokia 8210 and 8250 mobile phones, all bearing the nokia trade mark, on display and being offered for sale. He bought 4 of these covers that, so he deposed, were counterfeit (in the sense already mentioned). He was given a receipt referring to "Direct Communications Specialist" and another business card in the same form as before.

14 On or about 27 November 2002, Mr Ramsden attended the Sunshine premises. Whilst he was there, he served a letter of demand by handing the letter to an attendant at the premises. Further, whilst there, he observed at least 40 assorted mobile phone covers, all bearing the nokia trade mark, for various models of Nokia mobile phones and approximately 40 mobile phone neck straps bearing the nokia trade mark on display and being offered for sale. As already noted, according to Mr Taylor, Nokia does not manufacture or authorised to be manufactured any such neck straps and, accordingly, they were counterfeit.

15 The letter of demand, which was dated 15 November 2002, was from Nokia's solicitors (Corrs Chambers Westgarth ("Corrs")) to "Direct Specialist Communications". The letter said in part:

It has come to our client's [Nokia] attention that you are importing, manufacturing, causing to be imported or manufactured, distributing, offering for sale, promoting for sale and selling mobile phone batteries, covers or other accessories, bearing one or more of the Nokia Trade Marks or a name, word, mark, sign or device which is substantially identical or misleadingly, deceptively or confusingly similar thereto ("Infringing Products").

...

Your conduct in dealing with Infringing Products amounts to a blatant infringement of several of the Nokia Trade Marks, in respect of which our client is entitled to institute proceedings for trade mark infringement against you, in accordance with the provisions of the Trade Marks Act 1995.

Furthermore, your conduct is misleading or deceptive or likely to mislead or deceive in contravention of section 9 of the Fair Trading Act 1999 (VIC) and the equivalent provisions of the Fair Trading Acts of the other States and Territories in which you have distributed, offered for sale and/or sold Infringing Products. Additionally, your conduct constitutes a "passing-off" of the Infringing Products as and for products sourced from our client. Your conduct also constitutes the making of false representations in contravention of section 12 of the Fair Trading Act 1999 (VIC) and the equivalent provisions in the Fair Trading Acts of the other States and Territories in which you have distributed, offered for sale and/or sold Infringing Products.

...

Our client is willing to consider resolving this matter on a commercial basis (avoiding the need for the parties to engage in expensive legal proceedings), provided that it receives your full cooperation. ...

16 On or about 6 December 2002, Mr Merrick, a solicitor at Corrs, received a telephone call from a man who identified himself as Mr Jimmy Mai. Mr Mai informed Mr Merrick that he had received the letter of demand and would attend his office on Monday 9 December 2003 to provide a signed deed of undertaking in relation to his conduct in respect of Nokia's trade marks, a statutory declaration in relation to his dealings with the counterfeit goods, and deliver up the counterfeit goods in his possession.

17 On 9 December 2002, a man who introduced himself to Mr Merrick as Jimmy Mai, handed Mr Merrick a deed of undertaking, a statutory declaration and 10 mobile phone covers bearing the nokia trade mark.

18 According to the evidence of Mr Taylor, all 10 mobile phone covers were counterfeit. A document, which was headed "Deed of Undertaking" and bore the signature of Truyen Mai, read as follows:

I, Truyen Mai, of Sunshine Plaza Shopping Centre, 80 Harvester Road, Sunshine Vic 3020, in consideration of Nokia Corporation not commencing immediate legal proceedings against me, hereby undertake to:

(a) immediately cease and forever desist; and

(b) cause my employees, servants and agents to immediately cease and forever desist,

from using in any manner whatsoever:

(c) any and all of the trade marks which Nokia Corporation is the registered owner or in respect of which Nokia Corporation has a reputation in Australia (all such trade marks hereafter being referred to as the "the Nokia Trade Marks"); or

(d) any name, word, mark, sign or device which is substantially identical with or misleadingly, deceptively or confusingly similar to any of the Nokia Trade Marks,

including (without limiting the generality of the foregoing) from doing so by importing or causing to be imported, manufacturing or causing to be manufactured, distributing, advertising for sale, offering for sale, promoting for sale, keeping for sale or selling in Australia or elsewhere any products bearing or sold under or by reference to the Nokia Trade Marks or any of them or any other name, word, mark, sign or device which is substantially identical with or misleadingly, deceptively or confusingly similar to any of the Nokia Trade Marks.

19 The statutory declaration, which was handed to Mr Merrick, also purported to have been made by Truyen Mai and stated, amongst other things, that Truyen Mai had purchased a number of counterfeit Nokia products, including mobile phone covers, straps and batteries, from "Speedylink" at 277 Victoria Street, Abbotsford in Victoria. Truyen Mai stated that he had made a gross profit of $1500 from selling the goods.

20 Notwithstanding these events, Mr Taylor stated that, on or about 4 May 2003, he again attended the Sunshine premises and counted 47 mobile covers for various Nokia mobile phones, all bearing the nokia trade mark, which were on display and offered for sale in glass display cases. He stated that he asked the sales attendant:

... if he had any batteries for Nokia mobile phones. He then said that he had "genuine" Nokia batteries for Nokia mobile phones priced at $30 each. The ... Attendant then reached under the counter and produced a battery bearing the word nokia.

Mr Taylor said that he purchased 3 mobile phones covers and the battery. He was provided with a receipt that bore the same business name and ABN as previous receipts. He deposed that the mobile phone covers and the battery that he purchased were endorsed with one or more of the Nokia trade marks and were counterfeit.

21 Later on 4 May 2003, Mr Taylor attended the Laverton premises, where he observed 7 mobile phone covers, all bearing the nokia trade mark, for Nokia phones on display and being offered for sale. As the covers were not packaged for sale or sold in standard Nokia packaging, he believed that they were counterfeit.

22 On 8 July 2003, Nokia commenced the present proceedings. Subsequently, on or about 11 July 2003, Nokia's solicitors were informed that the Australian Customs Service ("ACS") had made two seizures of goods, all bearing the name nokia, and consigned to "Jimmy Mai".

23 The first seizure was made on 5 July 2003, when the ACS seized 591 mobile phone covers bearing the nokia trade marks. The second seizure was made on 6 July 2003, when the ACS seized 836 mobile phone covers and 18 mobile phone pouches, all bearing the nokia trade marks. An officer of the ACS subsequently informed Mr Merrick that a person called Jimmy Mai had signed notices of Consent to Forfeit Goods in respect of the two consignments.

24 On 4 August 2003, Mr Merrick inspected the seized goods and took photographs of samples of them. Mr Merrick deposed that the goods seized on 5 July 2003 fell into three categories, namely: (1) mobile phone covers for Nokia 8310 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (2) mobile phone covers for Nokia 6610 mobile phones of various colours bearing the nokia trade mark, packaged in "zip lock" plastic bags; and (3) mobile phone covers of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping. In the third group, the mobile phone covers were bundled together with an elastic band and a sticker stating "8310>6220 (New sample)" on the side of the covers. None of the goods seized on 5 July 2003 were packaged in Nokia's standard packaging.

25 Mr Merrick also examined the goods seized on 6 July 2003, which he said fell into 9 categories, namely: (1) leather-look pouches for various models of Nokia mobile phones bearing the words "for nokia" packaged in clear "cellophane" plastic wrapping; (2) canvas and leather-look pouches for various models of Nokia mobile phones bearing the nokia trade mark packaged in clear "cellophane" plastic wrapping; (3) mobile phone covers of various colours bearing the words "Nokia 2100" packaged in clear "cellophane" plastic wrapping in two bundles of six and seven units respectively; (4) mobile phone covers of various colours bearing the nokia trade mark for digital camera enabled Nokia mobile phones packaged in clear "cellophane" plastic wrapping; (5) mobile phone covers for Nokia 8310 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (6) mobile phone covers for Nokia 8310 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (7) mobile phone covers for Nokia 8250 mobile phones of various colours bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping; (8) mobile phone covers bearing the nokia trade mark for digital camera enabled Nokia mobile phones, packaged in clear "cellophane" plastic wrapping; and (9) six miscellaneous mobile phone covers bearing the nokia trade mark, packaged in clear "cellophane" plastic wrapping. None of the goods seized on 6 July 2003 were packaged in Nokia's standard packaging.

26 Mr Taylor deposed that he examined the digital photographs taken by Mr Merrick of the goods seized by ACS on 5 and 6 July 2003. His evidence is that the goods depicted in the photographs were counterfeit (in the sense referred to above). Nokia has amended its application and statement of claim to take account of these later events.

(b) The Evidence of Mr Mai

27 In an affidavit sworn on 20 August 2003, Mr Mai deposed that he is the owner of a business, which trades under the name "Direct Specialist Communications", at both the Sunshine and Laverton premises. In particular, he deposed:

The business retails mobile telephones and a variety of what a[re] commonly known as "after market" accessories for use with mobile telephones. These accessories include telephone covers and keypads, neck straps and carrying pouches ...

...

After Market accessories are purchased [from] a variety of suppliers. Some of the accessories carry the brand name of the telephone or telephone series for which they are suitable. Other accessories have both the brand name of a type of telephone and the brand name of the manufacturer or distributor of that particular line of accessories. Other accessories have no brand name at all and may be suitable for use with one or more types of mobile telephones.

The business has brought [sic] accessories for use with Nokia mobile telephones from a variety of after market suppliers, which include Cellnet and Speedy Link Communications. All of the products that are the subject of this proceeding were purchased from Speedy Link.

28 Mr Mai admitted that he signed the deed of undertaking, completed the statutory declaration, and took the samples of his product to Mr Merrick. He deposed:

At the time it was my belief that once the documents had been signed and handed over together with the samples, that there would be no further action by the Applicants solicitors.

29 He deposed that Mr Merrick and he subsequently agreed that he would pay an amount of $3500 by way of damages. He said, however, that:

I was about to make arrangements for the payment of $3,500.00 to Luke's firm when I received a visit from Speedy Link employee who I know by the name of "Tinn". I told him about my dealings with Luke Merrick and showed him the letter of demand. Tinn told me that Speedy Link had also received a letter of demand, as had many of Speedy Link's customers. Tinn told me that I had done nothing wrong and that no one had action taken against them by the Applicants [sic] solicitors. Tinn then tore up the letter of demand and threw it in a bin. I spoke to Luke again on the telephone after my discussion with Tinn and told him what I had been told by Tinn. I said that all the other customers got letters, but they hadn't paid anything so I did not believe that I should have to do so.

I did not pay the amount of $3,500.00 and I did not hear anything further from Luke for many weeks as he did not insist on the payment and no further action was taken. I believed that Tinn was correct and I had done nothing wrong. I therefore began to put some of the Nokia products back on the shelves of the Kiosk in March or April 2003.

30 Mr Mai admitted, in substance, that he had intended to import the goods that were seized by the ACS in July 2003. He deposed that:

In about May or June 2003, I received a telephone call from Chan [a person whom he knew]. He told me that he was closing his shop in Hong Kong because the SARS virus had badly affected his business. He asked me whether I wanted to purchase his leftover stock of accessories. I was interested in his offer so we negotiated a price. There were two parcels of the accessories and I paid $2,000.00 for one box and $900.00 for the other box. The negotiations were all carried out on the telephone and I sent the money to Chan's bank account by telegraphic transfer.

In or about July 2003, I received a letter from the Australian Customs Service, which advised me that the parcels had arrived from Hong Kong and could be collected at Melbourne Airport. When I went to the Airport I paid approximately $200.00 in charges and GST and I went to collect the parcels from customs. When I went to the customs area I meet [sic] with a customs officer who showed me some Nokia phone covers and told me that customs would need to hold the goods. I was then told that any items that did not carry the Nokia trade mark would be sent to me. ...

Shortly after my visit to Melbourne Airport I received the other goods. ... . Chan did not provide me with any details regarding the accessories that he was sending to me.

I also received in the post two notices of seizure for the goods that had been held by customs. As I did not want any further trouble with the Applicant or its solicitors, I signed the forms and return them to customs.

the evidence - the respondent's application

31 It is no longer in contest that "Truyen Mai" is the same person as "Jimmy Mai". In an affidavit sworn on 18 August 2003, Mr Mai deposed that he is formally known as "Truyen Mai", although he conducts his business using the name "Jimmy Mai". It is clear, however, why this was not at first apparent to Nokia's solicitors. The circumstances then known to Nokia's solicitors apparently indicated that Truyen Mai was not Jimmy Mai but Jimmy Mai's wife.

32 Ms Nguyen deposed that, when she attended the Sunshine premises on 13 April 2002, an "Asian female shop attendant" identified herself as "Yen" and referred to her husband as "Jimmy". According to Ms Nguyen, "Yen" said that she ran the business conducted at the Sunshine premises with her husband. I note that Mr Taylor deposed that he was present when Ms Nguyen made her purchases on 13 April 2002. It would, therefore, be unsurprising if, after their visit to the Sunshine premises on 13 April 2002, both Ms Nguyen and Mr Taylor believed that Truyen Mai and Jimmy Mai were wife and husband. Further, Mr Ramsden's evidence was that, on 27 November 2002, he met a female attendant at the Sunshine premises who identified herself as "Yen Li Mai" and referred to "Jimmy Mai" as the manager of the business.

33 In his affidavit sworn on 20 August 2003, Mr Merrick deposed that, at the time of instituting the proceeding, he had "formed the view that Truyen Mai and Jimmy Mai were separate individuals and that they were both a party to the various infringements". This was a reasonable view based on what Mr Merrick knew at the time. There was the information conveyed to him by Ms Nguyen, Mr Taylor and Mr Ramsden. It is also to be borne in mind, as Mr Merrick noted, that the business name "Direct Specialist Communications" was registered in the name of "Truyen Mai"; almost all the receipts bore the endorsement of "Direct Specialist Communications" and a relevant ABN number registered in the name of "Truyen Mai"; business cards carried the name "Jimmy Mai"; and a receipt provided to Mr Nguyen bore the text "salesperson - Yen".

34 It was not until Mr Ramsden served the documents initiating this proceeding that the issue of identity arose. Mr Ramsden deposed that:

On or about 8 July 2003, I attended the Sunshine premises. I approached an Asian male shop attendant working there and asked:

Is Truyen Mai here?

The Asian male shop attendant replied:

That's me.

I then handed the Asian male shop attendant the Documents and told him that they were court documents in relation to his dealings with counterfeit Nokia products. I then asked him:

Is Jimmy Mai here?

He replied:

I am Jimmy Mai - that's my English name."

35 Mr Mai agreed with this description of his meeting with Mr Ramsden on 8 July 2003. Mr Mai also deposed that, shortly after he was served with the documents initiating the proceedings, he received a telephone call from Mr Merrick. During the course of that conversation, Mr Mai said that he told Mr Merrick that "although I used the name Jimmy Mai my proper name was Truyen Mai".

36 On 31 July 2003, Mr Mai's solicitors sent a facsimile letter to Mr Merrick informing him that Truyen Mai and Jimmy Mai were the same person. Bearing in mind the other contents of this letter, however, I accept, as Nokia's counsel submitted, that Mr Merrick was entitled to be somewhat sceptical about what he was told. He responded by facsimile letter of the same date, saying that consideration would be given to amending Nokia's statement of claim and application upon "receipt of appropriate photographic identification".

37 By facsimile letter dated 6 August 2003, Mr Mai's solicitors advised that they were "in the process of obtaining suitable identification from [their] client, to support the assertion in relation to [their] client's identity". They complained that the applicant had "not afforded [Mr Mai] the opportunity to provide instructions on the issue of his identity". Not unreasonably, Nokia's solicitors responded that:

We find it difficult, to say the least, to accept that it has taken you a full week to obtain evidence of the identity of your client.

38 Some days later, on 15 August 2003, Mr Mai's solicitors forwarded a copy of the respondent's notice of motion which is presently before the Court. On 18 August 2003, Nokia's solicitors received a copy of Mr Mai's sworn affidavit. Mr Merrick deposed that Nokia took steps to amend its pleadings and notice of motion in consequence of this affidavit, which included the photographic identification he originally sought. I accept, as Nokia submitted, that, had Nokia received Mr Mai's affidavit (or the photographic identification in it) earlier, then it would also have made consequential amendments to its pleadings at an earlier date.

the parties' respective positions

39 By its motion, notice of which was amended on 19 August 2003, Nokia sought summary judgment in the following terms:

(a) a permanent injunction restraining the Respondent whether by himself, his employees or agents or otherwise howsoever from infringing any of the [Nokia trade marks] and in particular from using the Nokia trade marks or any of them or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to:

· any of the goods in respect of which the Nokia Trade Marks are respectively registered ("registered goods");

· goods of the same description as registered goods; or

· services that are closely related to registered goods,

not manufactured or provided by or under the authority of the Applicant or otherwise procuring or inducing any other person to do any of the acts specified in this paragraph (a);

(b) a mandatory injunction requiring the Respondent to perform the Deed of Undertaking signed by him ...;

(c) a declaration that the use by the Respondent whether by himself, his employees or agents or otherwise howsoever of any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto in the course of trade on or in relation to:

· any of the registered goods;

· goods of the same description as registered goods; or

· services that are closely related to registered goods,

not manufactured or provided by or under the authority of the Applicant constitutes an infringement of the Nokia trade marks;

(d) delivery up on oath to the Applicant or its duly authorised agents for destruction under supervision of all goods in the possession, power, custody or control of the Respondent, his employees or agents or otherwise, to which any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the Applicant;

(e) delivery up on oath to the Applicant or its duly authorised agent for destruction under supervision of all catalogues, price lists, brochures and other documents and materials in the possession, power, custody, or control of the Respondent, his employees or agents or otherwise, bearing any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical or deceptively similar thereto which has been applied without the licence or authority of the Applicant;

(f) costs.

With the exception of costs, Mr Mai gave his consent to orders in these terms.

40 By its motion, Nokia also sought orders that:

The Respondent pay the Applicant damages for infringement of the Nokia Trade Marks, to be assessed with interest thereon, or, at the option of the Applicant on a date to be fixed, the Respondent account for the profits made by him by the said infringements and pay the Applicant the amount found to be due on the taking of such account, together with interest thereon.

The Respondent provide discovery verified by affidavit to the Applicant within twenty-eight (28) days of the making of these orders in respect of all sales by him of items bearing the Nokia Trade Mark or any of them.

Mr Mai gave his consent to orders for discovery, but he opposed any order for damages to be assessed or for an account of profits to be made, in respect of any infringement by him of the Nokia trade marks. Counsel for Mr Mai stated that, whilst Mr Mai consented to the injunctive and declaratory relief sought by Nokia, he did not consent to an order for damages because:

even though the respondent has agreed to in effect stop selling these products, it is still submitted that it has not infringed in a manner that would give rise to damages.