FEDERAL COURT OF AUSTRALIA South Australian Brewing Company Pty Ltd v Saturno's Admin Pty Ltd [2001] FCA 431 Trade Practices Act 1974 (Cth) s 52 and s 53 THE SOUTH AUSTRALIAN BREWING COMPANY PTY LTD (ACN 007 065 267) v SATURNO'S ADMIN PTY LTD trading as BOOZE BROTHERS (ACN 008 218 460) and CARLTON & UNITED BREWERIES LIMITED (ACN 004 056 106) S 41 of 2001 MANSFIELD J 11 APRIL 2001 ADELAIDE IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY S 41 OF 2001 BETWEEN: THE SOUTH AUSTRALIAN BREWING COMPANY PTY LTD (ACN 007 065 267) APPLICANT AND: SATURNO'S ADMIN PTY LTD trading as BOOZE BROTHERS (ACN 008 218 460) FIRST RESPONDENT CARLTON & UNITED BREWERIES LIMITED (ACN 004 056 106) SECOND RESPONDENT JUDGE: MANSFIELD J DATE: 11 APRIL 2001 PLACE: ADELAIDE REASONS FOR DECISION 1 There is before the Court an application by the applicant for injunctive and other relief relating to the conduct by the first and second respondents in conjunction with a competition which, for the sake of convenience, I will call the Experience Showdown IX competition. The applicant claims that that conduct and other conduct, to which reference is made in the affidavits of Mr Warland, infringes two trademarks of which it is the owner, and also involves conduct which is in breach of ss 52 and 53 of the Trade Practices Act 1974 (Cth) and also involves conduct which passes off the applicant's business as the business of the second respondent and possibly of the first respondent. 2 The proceeding was instituted only on 4 April 2001. It included an application for interlocutory relief in quite detailed and extensive terms. As a result of the affidavits which have been filed, it appears that most of the claimed offending conduct has now, at least in the short term, taken place. There remains one document which the respondents propose to continue to make available to the public until 18 April 2001, which is the document referred to in par 21 of Mr Warland's affidavit of 4 April 2001. It is annexure F to that affidavit. 3 It is a promotional advertisement referring to the Experience Showdown IX competition. I will not, for the purposes of today, record in detail the terms of that document. The competition itself closed on 8 April 2001, and was to be drawn yesterday. The winner is to be announced in the media tomorrow. That remaining document refers nevertheless to the competition, together with some other advertising material. It includes two logos of the Adelaide Crows and Port Power Football Clubs. It refers to the date of the football game. It also contains a Victoria Bitter logo. There are other features of the document to which my attention was drawn. 4 In practical terms the issue now before the Court, in the light of the conduct which has taken place to date, is simply whether the Court should grant an interlocutory injunction restraining the respondents from continuing to exhibit that form of advertisement until 18 April 2001. That is the order which is sought as par 1(c) of the claim for interlocutory relief in the application - that is, to injunct the respondents from distributing that advertisement or brochure whether in store, by mail-out or otherwise until further order. In addition, the competition having been completed, the applicant also seeks to injunct the respondents in connection with any publication or communication of the results of the Experience Showdown IX competition from using the word "Showdown" or from representing that the second respondent is a sponsor of the Adelaide Football Club and/or the Port Adelaide Football Club. 5 The word "Showdown", as Mr Warland's affidavit discloses by annexure B, is a registered mark of the applicant in respect of the goods and/or service of sports events, live entertainment services, being entertainment services provided in conjunction with sporting events, and being services in class 41. 6 I do not need to address in any detail the question of whether the applicant has demonstrated a serious question to be tried that they have a cause of action on any of the three grounds upon which I have heard contentions. I am prepared to assume in favour of the applicant that such a serious question has been made out. 7 In my view, however, the application for interlocutory injunction should be refused on the balance of convenience. The relevant test has been variously expressed, but in practical terms in my view, it is simply a question of whether in the particular circumstances the most just course is to restrain the respondents from the conduct which is sought to be injuncted until the trial of the issues between the parties, or whether it is to allow the conduct to be carried out until that trial. In practical terms, as I have noted, the conduct in question will cease within a period of seven days from today in any event. And also, in practical terms, most of the conduct of which the applicant substantially complains has already - at least in the short term - taken place. 8 The Court is in a position to offer to the parties an early trial of this action on the merits, so that before the next occasion on which similar conduct might be engaged in by the respondents by a further similar promotion in relation to the next football competition between the Adelaide Football Club and the Port Adelaide Football Club (which I am told is in early August 2001) the question of whether the respondents are entitled, notwithstanding the registered marks of the applicant, to engage in similar conduct will be able to be determined. 9 In reaching the view that an interlocutory injunction is inappropriate, I have had regard in particular to the question of whether damages are an adequate remedy. The information on that topic is relatively scant. That is not said by way of any criticism. There is as a matter of fact simply an assertion on the part of Mr Warland that the two weeks leading up to the present football match on 15 April 2001 is the most valuable period of the applicant's sponsorship of the "Showdown IX" match between the Adelaide Crows and Port Power. He says that engaging in the conduct complained of - that is, in conducting the Experience Showdown IX competition, and promoting it in the ways in which his affidavit identifies and other evidence identifies - the respondents have caused immediate and irreparable damage to the applicant. He claims that unless the respondents are immediately restrained, their conduct will continue to cause irreparable damage to the applicant. 10 It must first be noted that the damage to the applicant is damage which is capable of being measured by a court. On the applicant's claim, the measure of damages will be imprecise. As counsel for the applicant contended, there is a risk in those circumstances that the damages, if they are to be awarded, will not represent an adequate compensation for the loss suffered by the wrongful use of the mark, or by the conduct in breach of ss 52 and 53, or which amounts to passing off. 11 I agree that it will be a difficult task to assess the measure of damages. However, it is not an impossible task and ultimately, in my view, damages will be able to be awarded which will represent an adequate remedy for the sort of conduct of which the applicant presently complains. I also bear in mind that the sort of conduct of which the applicant presently complains was conduct which, in a general sense at least, the respondents also engaged in at about the same time in 2000. That conduct came to the attention of the applicant at that time. Although there was some consideration within the applicant as to whether to take some action with respect to it at the time, no forceful action was then taken. The matter was allowed to rest. 12 The final orders which are sought at a trial of this action will not simply be confined to the damage suffered by the applicants by the recent conduct of the Experience Showdown IX competition to which I have referred. If the applicant succeeds in its claim, the relief which it will be entitled to and which it seeks, will include injunctive relief in respect of future similar conduct in relation to future matches which the parties called "Showdown" or "Showdowns" between the two football clubs, and which word is the subject of one of the applicant's marks. The trial will therefore not simply be a matter of assessing damages for the short-term disadvantage suffered by the applicant by the wrongful use of its mark and the other wrongful conduct (assuming the claim or claims succeed), but the applicant will also have the benefit of the longer-term injunctive orders which it seeks. 13 I have also borne in mind that the applicant, having been aware of a similar competition having been conducted by the respondents at about this time last year, did not take any proceedings to bring its concerns to a head at that time either formally, by communication with either of the respondents (except perhaps a desultory conversation which is denied by Mr Saturno) or by bringing proceedings. Had the applicant chosen to bring proceedings at that time, it would - if its claims are correct - have been entitled to an injunction which would have prevented the present claimed loss being suffered at all, because the Court would have been able to have heard and determined that claim before the present Showdown game was about to take place. That is not to suggest that there is any laches element operating adversely to the applicant in my decision. It is simply to note that the applicant had the opportunity to avoid the loss, which it now claims to be suffering by reason of the conduct of the respondents, by having taken proceedings at that time. 14 I have also borne in mind that, in any event, it will be necessary, if the applicant succeeds in its claims at trial, to assess the loss which the applicant claims to have suffered by reason of the conduct which has been engaged in by the respondents over the last few weeks. The injunction which is sought is at the tail end of that course of conduct, after the Experience Showdown IX competition has closed and, in a practical sense, is only sought in respect of one of the many documents which were published by the respondents to promote the competition and in respect of the formal closure of the competition, by announcing the winners. Consequently the applicant will, in any event, be confronted with the difficulty of proving its damage by the conduct complained of. The consequence of the injunction being granted would simply be to limit that claimed damage to a small degree, both in time and extent. 15 I have also had regard to the fact that the respondents would have similar difficulties in assessing their damages on any undertaking as to damages which was given by the applicant, if the injunction were to be granted and ultimately be found not to be justified. I do not accept the submission that it is simply a matter of the respondents substituting a fresh advertisement. The respondents obviously see commercial advantage in promoting the Experience Showdown IX competition, and publicising that competition in the way in which they have done so. That, again, is not to say that the damages which would be recoverable upon any undertaking would not be able to be assessed, but it, too, would be a difficult task and I think, to some degree, would attract the same risk of under-compensation to which counsel for the applicant referred. 16 I need to refer to two further submissions from counsel for the respondents that, on the balance of convenience, there were other reasons why the injunction should not run. Firstly, it was put that there had been delay on the part of the applicant in bringing this proceeding. In respect of the recent conduct - that is, the conduct relating to the current competition - there has been no delay and counsel for the respondents did not contend that there had been a delay. In respect of the claimed delay by not pursuing a claim such as the present, either formally (that is, formally company to company) or through proceedings, I do not think that that delay of itself is a reason which should go in the scales against the grant of an injunction. As I have said, there is no element of laches which has prejudiced the respondents. I do not use that delay, except in the way in which I have already explained. 17 Secondly, it was put to me that the applicant's claim should be refused because of a lack of clean hands on its part. I am not prepared at the interlocutory stage to make any finding to that effect. I have not had regard to that consideration at all in the balancing exercise which has led to my view that, for reasons of justice in the particular circumstances of the case, the interlocutory relief should be refused. 18 I accordingly refuse the interlocutory relief which is sought. I will hear the parties as to the terms upon which they wish me to make directions so that the matter can proceed to hearing as soon as possible. I will reserve the question of costs of the application for interlocutory relief. I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Decision herein of the Honourable Justice Mansfield. Associate: Dated: 19 April 2001 Counsel for the Applicant: Mr R J Whitington QC with him Dr R J Baxter Solicitors for the Applicant: Johnson Winter & Slattery As agents for: Mallesons Stephen Jaques Counsel for the First and Second Respondents: Mr J Wells QC with him Mr I C Robertson Solicitors for the First Respondent: Clelands Solicitors for the Second Respondent: Thomson Playford As agents for: Corrs Chambers Westgarth Date of Hearing: 10 & 11 April 2001 Date of Decision: 11 April 2001