Seekers Nominees Pty Ltd & Anor v Target Australia Pty Ltd & Anor [1995] FCA 504

CATCHWORDS EQUITABLE REMEDIES - injunctions - interlocutory - interim - whether serious issues - whether irreparable damage in absence of interim order - balance of convenience SEEKERS NOMINEES PTY LIMITED AND SEEKERS AUSTRALIA LIMITED v TARGET AUSTRALIA PTY LIMITED and TRACKERJACK PTY LIMITED NO WG 78 OF 1995 R D NICHOLSON J PERTH 13 July 1995

IN THE FEDERAL COURT OF AUSTRALIA ) LIMITED DISTRIBUTION WESTERN AUSTRALIA DISTRICT REGISTRY) GENERAL DIVISION ) NO WG 78 OF 1995 B E T W E E N: SEEKERS NOMINEES PTY LIMITED (ACN 008 769 060) First Applicant and SEEKERS AUSTRALIA LIMITED (ACN 009 159 531) Second Applicant and TARGET AUSTRALIA PTY LIMITED (ACN 004 250 944) First Respondent and TRACKERJACK PTY LTD (ACN 005 488 095) Second Respondent MINUTE OF ORDER JUDGE MAKING ORDER: R D NICHOLSON J DATE OF ORDER: 13 JULY 1995 WHERE MADE: PERTH THE COURT ORDERS THAT: 1. The applicants' motion for an interim injunction be refused. 2. The hearing of the application for an interlocutory injunction be adjourned to Friday 21 July 1995 at 10.15 am. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA ) LIMITED DISTRIBUTION WESTERN AUSTRALIA DISTRICT REGISTRY) GENERAL DIVISION ) NO WAG 78 OF 1995 B E T W E E N: SEEKERS NOMINEES PTY LIMITED (ACN 008 769 060) First Applicant and SEEKERS AUSTRALIA LIMITED (ACN 009 159 531) Second Applicant and TARGET AUSTRALIA PTY LIMITED (ACN 004 250 944) First Respondent and TRACKERJACK PTY LTD (ACN 005 488 095) Second Respondent CORAM: R D NICHOLSON J DATE: 13 JULY 1995 PLACE: PERTH REASONS FOR JUDGMENT R D NICHOLSON J: The applicants move the court for an injunction of an interim nature to restrain the first respondent and the second respondent from various activities including manufacturing, distributing, offering for sale, supplying, selling or causing any of those things to occur in Australia a swimsuit which is said on the applicants' case to be substantially identical, or deceptively similar to the second applicant's swimsuit 92103 and/or banded swimsuits or any of them. The relations between the applicants and the respondents has a prior history in which at this stage it is not appropriate to go. It is reflected in a course of correspondence before me culminating in an agreement which had the effect of requiring the respondents and their related and/or associated companies and their directors, servants, agents or otherwise from ceasing and desisting from manufacturing, offering for sale, selling and advertising for sale any garment which was an obvious or fraudulent imitation of certain design registrations relevantly including the design registration with a number referable to the number 92103. In consideration of such a covenant it was, on the face of it, agreed on behalf of the applicants they would unconditionally and irrevocably release and forever discharge the respondents from all actions, suits, causes of actions, claims, demands, proceedings, costs and expenses arising from the matters in issue between the parties relating to the marketing of swimsuits. On the face of it the actions presently complained of by the applicants have occurred in breach of that settlement agreement. Certainly that is arguably the case. There is an issue which arises from the terms of the settlement agreement as to whether the respondents confined themselves to desisting from the acts referred to so far as those acts were protected by a design registration but that issue need not for the present receive any further attention because clearly for the applicants' case it is arguable that the agreement has a wider durability. The applicants also rely on causes of action, being causes of action which the settlement agreement forever released and discharged the respondents from, namely actions under the Trade Practices Act, in particular from misleading and deceptive conduct, under s53 and in relation to passing off. For an interim injunction to be granted as is stated in the submissions of the applicants I must firstly be satisfied that there is a serious question to be tried or that the plaintiff has made a prima facie case in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief. In relation to the settlement agreement it seems to me there is arguably, as I have said, a serious question to be tried. In relation to the applicability of the other causes of action there are arguments which arise and to which I have been taken which make it less certain but nevertheless arguable that those causes of action may pertain in favour of the applicants. I do not consider I need to go beyond that at this point in relation to the questions of what are the serious issues. I must then be satisfied that the applicants will suffer irreparable injury for which damages will not be an adequate compensation unless the interim injunction is granted. The case for the applicants in this respect has been comprehensively set out in affidavit material before me. In particular the irreparable damage is said to arise from the impact on the goodwill which the applicants have in their product and from the damage to their undertaking to the businesses with which they presently deal. It is apparent that the applicants deal with high quality department stores marketing a quality product. On the other hand the product of the respondents is marketed in an entirely different type of store at a price almost 50 per cent less and arguably of substantially lesser quality. Whether in fact the apprehended injuries to the applicants' market will eventuate is not something to which the affidavit of the applicants can at this stage extend, and I am entirely sensitive to the fact that damage to goodwill cannot necessarily be well measured either now or at any future time. Nevertheless, I am not satisfied that the applicants will suffer irreparable injury if an interim injunction is not granted before Friday of next week at which time the matter can be more fully heard. There are also factors pertaining to the balance of convenience that weigh in favour of that course. The respondents received the papers late last evening with the consequence that there is no evidence for the respondents before me, although counsel for them has been instructed to state that evidence will be produced of manufacture of such swimsuits by others. Clearly the sensitive commercial matters involved in the context of the agreement, and arguments about it, should be properly resolved on proper evidence and in that respect be satisfied that no irreparable injury will be incurred between now and Friday week. I consider that the proper course is to refuse an application for an interim injunction but to adjourn the application for hearing at that early date. In the event of any difficulty being experienced in obtaining a listing in that time frame, which as my reasons have made apparent are fundamental to my present thinking, I would make myself available at such time as was unlisted to me to ensure that the matter was not allowed to go longer than that particular time. On that occasion of course it would be anticipated that the evidence for the respondents would be before the court and would have been served and considered in due time by the applicants. For those reasons I would decline to make any interim injunction now and I will order that the matter be adjourned to a time to be fixed on Friday week. I think for the Friday hearing to be meaningful the affidavits should be filed and served by close of business Wednesday. In fact that should be that affidavits, be they further affidavits of the applicants or of the respondents should be filed and served by close of business Wednesday. I certify that this and the preceding 4 pages are a true copy of the Reasons for Judgment of his Honour Justice R D Nicholson. Associate: Date: