ee ere ee rere tem re erate nT OOS SEMANAS nd A, a) at ~— uo! ' 7N é (FOR LIMITED DISTRIBUTION) i / JuDemens Mo.610 ./KG- IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VG No. 348 of 1986 GENERAL DIVISTON Vee eee vw EX TEMPORE JUDGMENT Between: HARRY THE HIRER PTY. LTD. and RODERICK ROBERT JAMEISON (Applicants) And: MAC 11 ENTERPRISES Pry. LTD. and MELVILLE DOUGLAS McLENNAN (Respondents) Judge Making Order: Ryan Jd. Date of Order: 22 December 1986 Where Made: Melbourne MINUTE OF ORDER UPON the applicants by their counsel giving the usual undertaking as to damages and upon the respondent by its counsel undertaking, without prejudicie to its right to contend that the applicants have no grounds for making any of the allegations relied on by them or to contend further that it should not in any way be seen to be making any concessions to the applicants that it will not by itself, its-servants or fo erate ois agents: fae We, " oN mypromy OXON - LOE al { ' \ a, | / ZEaNEIST OF. Z\ FEDERAL GULILT OF \ AUSTRALIA AN PRISIAL . vs REGISTRY 1 \ * 'N Noe a ' (a) (b) (c) (d) IT Is 1. display or use the words "Astrodome" or "Astrodomes" on any advertising material, brochures, documents, records, invoices, clothing, buildings or otherwise; engage in any conduct whereby it holds itself out or represents that the geodetic marquees supplied or hired by it are the property of the applicants, it has the sponsorship of or an association or affiliation with the business of the first-named applicant or its business is connected with the businesses of the applicants; displaying or using the words "Astrodome" or "Astrodomes" on the connecting nodes utilized in the erection of its geodetic marquees; displaying or using the logo in the form of the copy reproduced in the schedule to this order or any device deceptively similar thereto; ORDERED AND DIRECTED as follows: UPON the completion of the use by the respondent of its connecting nodes in the five dome marquees presently erected at the site of the Australian Grand Prix motor racing event in Adelaide and which are to remain erected until 27 October 1986 and the one dome marquee erected for the Swan Premium Sun Tour cycling event which is to remain erected until 26 October 1986, the respondent be restrained until the hearing and determination of this application or until further order, by itself, its servants or agents from further "using any of its connecting nodes presently used or able to be used in the construction of geodetic Marquees or any other such nodes substantially similar in design to Exhibits MFI 1 and MFI 2 tendered herein on 20 October 1986. 2 2. THAT the respondent keep a separate account of the proceeds received by it from the use of its said six domes at the James Hardie 100 Motor Race held at Bathurst in 1986, and at the Australian Grand Prix motor race and the Swan Premium Sun Tour cycling event as aforesaid. 3. Liberty to apply. 4, THAT the costs of and incidental to this application for interlocutory relief including the costs of the hearing before Woodward J. on 8 October 1986 be costs in the cause. 5. DIRECT that: (a) (b) (c) (d) {e) the applicants file and deliver a statement of claim within 7 days; that any defence and any counter claim be filed and delivered within 14 days; that any reply and any defence to any counter claim be filed and delivered within 14 days thereafter; that there be mutual discovery of documents within 21 days after the close of pleadings; that the giving of any further directions herein be adjourned until 9.45 a.m. on 11 December 1986. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VG No. 348 of 1986 GENERAL DIVISION EX TEMPORE JUDGMENT Between: HARRY THE HIRER PTY. LTD. and RODERICK ROBERT JAMETSON (Applicants) And: MAC 11 ENTERPRISES PTY. LTD. and MELVILLE DOUGLAS McLENNAN (Respondents) Coram: Ryan J. Date: 22 December 1986 EX TEMPORE REASONS FOR JUDGMENT RYAN J.: This is the adjourned hearing of an application for interlocutory relief by the applicants. By their application dated 3 October 1986 the applicants have claimed by way of final relief certain declarations, injunctions, damages, accounts and enquiries and the delivery up of certain allegedly infringing material arising out of the manufacture and use by the respondents of certain connecting nodes forming part of the framework supporting geodetic marquees and out of the use by the respondents in connection with their marquees of a stylized representation of one of them by way of what is called a logo and the name "Astrodomes". It is contended that the respondents have infringed designs numbered 91088 and 91089 of which the second named . applicant is registered as the proprietor under the Designs Act 1906 ("the Act"). It is further alleged that the respondents have been guilty of passing off their business as and for that of the applicants and have contravened ss.52 and 53 of the Trade Practices Act 1974. I accept that the approach to be taken by the court on an interlocutory application of this kind is to enquire first whether the applicants have established that there is a serious question to be tried and if satisfied as to the existence of such an issue to consider whether the balance of convenience favours the grant of some interlocutory injunction; see The Australian Coarse Grains Pool Pty. Limited v. The Barley Marketing Board of Queensland 57 ALJR 425 which was followed in Tableland Peanuts Pty. Limited v. The Peanut Marketing Board 58 ALJR 283. I consider that I am bound by the judgment of a Full Court of this court in Epitoma Pty. Limited v. Australasian Meat Industry Employees' Union (1984) 54 ALR 730 at 734 to follow that line of authority unless there is some. special — te. feature of the present case which makes some other approach the correct one. Mr. Gillard, for the respondents, referred to the observation of Gibbs C.J. in The Australian Coarse Grains Pool Pty. Limited v. The Barley Marketing Board of Queensland to which I have just referred where his Honour observed of Beecham Group Limited v. Bristol Laboratories Pty. Limited 118 CLR 618: "The latter case was one in which a_ substantial issue arose as to the validity of a patent and the remarks in the judgment may be restricted to such cases." It was suggested in the context of that reference that since this was acase for the protection of a right which could be characterized as intellectual property it was analogous to an action for infringement of a patent. The argument then ran that the test enunciated by the Full High Court in Beecham Group Limited v. Bristol Laboratories Pty. Limited should be preferred. I am not persuaded that the analogy between the present case and one raising the validity of a patent can be pursued that far. However, even if the Beecham test is the appropriate one to be applied in the present circumstances, I consider, for reasons I shall indicate, that the applicants have satisfied that test on the evidence as it stands at the moment. Mr. Gillard mounted a wide ranging attack on that part of the applicants' claim which was based on an alleged infringement of designs registered under the Act. He referred to s.39(1) of that Act which provides that: "Subject to this Act, a prescribed court, on the application of any person aggrieved, may order the rectification of the register by - (a) the making of an entry wrongly omitted to be made in the register; or (b) the expunging or amendment of any entry wrongly made in or remaining on the register; or (ec) the correcting of any error or defect in the register." Mr. Gillard urged that the designs of which the applicants have procured registration really embody no more than a principle or mode of construction or manufacture and are not sufficiently individual in shape, configuration or ornamentation as it appears to the eye to warrant the grant of a monopoly in those designs as provided for by s.25 of the Act. It was also contended on behalf of the respondents that the applicant's design was not different enough from examples of prior art deposed to by Mr. Collins, a patent attorney practising in Victoria, to be sufficiently novel or original to sustain a valid registration. A somewhat related contention was that whatever distinctive or original features the applicant's design possessed were dictated by the function which the nodes had to perform as connecting members of a geodetic structure; see British Leyland Motor Corporation Limited v. Armstrong — Patents Company (1986) 2 WLR 400 at 422. I was invited by Mr. Gillard to find on a_ visual comparison that the allegedly infringing nodes produced by the respondents varied so much more than slightly from the applicant's design, every feature of which he contended must be regarded as significant, that any question of an infringement is not a serious one to be tried. An alternative argument to that based on lack of novelty was then erected on the authority of Mangraviti v. Vardi (1976) 12 ALR 355 where Wootten J. observed at 361: "This is an illustration of the point that if only small differences separate the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement (Russel Clark on Copyright in Industrial Design 5th ed, Simmons v. Mathieson & Co. Ltd. (1911) 28 RPC 486, and Re Placketts Design (1892) 9 RPC at 436)." Likewise here it was argued that the applicant's design differed only so slightly from the prior art disclosed by Mr. Collins' affidavits that even if the differences between them and the respondents' nodes were only small they were sufficient to negative infringement. Then it was urged that there was evidence from which the court could infer that nodes to the applicant's designs had been in use since early 1983 and that such use amounted to prior publication which precluded them from being new or original. I am however far from satisfied on the evidence so far before the court that to permit to members of the public a degree of visual observation of parts of the nodes as they formed the erected structure of a marquee from time to time, for up to six months, amounted to publication of the designs of those nodes. Another ground on which the respondents attacked the applicant's registered designs was that the drawings which embodied them were too uncertain and insufficiently detailed to point unequivocally to an article having a single shape or configuration. To substantiate that ground reliance was placed on extensive and detailed criticism in an affidavit of Mr. Collins sworn 14 October 1986. That criticism went to the drawings forming part of the applicant's certificate of registration. Some features of the applicant's designs such as their solidity were said by Mr. Gillard to be attributable to workshop practice and not to embellishment. Others were said to be dictated by the fact that the nodes were to be cast in aluminium rather than moulded or extruded. Those deponents who, by 1nference, supported the validity of the registration of the applicant's designs were criticised as falling into the error of allowing a particular method of construction of the nodes by casting to impart registrable novelty or distinctiveness to the designs for those nodes. Mr. Gillard also sought to reinforce Mr. Collins' criticisms of the designs by making a detailed physical comparison of nodes produced by the respondents with those manufactured by the applicants, presumably in conformity with the subject designs. He claimed that there were as many as nine differences revealed by a comparison of what has been called the "hub" of the respondents' node and the hub disclosed by the applicant's drawings, even without having regard to what have been called the "fingers" of the node. In my view, in order to resist the conclusion that there is a serious question to be tried of whether they have infringed the applicant's designs, the respondents have to persuade the court that it can conclude on the evidence as it stands one of two things and that with a high degree of a satisfaction. That onus can be discharged first by persuading the court that the registration of the applicant's designs is invalid and that there is no respectable argument for resisting a counterclaim for expungment under s.32 of the Act. In the second place, the respondents could, assuming the validity of registration of the applicant's designs, demonstrate that its nodes differed from those designs in such significant respects that it could not seriously be contended that there has been any infringement of the designs. On the evidence I am not satisfied that the respondent has not demonstrated un either of those ways that there is not a serious question to be tried. The principal obstacle to satisfaction on the first limb is the fact of registration and the effect of s.26(3) of the Act which provides that: "The certificate of registration shall be prima facie evidence of the facts stated therein and of the validity of the registration." In the second place, the registration of the applicant's designs was procured by Mr. Dyson a_ practising patent attorney who has deposed in paragraph 3 of his affidavit sworn 3 October 1986: "I was aware that the frame connecting members were to be used in the construction of a frame to enable the erection of a geodetic dome marquee. I was aware that Mr. Jameison wished to register the design so that he could gain exclusivity in respect of the domes which had been developed by him. Both designs were lodged for registration on 13th October, 1983 and were registered for one year commencing from 24 October 1985." Mr. Dyson has also answered attacks made by the respondents' patent attorney, Mr. Collins, on the sufficiency of the applicant's designs for purposes of registration. The resolution of the differences between the testimony of these two expert witnesses will depend at least partly on cross- examination at the trial of this application. Similar considerations apply to the second part of the onus which I consider has moved to the respondents; that is the onus of showing that it cannot seriously be maintained that the respondents have infringed the applicants' designs. Tt is undesirable for me to say more at this interlocutory stage than that there is evidence tending both ways. That conflict can only be resolved satisfactorily at the trial of the action by cross-examination of the relevant witnesses informed by discovery and further technical information about the options available to designers of connecting nodes for geodetic structures of this kind. I turn then to consider whether there are factors which militate against the exercise of my discretion to grant an interlocutory injunction. It was urged by Mr. Gillard that the applicants should be left -to their remedy in damages,-and-- he gave an undertaking on behalf of the respondents to keep LO. an account of profits made by it from the hire of marquees incorporating the subject nodes between now and the trial. However, Mr. Gillard did indicate that the measure of damages recoverable by the applicants would be such proportion of those profits as might be found to be attributable to use of the infringing nodes if they were found to infringe. The difficulty of quantifying those damages compared with the relative ease of measuring the damages which the applicants will have to pay if, pursuant to their undertaking to the court, they ultimately fail, leads me to conclude that this consideration does not militate against the grant of an interlocutory injunction. The respondents have manufactured six marquees using the allegedly infringing nodes. -Although it is common ground that the high season for letting marquees on hire is from September to March, there is no evidence that the respondents have any firm contracts for hirings other than for the South Australian Grand Prix and the Swan Premium cycling tour, with which the applicants say they do not seek to interfere. I am therefore not persuaded that undue hardship would be visited on the respondents if they were restrained from using-the allegedly infringing nodes until February 1987, which appears to be the earliest time at which the application can be fixed for trial. There is evidence, not ll. so far contradicted, that on 13 October 1986, one of the respondent's marquees provided for the Adelaide Grand Prix collapsed, either in the course of erection or shortly thereafter. The possibility of a recurrence of such an event, with consequential detrimental effects on the reputation which the applicants have in their marquees and the nodes in particular, is a matter which inclines me to afford them some protection against such a contingency by granting an interlocutory injunction. I have also taken into account the fact that the business of the respondents in the letting on hire of marquees of their own manufacture is a very new one. The corresponding business of the firstnamed applicant is of longer standing, having been carried on since early 1983; that business appears to consist substantially in the letting on hire of marquees, incorporating the subject nodes. The longer-standing substantive business of the respondents on the other hand, has been in the co-ordination of sporting functions and other promotions and that should not be affected by the grant of an interlocutory injunction until about February 1987. I have been assured by Mr. Davey, who appeared with Mr. Liddell Q.C., for the applicants, that the firstnamed applicant will, if requested in the meantime, let marquees on 12. hire at its usual commercial rates to clients of the respondents. Should that assurance not be implemented, application may be made for some variation or dissolution of the interlocutory injunction pursuant to the liberty to apply, which I propose to reserve. Iwas invited by Mr.Liddell to take account of the conduct of the respondents in allegedly failing fully to honour its undertaking given before Woodward J. on 8 October 1986. However, I am satisfied that reasonable attempts in the circumstances were made by the respondent to obliterate the word "Astrodomes" from its display and promotional material and from allegedly infringing nodes themselves. Accordingly, I have not been influenced by those allegations in deciding. to exercise my discretion in the way in which I propose. I have, however, taken into account the fact that doubt has been cast on the ability of the respondents to satisfy a substantial award of damages should one ultimately be made in favour of the applicants. No evidence has been adduced to dispel that doubt and no offer has been made of any means by which satisfaction of such an award of damages might be secured to the applicants. It is necessary to consider further the applicants' claim for interlocutory relief against alleged passing off, which is said to consist in the respondents' use in 13. connection with its marquees of the word "Astrodome" or "Astrodomes" and a stylized representation of a geodetic marquee by way of a logo as it has been called. Mr. Gillard, for the respondents, has offered, without prejudice to his clients' right to contend that all of the allegations against them are unfounded and on the understanding that his offer should in no way be seen as a concession or admission to the applicants to extend until the trial of the application, the undertaking given before Woodward J. on 8 October 1986. Mr. Gillard has also offered to expand that undertaking to preclude his client during the same period from displaying or using the so-called logo or any device deceptively similar thereto. Mr. Liddell also proposed that I should make a further order that the respondents keep a separate account of the proceeds received by them from the use of their said six domes at the James Hardie 1000 motor race held at Bathurst in 1986 and at the Australian Grand Prix and Swan Premium Sun Tour cycling race as aforesaid, and that such proceeds be held until the trial of this action or until further order. However, for the reasons advanced by Mr. Gillard when I asked him about the appropriate measure of damages in an action of this kind, I am not persuaded that the whole of the profits, far less the proceeds, derived from the use of the respondent's domes at the Adelaide Grand Prix and the Swan 14. Premium cycling tour would be recoverable by the applicants should they ultimately succeed. I am therefore not prepared to deprive the respondents of the use of those proceeds until the trial of the application or further order. I certify that this and the preceding thirteen (13) pages are a true copy of the Reasons for Judgment of the Honourable Mr. Justice Ryan. Dated: <2 Qe€cermser + 996 FO RP ee Associate