Trade Mark News & Information

Trademark Lawyers Australia – Federal Circuit Court – Dolby

Dolby Laboratories Licensing Corporation & Anor v Kamil [2013] FCCA 1326 (11 September 2013)

 Successful application for interlocutory orders by Dolby restraining the release of goods by the Australian Customs Service.

 Customs had previously seized, on 2 August 2013, some 6600 DVDs bearing trade marks similar to Dolby’s registered DOLBY, DOLBY DIGITAL and double –D logo marks. The designated owner of these DVDs was Wave Imports International which was a business registered by Kamil. Customs gave notice of the seizure to Kamil, but he did not consent to forfeiture of the seized DVDs and made a claim for release of these DVDs. Dolby issued a letter of demand on 22 August 2013 requested Kamil to consent to forfeiture and provide certain undertakings, but he refused, so Dolby commenced proceedings on 29 August 2013.

 The judge, Driver J, had no difficulty in finding that Dolby had made out a prima facie case and there was a serious question to be tried that Kamil has infringed the registered Dolby marks by importing the DVDs into Australia. He was not authorised to use the Dolby technology or the Dolby marks. Also, the words printed on the DVDs reflected a number of spelling, grammatical and formatting errors, rather than Dolby’s official wording which indicate the marks were applied to the DVDs without the licence or authority of Dolby. Also, the balance of convenience favoured the grant of interlocutory relief. The inconvenience or injury likely to be suffered by Dolby if an injunction was refused outweighed the injury likely to be suffered by Kamil if an injunction was granted. The size of the consignment indicated a deliberate and significant commercial transaction. Also, Kamil continued to pursue the release of the DVDs after notice of Dolby’s claims. He refused to consent to their forfeiture or offer any undertakings to refrain from such activities.

 Accordingly, interlocutory orders were made restraining Customs from releasing the DVDs, restraining Kamil from collecting the DVDs from Customs and dealing in goods bearing one or more of Dolby’s registered marks without the prior written consent of Dolby.