Vieright Pty Ltd v Myer Stores Ltd [1995] FCA 173

CATCHWORDS Passing off - ingredients - questions of fact - relevance of "fraud" in the form of an intention to misappropriate rival trader's reputation as evidence from which an intention to deceive others and the likelihood of that deception may be inferred - distinguished from "fraud" in a remedial context. Reckitt & Colman Products Ltd v Borden Inc (1990) 17 IPR 1 - cons. Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 - cons. Trade Practices - consumer protection - Trade Practices Act 1974 ss 52 and 53 - passing off context - likelihood of deception - questions of fact. Injunction quia timet injunction - persistence in assertion of the right to do a thing properly objected to as a ground for the grant of a quia timet injunction. Myers v Casey (1913) 17 CLR 90 - cons. VIERIGHT PTY LIMITED v MYER STORES LIMITED No G 961 of 1993 Beaumont, Branson and Lindgren JJ Sydney 31 March 1995

IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No G 961 of 1993 ) GENERAL DIVISION )

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: VIERIGHT PTY LIMITED Appellant AND: MYER STORES LIMITED Respondent CORAM: BEAUMONT, BRANSON AND LINDGREN JJ. PLACE: SYDNEY DATE: 31 MARCH 1995 MINUTE OF ORDERS THE COURT ORDERS THAT: 1. The appeal be allowed in part. 2. The order made at first instance dismissing the application be set aside in so far as that order refused the claim for a quia timet injunction in respect of the respondent's proposed use of the mark "FIRST" on women's wear; and in lieu thereof, such claim be remitted to a single Judge of the Court to make such order, including such order as to costs, on that claim in accordance with law and as the justice of the case may require. 3. The order for costs made at first instance be set aside, and in lieu thereof, there be no order for the costs at first instance. 4. Otherwise the appeal be dismissed. 5. There be no order for the costs of the appeal. NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court rules.