IN THE FEDERAL COURT OF AUSTRALIA NOT FOR GENERAL DISTRIBUTION NEW SOUTH WALES DISTRICT REGISTRY NSW G.91 of 1988 GENERAL DIVISION CORAM: PLACE: DATE: THE COURT NOTES THAT: ee eed BETWEEN: GOODMAN FIELDER INDUSTRIES LIMITED trading as MEADOW LEA FOODS Applicant AND: S A OLIVE OIL CO PTY LIMITED Respondent WILCOX J SYDNEY 27 JANUARY 1988 MINUTES OF ORDER Pending the further determination of this proceeding, the respondent, by its counsel, undertakes to the Court that it will keep full and accurate records of all sales made by it of the product known as "Olio", marketed in 750 millilitre cans, such records to include information as to all purchasers and the quantities purchased by them and the amounts paid by them. oe pa a +~ THE COURT ORDERS THAT: The matter proceed to final hearing on 23, 24 and 25 The hearing be upon the basis of affidavit evidence, subject to cross-examination as required. 9.30 a.m. on Wednesday 2 March 1988 be fixed for Liberty be granted to either party to apply on twenty-four (24) hours' notice. Costs of today be reserved. Any further affidavits to be relied upon by the applicant be filed and served by Friday 19 February 1988; any affidavits of the respondent be filed and served on or before Monday 7 March 1988; any affidavits in reply be filed and served on or before List of documents be filed and served on or before 12 1. March 1988. 2. 3. return of subpoenas. 4, 5. THE COURT DIRECTS THAT: (1) Monday 14 March 1988. (II) February 1988 and inspection take place on or before 19 February 1988. ne eee one et Be ee Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. Note NOT FOR GENERAL DISTRIBUTION IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) NSW G.91 of 1988 ) ) GENERAL DIVISION BETWEEN: GOODMAN FIELDER INDUSTRIES LIMITED trading as MEADOW LEA FOODS Applicant AND: S_ A OLIVE OIL CO PTY LIMITED Respondent CORAM: WILCOX J PLACE: SYDNEY DATE: 27 JANUARY 1988 EXTEMPORE REASONS FOR JUDGMENT The application which is made today in this case is for a grant of an interlocutory order to restrain the respondent from continuing to market a product which it puts out under the name of "Olio". It is said on behalf of the applicant that this conduct by the respondent infringes the applicant's trade mark, registered under the Trade Marks Act 1955, 1n the word "Olé", It is further said that the conduct of the respondent constitutes conduct in breach of s.52 of the Trade Practices Act 1974, There has been debate as to whether there is a serlous question to be tried on either or both of these matters. I am of the opinion that there is a serious question. I do not think that it is appropriate for me to discuss the nature of the evidence or to indicate any view as to the strength of the applicant's case on these matters. That is a matter best deferred until the final hearing. It may be that the applicant's stronger case arises under the Trade Marks Act rather than under the Trade Practices Act, but it is possible that the applicant has a case under both of these Acts or indeed under neither of them. I merely say that I think that there is a serious question as to whether there is conduct of the respondent giving rise to some rights in the applicant. To my mind the real question for determination 1s the appropriate course to be taken by the Court, having regard to the balance of convenience. The evidence indicates that the respondent devised its label over a period of some months in 1987. In October 1987 application was made by the respondent for registration of the word "Olio" as a trade mark. At that time the patent attorneys acting for the respondent indicated that there may be opposition because of the applicant's registered trade mark "916". However, there was no resolution of that question and the application for registration has yet to be determined. ot oe tee It further appears that, in early December 1987, it came to the attention of Mr M L Savige, the State Sales Manager of Eta Food Services, which is a division of the applicant company, that the respondent had produced a can in the form complained of. This occurred because Mr Savige was visiting Mr Rosetto, the Managing Director of the respondent, in connection with the supply by Eta of bulk liquid oil, this being the oil, as I understand the position, which was then to be marketed by the respondent in the subject cans under the name "Olio". Mr Savige observed to Mr Rosetto that the package looked very similar to that used for the applicant's packaged "918" oil. He says that Mr Rosetto made no comment. He subsequently mentioned this matter to Mr Stewart Vohmann, who is the Retail Sales Manager for the Meadow Lea division of the applicant -- Meadow Lea being the division directly concerned with the sale of "016" oil -- and, at Mr Vohmann's suggestion, Mr Savige obtained from Mr Rosetto one of the cans. The exact date when this was supplied does not appear, but it appears to have been either in early or mid December. Mr Savige sent the can on to Mr Riley at the head office of Eta Food Services in Sydney, who apparently received it on Christmas Eve. I ama little puzzled as to the apparent lapse of time in Mr Riley receiving the can but, in the event, no complaint was made until a letter was despatched on 14 January. This was received on the following day and, over the next week, correspondence was exchanged between the parties and, in the case of the applicant, its solicitors, leading to the filing of this Application on 22 January. The parties have agreed that the matter can be made ready for final hearing within a short time. I have indicated that it would be possible for the final hearing to take place on 23 to 25 March and I understand that this is suitable to the parties. The respondent states that it would be prepared to undertake to the Court to keep full records of all sales made pending the final hearing. As counsel for the applicant points out, such an undertaking does not necessarily, or perhaps even normally, cover the problem of an applicant who finds its trade affected by conduct of a respondent. Even though the respondent may not gain trade, damage can be done to the goodwill and reputation of an applicant. I accept this as a general proposition, but at the same time I have to bear in mind the position in which the respondent would be placed if an order were made. It is true, as counsel for the applicant says, that the order would not directly prevent the respondent marketing 011 in 750 millilitre containers but, in a practical sense, it would do so. It would take some time -- one would assume at least a few weeks -- for the respondent to design and have manufactured alternative packaging. There would necessarily be an hiatus in its selling campaign and the change in packaging, particularly if there was subsequently a change back as a result of success by the respondent at the final hearing, would be likely to cause confusion to customers and some damage to the respondent. a. wpe ee be cies eee ee I am, therefore, placed in the position in which any course which is taken might disadvantage the party against whom it is directed, particularly if that party is ultimately successful. I think, in the circumstances, that I ought not to make any interlocutory order restraining the respondent from trading, pending the final hearing. I do so because 1t seems to me that the consequences for the respondent of such an order are potentially quite drastic. It would be very difficult for the respondent to quantify and prove its damage if it were forced to discontinue a marketing campaign at this stage. I am very strongly influenced in taking that view by the delay which has occurred. It is unfortunate that the complaint took so long. I do not fully understand the reasons. It may be that no individual bears the blame for the delay and I have in mind, of course, that Christmas intervened. Notwithstanding those matters,. it seems to me that the applicant's officers could have moved much more quickly than they did. It seems that they knew the form of the can some time around the middle of December and, to my mind, it would have been appropriate for them to take some steps to resolve the matter, at least on an interim basis, before Christmas. As it happened, during the period of the delay, action was taken by the respondent's marketing consultants, Barina Marketing Services Pty Limited, in connection with the promotion of the respondent's product. How significant this is in terms of either effort or result does not appear, but it seems to me quite possible that the sa ie Ve , mete eS period was of some importance. Had the respondent had more time to deal with today's affidavit, I think that I would have demanded a higher degree of proof of the disadvantage, but I bear in mind that the Application was served only last Friday and that the two intervening week days have been public holidays in South Australia, where the respondent is located. I can only go on impression, and my impression is that the period of delay has been at a significant time from the respondent's point of view. Having regard to all of those matters, I think the appropriate course is for me to accept the undertaking to the Court which I will ask counsel to formulate and formally to give and, providing that that undertaking 1s given, to make no further order other than to fix a hearing date and to make the necessary directions. I will reserve liberty to the parties to apply in the case of some change in the situation in the meantime. I certify this and the five (5) preceding pages to be a true copy of the Reasons for Judgment of his Honour Justice Wilcox. Associate: ——mueoaa . Date: 3 February 1988 Counsel for the Applicant: Mr T F Bathurst QC with Mr G O L Reynolds Solicitors for the Applicant: Dawson Waldron Counsel for the Respondent: Mr C S Leahy Solicitors for the Respondent: Sly and Russell Date(s) of hearing: 27 January 1988 i hand Sale sasteaaiarstiiadaad