Clipfit Glazing Systems Pty Ltd v Sky Roof (Aust) Pty Ltd [2000] FCA 1941

FEDERAL COURT OF AUSTRALIA

Clipfit Glazing Systems Pty Ltd v Sky Roof (Aust) Pty Ltd [2000] FCA 1941

CLIPFIT GLAZING SYSTEMS PTY LTD v SKY ROOF (AUST) PTY LTD and ERIC HOLMES and IAN HOWE NO 947 OF 2000 HEEREY J 13 DECEMBER 2000 MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY 947 OF 2000

BETWEEN: CLIPFIT GLAZING SYSTEMS PTY LTD (ACN 067 901 571)

APPLICANT

AND: SKY ROOF (AUST) PTY LTD (ACN 006 931 773) ERIC HOLMES and IAN HOWE

RESPONDENTS

JUDGE: HEEREY J

DATE OF ORDER: 13 DECEMBER 2000

WHERE MADE: MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY 947 OF 2000

BETWEEN: CLIPFIT GLAZING SYSTEMS PTY LTD (ACN 067 901 571)

APPLICANT

AND: SKY ROOF (AUST) PTY LTD (ACN 006 931 773) ERIC HOLMES and IAN HOWE

RESPONDENT

JUDGE: HEEREY J

DATE: 13 DECEMBER 2000

PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 This is an application for an injunction pending a trial. Counsel for the respondents told the court that his clients has been served only yesterday with the papers. He contended that if contrary to his submissions I should grant any relief, that relief should only be for a short time to enable the respondent to file affidavits. I do not agree that that is the appropriate course. The respondents, however short the service, were on notice that what was sought was an injunction pending trial. No application was made for an adjournment of this application and the respondent sought to advance various reasons why the claim for an interlocutory injunction should fail on the merits. 2 Therefore if, as is the case, I have decided it is appropriate that that injunction be granted, it will be on the usual basis; that is, until trial. But of course, being an interlocutory order it is always open to the respondents to seek to have the order discharged or varied. 3 I should say first that I am satisfied on the material subject to the points raised by the respondent, to which I will refer in a moment, that the applicant has made out a serious issue to be tried and has produced evidence to support a case that quite apart from the assignment of the respondent's patent, the applicant, over a number of years, has earned a reputation in the name Clipfit, which applies both to itself, to its business and to products, and not limited to those subject of the respondents' patent. Also there is evidence to show already significant confusion amongst customers as to whether it is the applicant's or the respondents' business that the name Clipfit refers. There is also evidence to show that quite apart from the risk of loss of custom, which would be difficult to prove in terms of damages, there is also the element of damage to the applicant's reputation. 4 Against the grant of an injunction, counsel for the respondent argued that there was no evidence of the assignment to the present applicant of the original licence. I think the short answer to that is that the original licence was not a licence for the use of the name Clipfit. On its face it was a licence to manufacture and market the panel mounting system described in a patent application and certain registered design applications. 5 The evidence discloses how the name Clipfit originated. On the evidence of Mr Loughnan it emerged informally in the course of early negotiations or discussions between himself and his partner on one hand and Mr Holmes on the other. The veracity of this evidence is not challenged and at least for the present purposes, the conclusion to be drawn is that the name just developed without any one individual being identifiable as the inventor or originator of the name. What is more important is that, having emerged in the course of these discussions, the name on the evidence was used to identify the applicant's business in the way I have mentioned. 6 Then there is the deed of termination of the licence agreement, dated 20 July 2000. This is a matter of construction and I am satisfied that there is, at the very least, a triable issue that the expression "all right to the Clipfit products, dyes and materials" refers to the particular products that are subject to the patent and not to the use of the name as such. That being so I do not think it is any objection to the grand of the relief sought that the correspondence which was, by consent, handed up, which occurred between the parties between 30 June 2000 and 24 October 2000, should have been tendered by the applicant and that the failure to tender it should result in the court refusing relief. This has not been an ex parte application so it is not a case of a failure to meet the undoubted obligation of a party to put before a court all possibly relevant material, especially including material that might be adverse to its claim. On the contrary, not only was the correspondence as I can see not relevant to the way in which the applicant puts its case, nor productive of a ground of defence to the respondent, it was material of which the respondent was fully aware, being correspondence passing between the parties. So there is no question of any misleading or non-disclosure to the court. 7 Finally the counsel for the respondent urged that the applicant was not in a position to be able to satisfy the undertaking as to damages. It is not the usual practice for an applicant to have to prove such capacity, in any event - certainly so in the absence of any contrary evidence advanced by the respondent. The material does show that the applicant has paid out capital of $100 and has granted a fixed and floating charge to the Westpac Banking Corporation. 8 The evidence shows that it has a substantial turnover and most recently some $7 million per annum. So I am unable to infer from that that the applicant is unlikely to be able to meet any order that it pay, that it meet its undertaking as to damages. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.