The Pokemon Company International, Inc v Pokemon Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 21 December 2022
• Neutral Citation: [2022] FCA 1561
• Date: 21 December 2022
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

The Pokémon Company International, Inc v Pokemon Pty Ltd [2022] FCA 1561

File number:	NSD 1125 of 2022
Judgment of:	COLLIER J
Date of judgment:	21 December 2022
Catchwords:	PRACTICE AND PROCEDURE – claimed contraventions of Australian Consumer Law – application for interlocutory injunction and discovery orders – s 232 Australian Consumer Law – where applicant seeks to restrain respondents and related entities from representing licence to develop Pokémon Games or affiliation with Pokémon Company International, Inc and/or the Pokémon brand –where applicant seeks to restrain the respondent from using any name or word which is misleading or deceptively and/or confusingly similar – where applicant seeks to restrain the respondent from launching or allowing access to a game purported to be licensed by the applicant and selling or otherwise making available Pokémon non-fungible tokens – where attempted service of process on the respondents – where no appearance by the respondents at the hearing – standard of evidence acceptable at interlocutory level – where applicant seeks order for discovery in aid of the administration of justice – interlocutory relief granted
Legislation:	Competition and Consumer Act 2010 (Cth) Sch 2 (Australian Consumer Law) Federal Court of Australia Act 1976 (Cth) Federal Court Rules 2011 (Cth)
Cases cited:	Bettles as trustee of the bankrupt estate of Bruce v Bruce [2021] FCA 1248 Computershare Ltd v Perpetual Registrars Ltd (2000) 1 VR 626 Director, Fair Work Building Industry Inspectorate v Construction, Forestry, Mining and Energy Union [2016] FCA 1225 Norwich Pharmacal Co & Ors v Commissioner of Customs and Excise [1973] 2 All ER 943 Reckitt Benckiser (Australia) Pty Limited v Procter & Gamble Australia Pty Limited [2015] FCA 753 Xiamen Huadian Switchgear Co Ltd v Powins Pty Ltd (No 2) [2022] FCA 1458 Victorian Egg Marketing Board v Parkwood Eggs Pty Ltd (1978) 33 FLR 294; [1978] FCA 27
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Copyright and Industrial Designs
Number of paragraphs:	68
Date of hearing:	21 December 2022
Counsel for the Applicant:	Mr B Caine KC with Ms C Cunliffe
Solicitor for the Applicant:	Corrs Chambers Westgarth
Solicitor for the Respondents:	No appearance

ORDERS

		NSD 1125 of 2022
BETWEEN:	THE POKÉMON COMPANY INTERNATIONAL, INC. Applicant
AND:	POKEMON PTY LTD First Respondent ; XIAOYAN LIU Second Respondent

order made by:	COLLIER J
DATE OF ORDER:	21 DECEMBER 2022

UPON THE APPLICANT, BY THE APPLICANT’S COUNSEL, UNDERTAKING TO SUBMIT TO SUCH ORDER (IF ANY) AS THE COURT MAY CONSIDER TO BE JUST FOR THE PAYMENT OF COMPENSATION, TO BE ASSESSED BY THE COURT AS IT MAY DIRECT, TO ANY PERSON, WHETHER OR NOT A PARTY, ADVERSELY AFFECTED BY THE GRANT OF INTERLOCUTORY RELIEF

THE COURT ORDERS THAT:

1. The First Respondent (PPL), whether by itself, its employees, agents, or officers or howsoever, be restrained, until further order, from:

a. representing (in any manner whatsoever) that:

i. PPL is:

1. licensed to develop Pokémon Games by or on behalf of the Applicant (TPCI) or The Pokémon Company or Nintendo Co., Ltd or to authorise others to do so;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo;

(PPL Representations)

ii. Kotiota Studio is:

1. licensed to develop Pokémon Games by or on behalf of TPCI or The Pokémon Company or Nintendo or to authorise others to do so;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo

(Kotiota Representations)

iii. that any Pokémon NFTs to be issued or offered by it are:

1. licensed by TPCI or The Pokémon Company or Nintendo;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo

(NFT Representations)

iv. PokeWorld is:

1. licensed by TPCI or The Pokémon Company or Nintendo;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo

(PokeWorld Representations);

b. using:

i. the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in the course of trade.

ii. the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in PPL’s name and/or in the domain name of any website and/or in the name of any Twitter account and/or any other online profile or social media account;

iii. the words “Pokemon” and/or “Pokémon” and/or ‘PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar and/or the images of Pokémon characters and/or the names of Pokémon characters to promote products and/or services of PPL and/or any other company or business associated with Liu (whether on the website located at the domain name kotiota.com.au (Kotiota Website) or the website located at the domain name pokeworld.game (PokeWorld Website) or on Twitter or on any other website or howsoever);

iv. the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, images of Pokémon characters and/or the names of Pokémon characters on the Kotiota Website or the PokeWorld Website or on Twitter or on any other website;

c. operating the PokeWorld Website;

d. launching or allowing access to the PokeWorld game; and

e. selling or otherwise making available Pokémon NFTs.

2. The Second Respondent (Liu), whether personally or by his or her employees, agents, or officers or howsoever, be restrained, until further order, from:

a. representing (in any manner whatsoever) that:

i. PPL is:

1. licensed to develop Pokémon Games by or on behalf of TPCI or The Pokémon Company or Nintendo or to authorise others to do so;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo;

ii. Kotiota Studios is:

1. licensed to develop Pokémon Games by or on behalf of TPCI or The Pokémon Company or Nintendo or to authorise others to do so;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, or authorised by TPCI or The Pokémon Company or Nintendo

iii. that any Pokémon NFTs to be issued or offered by Liu are:

1. licensed by TPCI or The Pokémon Company or Nintendo;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo

iv. PokeWorld is:

1. licensed by TPCI or The Pokémon Company or Nintendo;

2. affiliated with, associated with or otherwise connected in the course of trade with, approved by, authorised by or connected with TPCI or The Pokémon Company or Nintendo;

b. using:

i. the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in the course of trade.

ii. the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” and/or any name or word which is misleadingly, deceptively and/or confusingly similar, in PPL’s name and/or in the domain name of any website and/or in the name of any Twitter account and/or any other online profile or...