Marley New Zealand Limited v Icon Plastics Pty Ltd [2007] FCA 851

FEDERAL COURT OF AUSTRALIA

Marley New Zealand Limited v Icon Plastics Pty Ltd [2007] FCA 851 MARLEY NEW ZEALAND LIMITED, THE MARLEY COMPANY (NZ) LIMITED AND MARLEY TILE S.A. v ICON PLASTICS PTY LTD (ACN 071 392 366) VID 319 OF 2007

GORDON J

10 MAY 2007

MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 319 OF 2007

BETWEEN: MARLEY NEW ZEALAND LIMITED

First Applicant

THE MARLEY COMPANY (NZ) LIMITED

Second Applicant

MARLEY TILE S.A.

Third Applicant

AND: ICON PLASTICS PTY LTD (ACN 071 392 366)

Respondent

JUDGE: GORDON J DATE OF ORDER: 10 MAY 2007

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT: UPON the applicants, by their counsel, each UNDERTAKING to the Court to abide by any order the court may make as to damages in the event that the court should subsequently be of the opinion that the respondent sustained any damages by reason of the undertakings given by the respondent, which the applicants ought to pay, THE RESPONDENT, by its counsel, UNDERTAKES to the Court, without admission of liability, that it will not, until the trial of the action or further order: 1. Sell, offer for sale or supply any product supplied to it by the First Applicant (Marley New Zealand Limited) pursuant to the Marley Rainwater (Gutter, Gutter Fittings and Downpipe Fittings) Supply and Distribution Agreement made between it and Marley New Zealand Limited dated 30 June 2003. 2. Sell, offer for sale or supply any product manufactured by it pursuant to the Marley Surface Drainage Licence and Supply and Distribution Agreement made between it and Marley New Zealand Limited dated 30 June 2003. 3. Use Registered Trade Mark No. 316866 for the word STORMCLOUD, or any other deceptively similar trade mark (which "Cloudburst" is not) as a trade mark in relation to building products for rainwater systems including plastic gutters, gutter fittings or downpipes, or goods or services of the same description (the Rainwater Products). 4. Use Registered Trade Mark No. 285191 for the word MARLEY, or any other deceptively similar trade mark as a trade mark in relation to the Rainwater Products. 5. Use the name "Classic", or any other deceptively similar name, in relation to the Rainwater Products made from PVC. 6. Represent that it is entitled or permitted to: (a) supply or sell; (b) manufacture; (c) act as an authorised distributor for, any products by reference to the names Marley, Stormcloud or, in the case of Rainwater Products made from PVC, Classic. THE RESPONDENT, by its counsel, ALSO UNDERTAKES to the Court, without admission of liability, that it will: 1. On or before 15 May 2007, send a copy of a letter sent by registered mail or courier to every company, firm or person to which it has supplied product by reference to the Marley, Stormcloud or Classic names, care of the person or persons at the company or firm concerned with whom it has had dealings since 1 July 2006, addressed by title and/or name, such letter to be in the form set out in Schedule A to these undertakings and orders. 2. On and after the date of this order, keep records and provide those records to the Applicants and to the Court following a direction from the Court to do so, which records must comprise the following particulars of the Respondent's sale or supply of Rainwater Products in the course of the conduct of any business conducted, or to be conducted by the Respondent: (a) the name and contact details of each person to whom the Respondent sells or supplies any Rainwater Products; (b) a description of all Rainwater Products sold or supplied to each person referred to in paragraph (a) and the date(s) on which each of those products was sold or supplied; (c) all sums received by the Respondent for or in respect of the sale or supply of any of the products referred to in paragraph(a)and the date of receipt of each sum. 3. The Respondent provide to the solicitors for the Applicants a copy of any form of brochure, pamphlet or advertising which the Respondent proposes to provide to retailers in relation to the sale or supply of Rainwater Products sold or supplied by reference to the Cloudburst trade mark not less than three business days before the Respondent provides it to retailers. THE COURT ORDERS AS FOLLOWS: 1. By 4pm on 14 May 2007, the Applicants file and serve any amended application and any amended statement of claim. 2. By 4pm on 18 May 2007, the Respondent file and serve its defence and any cross claim. 3. By 4pm on 23 May 2007, the Applicants file and serve any Reply and Defence to Cross-Claim. 4. By 4pm on 25 May 2007, the parties exchange categories of discoverable documents. 5. By 4pm on 5 June 2007, the parties file and serve lists of documents and give inspection from 9am on 6 June 2007. 6. By 4pm on 8 June 2007, the Applicants file and serve any further affidavits upon which they intend to rely at trial and give notice to the Respondent as to which existing affidavits, or parts of affidavits, they intend to rely upon at trial. 7. By 4pm on 15 June 2007, the Respondent file and serve any further affidavits upon which it intends to rely at trial and give notice to the Applicants as to which parts of the affidavit of Mike Duskovic dated 3 May 2007 they intend to rely upon at trial. 8. By 4pm on 22 June 2007, the Applicants file and serve any affidavits in reply only to the affidavits referred to in paragraph 7 above. 9. The matter be referred to mediation pursuant to Order 72, such mediation to be conducted between 14 June 2007 and 29 June 2007. 10. By 4pm on 3 July 2007, the Applicants file and serve a paginated Court Book. 11. By 4pm on 6 July 2007, the parties file and serve any notices of objections to evidence. 12. By 4pm on 13 July 2007, the parties file and serve contentions of law and fact. 13. The matter be set down for trial to commence on 16 July 2007 at 9.30 am for a duration of not more than five days. 14. Liberty to apply on 48 hours written notice. 15. Costs be reserved. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.