_—— JUDGMENT No. AWN IN THE FEDERAL COURT NOT INTENDED FOR GENERAL DISTRIBUTION OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION No. WAG 79 of 1987 BETWEEN: TREVOR ALAN LEWIS and SHARYN PATRICIA LEWIS Applicant and W.D. & V.Jd. HANBLEY PTY LTD First Respondent MAL JONES & CO. PTY LTD Second Respondent WARREN DUDLEY HAMBLEY Third Respondent CORAM: FRENCH J. 30 JULY 1987 EX_TEMPORE REASONS FOR JUDGMENT This is a claim for urgent interlocutory relief in an application in which the applicants seek permanent injunctions under the provisions of the Designs Act 1906 and the Trade Practices Act 1974 in relation to the sale, marketing and promotion by the respondents of a device known as the Warrie Crutching Frame. FEDERAL COURT OF ? 5 AUSTRALIA A HOWAL om GEGISTAS 'A s \ A qe ee 2. That device is said by the applicants to fall within the scope of the monopoly conferred upon them in relation to a like device, the subject of Australian Design registration number 96858. The causes of action relied upon are:- (1) infringement of the registered design; (ii) somewhat obliquely, contravention, associated with that infringement, of s.52 of the Trade Practices Act. No statement of claim has been filed but there does arise from the affidavits put before the court by the applicants, an allegation that by selling the products said to infringe their registered design, the respondents impliedly represent that they are entitled to sell the products contrary to the monopoly, which representation is misleading and deceptive. Certain promotional material put out by the first respondent in relation to the Warrie Crutching Frame conveys the impression that there 1s already in existence a registered design in relation to that article. The truth is that an application for a registered design has been made in respect of the respondents' product but not yet determined. Other promotional material put out by the first respondent discloses that design registration is pending. A rene nee Ve ao eee Deel 3. I think, having regard to the nature of the relief that 1S sought, that issue rather falls into the background, for the relief sought seeks to restrain the respondents from:- (1) selling or offering or keeping for sale or hiring or offering or keeping for hire the Warrie Crutching Frame; (ii) applying the design of the apparatus to any back support to be worn by shearers or; (i11)displaying, demonstrating, presenting or promoting the Warrie Crutching Frame by way of advertisement, any printed material, brochure, public or private, talk or otherwise, including but not limited to, display or demonstration at the Hamilton Field Days i1n Victoria on 3 and 4 August 1987. So the relief sought prima facie goes considerably wider than the contravention of s.52 or the Designs Act that might be raised on the basis of the statement contained un the promotional Material put out by the first respondent. I approach the question of the grant of interlocutory relief therefore, on the basis that the case for the applicants rests, in relation to this relief, on the allegation of the design infringement and the contravention of s.52 associated with the very conduct that constitutes that infringement. Mr Owen-Conway for the respondents, has raised at the threshold a jurisdictional question as to whether or not the s.52 { claim is raised bona fide on the materials put to the court so far, or whether it 1s, as 1t were, merely tacked on to the designs ~ ae en ne en eee ae o 4. infringement claim as a way of attracting the jurisdiction of this court. I would not at this stage dispose of the motion on the basis of a finding that there was no jurisdiction to entertain the s.52 claim and the associated designs claim. I am not satisfied that the s.52 claim as I have identified it, is not raised bona fide and that it does not constitute a substantial, in the sense of non-trivial, element of the applicants' claim. So I deal with this motion = for interlocutory relief on the basis that the court does have jurisdiction. I emphasise in saying that, as 1S so often the case in applications for urgent interlocutory relief, my determination in that respect is provisional and certainly does not foreclose argument on the issue of jurisdiction at some later time. The question then, is whether or not the interlocutory relief sought ought to be granted. It is conceded by the respondents that there is a serious question whether the product Known as the Warrie Crutching Frame falls within the scope of the applicants' monopoly. If that be so, then one can say that there may well be at least an arguable question as to whether associated with that conduct, there 1S a contravention of s.52. To say that a serious question is made out does not allow the court simply to turn to the balance of convenience to see where it lies. vr. —w . Rm pee ee . 1 at By —- eee re ae 5. As the Full Court said in Bullock and Others v The Federated Furnishing Trades Society of Australasia and Others (NO. 1) (1985) 5 FCR 464 at 472:- "...an apparently strong claim may lead a court more readily to grant an injunction when the balance of convenience us fairly even. A more doubtful claim (which nevertheless raises "a serious question to be tried") may still attract interlocutory relief 1f there 18 a marked balance of convenience in favour of it." So the two questions - that is, whether there is a serious question to be tried and where the balance of convenience lies - are not independent. In looking at the balance of convenience one has to give consideration to the strength of the question that is raised by way of the assertion of the applicant's cause of action. There is another element and that is the question of the adequacy of damages as a remedy if interlocutory relief be refused. As counsel for the respondents rightly put it, that cuts two ways. Firstly, one has to consider the adequacy of damages to compensate the applicants in the event that the conduct is allowed to occur and they later prove to be successful in their substantive application. Secondly, there is the question of their ability to compensate the respondents for any loss incurred by reason of the imposition of interlocutory relief in the event that they are ultimately unsuccessful in the application. Sm re ee ae aT? Served \ ve 6. In this case, although they have given an undertaking as to damages, nothing is known of their financial substance or their ability to meet any loss that might be incurred by the respondent. Having looked at their registered design, or the representations which form part of their design registration, and having loooked also at the form of the respondents' product, the Warrie Crutching Frame, said to infringe that design, it is apparent that there are similarities and differences. It would, no doubt, be a question to be litigated in due course, whether the differences are merely colourable, whether or not the respondents' design is a fraudulent imitation of the applicants'. At this stage I say no more than that the existence of points of difference points to an argument available to the respondents as to whether their product infringes at all the design registration secured by the applicants. The s.52 question that I have identified as being associated with the design infringement claim is not an easy one. As I think Mr Pullin indicated, there is no reported case dealing with the proposition that by infringing a statutory intellectual property monopoly by selling products which are said to infringe that monopoly, one conveys an implied representation of an entitlement to sell them, carrying with it the possibility of a ne Dateemalig 3 vo. rere er ee en se eee > re 7. contravention of s.52. That 1s a serious question, but it is not free from doubt. I think 1t desirable, therefore, at this stage to say no more than that, having regard to the nature of the arguments which it will be necessary for the applicants to mount in order to succeed, the possibilities of argument on the other side, the absence of any evidence of their ability to meet their undertaking and the arrangements that have already been made by the first respondent in relation to participation at the Hamilton Field Days in Victoria, and taking all those factors together, it would be inappropriate at this stage to grant the interlocutory relief that is sought, That 1s not to say that a further application may not be made at some later time. But on the materials presently before me and having regard to the submissions that have been made, I will dismiss the claim. I certify that this and the preceding six (6) pages are a true and correct copy of the Reasons for Judgment herein of his Honour Mr Justice French. Associate: Devercrt- UWjQa he pate: SO WL \A37 DT penne 6 a ees ea Ge ee eee ere ee .t ng nae 8. Counsel for the Applicants: Mr C.J.L. Pullin Solicitors for the Applicants: Jackson McDonald Counsel for the Respondents: Mr S. Owen-Conway with McCormack Solicitors for the Respondents: Messrs. Corser & Corser Date of Hearing: 30 July 1987 Date of Judgment: 30 July 1987 Mr R. poe ee eer ne me eee " pee nen n pe e e e e e aeAanenl to the provisions of Rule 38, (tv) CONCLUSION 5 In the result, the Claimant has failed to make good any part of his case. It is, therefore, unnecessary for us to deal with the submission made, on behalf of the respondents, that, even if the Claimant had succeeded in making good his allegations of invalidity and irregularity, he was not as a matter of law entitled to any relief or the submission that, even if the Claimant would otherwise have been entitled to relief, the Court should, as a matter of discretion, refuse it. It is also unnecessary to examine whether, if any invalidity had been established, it could or should have been rectified pursuant to the provisions of s.171C. , The Rule to Show Cause must be discharged. I certify that this and the 23 preceding pages are a true copy of the Reasons for Judgment of the Court. Associate Dated: 24, — 7 apo an AS ae oe ere.