Talarico, A. v Arthur, J.H. [1995] FCA 464

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VG No 518 of 1995 BETWEEN: ANDREW TALARICO Applicant -and- JAMES HENRY ARTHUR Respondent

Coram: Olney J Place: Melbourne Date: 7 June 1995

MINUTE OF ORDERS THE COURT ORDERS THAT: 1. The applicant's application for interlocutory injunctive relief be dismissed. 2. The respondent file and serve a defence on or before 21 June 1995. 3. The respondent file and serve a request for further and better particulars of the statement of claim on or before 21 June 1995. 4. The applicant file and serve any reply on or before 5 July 1995. 5. The applicant file and serve his response to any request for further and better particulars of the statement of claim on or before 5 July 1995. 6. The applicant file and serve any request for further and better particulars of the defence on or before 19 July 1995. 7. The respondent file and serve his response to any request for further and better particulars of the defence on or before 19 July 1995. 8. The directions hearing be adjourned to 14 August 1995 (intellectual property list). 9. Each parties costs of this day and of the application be reserved.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VG No 518 of 1995 BETWEEN: ANDREW TALARICO Applicant -and- JAMES HENRY ARTHUR Respondent

Coram: Olney J Place: Melbourne Date: 7 June 1995 REASONS FOR JUDGMENT The applicant seeks an injunction to restrain the respondent, pending the hearing and determination of this proceeding, from manufacturing and selling a product known as a hayfeeder which the respondent manufactures and sells under the name of "Affordable Hay Feeder" and to restrain him from manufacturing and selling upright posts of a particular design which form part of such hayfeeders. The applicant claims that by manufacturing and selling the "Affordable Hay Feeder" and the upright posts, the respondent has infringed the applicant's rights under Australian Registered Designs Nos 114675 and 114765. The application for Australian Registered Design No 114675 was lodged on 4 October 1991 and the design was registered on 28 July 1992. The certificate of registration describes the article in respect of which the design is registered as an animal feeder and monopoly is claimed in the shape and/or configuration of an animal feeder as illustrated in representations which accompany the certificate of registration. The application for Australian Registered Design No 114765 was lodged on 4 October 1991 and the design was registered on 5 August 1992. The certificate of registration describes the article in respect of which the design is registered as an upright post for an animal feeder and monopoly is claimed in the shape and configuration of an out-turned inverted-U post for use in an animal feeder as shown in representations which accompany the certificate of registration. Since about 1991 the applicant has manufactured and sold animal feeders made in accordance with registered designs Nos 114675 and 114765 under the name of "The Ultimate Animal Feeder". A hayfeeder is a device for containing the area in which dry feed for stock is placed. Its purpose is to minimise hay loss due to wind or cattle trampling. "The Ultimate Hay Feeder" has an octagonal base with enclosed raised sides for containing feed placed within the base. The height of the base is such that cattle, standing outside the base, can eat the feed placed within the base. Two inverted-U shaped upright posts are attached to each of the eight side panels of the base. They are spaced so as to permit feeding stock to have access to the feed placed within the confines of the base and to define the number of cattle which can feed at any one time. The upright posts used in "The Ultimate Hay Feeder" are bent outwards, a design which is said by the applicant to suit the feeding motion of cattle so that when leaving the feeder they can step back and lift their heads with ease in one smooth motion. The applicant's patent attorney has described the shape of the upright posts as having an "elegant outward curvature", which he says is "the essential feature of the applicant's design registration". In about May 1993 the applicant saw in an advertisement in "The Shepparton News" a photograph of a product which seemed to closely resemble his registered designs. His enquiries revealed that the advertised product had been manufactured, and was being sold, by the respondent under the name of "Affordable Hay Feeders". The applicant threatened legal action and after some exchanges between the parties and their representatives the respondent wrote to the applicant by letter dated 19 July 1993 in the following terms: 19 July 1993 Mr Andrew Talarico Hooper Road TATURA VIC 3616 Dear Mr Talarico, Australian Design Registration Nos 114765 and 114675 in respect of "Upright Post for an Animal Feeder" and "An Animal Feeder" in the name of ANDREW TALARICO. I refer to correspondence and telephone calls with your patent attorneys, Phillips Ormonde and Fitzpatrick, and your solicitor, Mr DJ Calabro.