Practice and procedure - Discovery and inspection - Trade practices - Misleading or deceptive conduct - Sale of garden hose - Similarity between hoses offered for sale by applicant and respondent Whether disclosure of identity of manufacturer of respondent's hose will be compelled - Whether disclosure of identity of distributor of respondent's hose will be compelled. Trade Practices Act 1974 - 3.5211) Parkdale Custom Burit Furniture Pty. Ltd. v. Puxu Pty. Leda. (1982) 149 C.L.R. 191 Norwicn Fharmacal Co. v. Justoms and Excise Commissioners £19743 A.C. 133 Yorke v. Lucas 11955) 651 A.L.R. 307 it NYLEX CSRFORATION LIMITED v. SABCO LIMITED No. VG 331 rf 1986 Jenkinson J. 22 October, 1386 Melbourne IN THE FEDERAL COURT OF AUSTRALIA ) VICTORIA DISTRICT REGISTRY » VG NO. 331 of 1986 GENERAL DIVISION } BETWEEN: NYLEX CORPORATION LIMITED Applicant AND: SABCO LIMITED Respondent CORAM: Jenkinson J. PLACE Melbourne DATE: 22 October, 1986 MINUTES OF ORDER THE COURT ORDERS THAT: 1. The motion of which notice was filed the 17th day of September 1986 be adjourned to a date to be fixed by either party on reasonable notice to the other party. 2. Each party's costs of the motion to and including this day be reserved. (Settlement and entry of orders is dealt with in 0.36 of the Rules of Court.) IN THE FEDERAL COURT OF AUSTRALIA ) VICTORIA DISTRICT REGISTRY ) VG NO. 331 of 13586 GENERAL DIVISION BETWEEN: NYLEX CORPORATION LIMITED Applicant AND: SABCO LIMITED Respondent CORAM: Jenkinson J. PLACE: Melbourne DATE: 22 October, 1986 REASONS FOR JUDGMENT Applicant's interlocutory motion in the proceeding for orders that the respondent discover and produce for the applicant's inspection documents which disclose the identities of persons concerned in the manufacturing or in the distribution to consumers of garden hose of a particular description. The evidence establishes, for the purposes of the motion, that both parties were at relevant times and still are trading corporations within the meaning of that expression in the Trade Practices Act 1974, that the applicant has for some years made and sold in this country a garden hose the exterior surface of which 15 distinctively coloured and patterned, and that recently the respondent has caused garden hose the exterior surface of which 1s of similar appearance to be prepared for sale ts by retail aun this country. The evidence suggests that each party's garden nose 15 for sale in packages marked with its name. Dr. Jessup of counsel for the respondent pressed the submission that the applicant's allegation of misleading conduct by the respondent in imitating the applicant's colouring and Marking of its hose must fail, because the case was indistinguishable from that which was considered by the High Court in Parkdale Custom Built Furniture Pty. Ltd. v. Puxu Pty. Ltd. (1982) 143 C.L.R. i131. But if the name, of respondent and of applicant respectively, be unconspicuous on the package and if the combination of colour and markings has been established in consumers minds as betokening a sSingie suppiier of garden hose, known not by name but by that combination, then the case may bea differant from that with which the High Court dealt. There as enough in the evidence to suggest that this case may be different, and that this motion should be determined on the footing that the cause of action will be held to lie, which is pleaded in the statement of claim in the proceeding and which is founded on the allegation that the respondent's placing before consumers of garden hose so similar in appearance to the applicant's hose constituted a contravention of s.52(1) of the Trade Practices Act 1974, The applicant having been refused information by the respondent as to the identity of the manufacturer of the hose, but having been anformed by the respondent 5s solicitors that the respondent was not the manufacturer, the Court 15 now moved ta compel disclosure by the respondent of the adentity of the manufacturer, so that the manufacturer may also be sued for contravention of 5.52(1). The sources of the Court's authority to compel that disclosure were said by Mr. Shand of counsel for fhe applicant to ose order 4 Rule 17 of this Court s Rules and the power formerly exercised by the Court of Chancery in accordance with principles which were elucidated by the House of Lords in Norwich Fharmacal Co. v. Customs and Excise Commissioners 1374] A.C. 135. Either source, 1t was submitted, would justify the ordér sought. One day before notice of the motion was filad, information was received by a representative of the applicant from a wholesaler of garden equipment that the hose to be offered for sale in packages marked with the respondent's name was manufactured by Dawn Plastics Pty. Ltd., a company well known as a Manufacturer of garden hose. The applicant very properly filed an affidavit narrating those circumstances, which its legal advisers had to consider after notice of the motion had been filed. Dr. Jessup based on the evidence in that affidavit the submission that the identity of the manufacturer had been ascertained by the applicant and that therefore no occasion for an order with respect to the manutacturer's identity existed. JI accept that submission. The respondent has at no time suggested that 1t 15 not concerned an the commercial exploitation of the hose on the packaging of which its name appears. There 15 no reason to doubt that the respondent knows the adentity of the manufacturer. It is inconceivable, as I think, that Dr. Jessup would have been able to make the submission he did 1f£ Dawn Plastics Pty. Ltd. were not the Manufacturer, But, lest I be mistaken, the motion may be adjourned sine die so far as ait concerns tne identity of the manuracturecr. Mr. Shand sought also orders which would disclose the adentity of each "distributor" of the respondent's garden hose. In a letter from the applicant s solicitors to the respondent's solicitors, received a few days after the originating application had been filed, there occurs this passage: "Our client naturally wishes to include in its Application each and every alleged infringement by any person of the rights of our client as a result of the manufacture, distribution, sale and offering for sale of the Sabco product. Our client wishes to join every person participating in the manufacture, distribution, sale and offering for sale of the Sabco product s0 that ali these matters may be disposed of in the one action," No claim for interlocutory injunctive relief is made in the originating application, nor nas the applicant moved the Court for such relief. There is no satisfactory avidence that any person other than the respondent and the manufacturer has engaged, as a party principal, ain a contravention of 5.52(1), mor any satisfactory evidence that any such a person had the knowledge without which he could not be "involved" or implicated ian a contravention by the respondent or by the manufacturer : see Yorke v. Lucas (1985) 61 A.L.R. 307. Further, even if the evidence were thought to show a case of contravention, or a case of involvement in another's contravention, of s.52(1) by a "distributor", the discretionary powers the exercise of which the applicant seeks to invoke are in my opinion available in order to prevent injustice 5. to a person which would be suffered 1f he were left in ignorance af the identity of one who has fallen under a legal liability to him, and not so that he may, 1f he choose, bring legal proceedings against every person who has fallen unaer such a liability. The evidence presently before me gives no ground to fear that the applicant will fail to obtain in a proceeding against the respondent and the manufacturer all the relief which justice requires that he should have. There 15 no reason, on the evidence before me, to fear that the applicant will not recover against those two a judgment for the whole of the damages sustained in consequence of all the contraventions, if contravention there has been, of 5.52(1), or that such a judgment would not be satisfied, or that anjunctive orders made against those two would not effectively stop all the contraventions which other persons who or which answer the description 'distributors" might have been committing, or might have been minded to commit. There 1s in my Gpinion good reason to have regard in the exercise of the powers invoked to considerations of policy. It 1s in my opinion not easy to see why in point of policy the powers should be exercised to facilitate the joinder, as respondents to a proceeding instituted under Part VI of the Trade Practices Act 1974 1n respect of misleading conduct, of every person or of many of the persons, who by reason of involvement in trade in a commodity may have engaged in that conduct or may have become involved in a contravention of s.52(1) constituted by a corporation s engaging in that conduct, if it appears likely that the proceeding as presently constituted as to parties will result in substantial justice to the applicant. On the evidence before me that does appear likely. I decline to Make any order on the motion at present. I will adjourn the motion to a date to be fixed by either party on reasonable notice to the other party. Each party's costs of the motion to and including this day will be reserved. ' ke lieth. Det 0L OMA 1996 ' Wee he SEIS BL ee See A NYLEX CORPORATION LIMITED v. SABCO LIMITED Date of Hearing: 23 September, 1986 Counsel for Applicant: Mr. M.W. Shand Solicitors for Applicant: Clayton Utz Counsel for Respondent: Dr. C.N. Jessup Solicitors for Respondent: Mallesons