Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44

High Court of Australia Gibbs C.J. Mason, Murphy, Aickin and Brennan JJ. Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44

Cur. adv. vult.

The following written judgments were delivered:—

1982, Aug. 11 Gibbs C.J.

This is an appeal from a judgment of the Full Court of the Federal Court of Australia, which, by a majority, reversed the decision given by the judge at first instance, and granted an injunction restraining the present appellant, Parkdale Custom Built Furniture Pty. Ltd. by itself, its servants and agents, from engaging in trade or commerce in conduct that is misleading or deceptive or that is likely to mislead or deceive by selling, offering for sale, dealing with, displaying or advertising any lounge suites, lounges or lounge chairs so as to mislead or deceive members of the public into believing that they are lounge suites, lounges or lounge chairs manufactured by Puxu Pty. Ltd., the present respondent. The case was referred back to a single judge of that court to hear and determine any question of damages. The respondent, which was the plaintiff in the action in the Federal Court, based its claim against the appellant on s. 52(1) of the Trade Practices Act 1974 Cth, as amended, ("the Act"), which provides as follows:

A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. By s. 80 of the Act, the Federal Court is empowered to grant an injunction restraining a person from engaging in conduct that constitutes or would constitute, inter alia, a contravention of s. 52, and by s. 82 a person who suffers loss or damage by conduct done in contravention of, inter alia, s. 52 may recover damages.

The respondent has since June 1978 manufactured and sold, under the name "Post and Rail", furniture which includes lounge suites, which consist of lounges and chairs of distinctive appearance and design known as the "Contour" range. These lounges and chairs had been designed by the respondent's predecessors in business and had been sold by them since some time late in 1976 or early in 1977. The lounge suites were the subject of fairly extensive advertising and had acquired an established reputation. The design of this furniture was not the subject of copyright under the Designs Act 1906 Cth, as amended. At some time after the "Post and Rail" "Contour" lounge suites were first sold and marketed, the appellant began to manufacture and sell, under the general names "Parkdale Custom Built Furniture" and "Custom Built Furniture", lounge suites known as the "Rawhide" range. It is convenient for present purposes henceforth to speak only of the chairs manufactured by both parties, although what is said with regard to them applies equally to the lounges. The chairs made by the appellant closely resemble those made by the respondent. However, there was sewn into the front of each of the appellant's chairs a label, in size about 6.35 centimetres (two and a half inches) square, which set out that the chair was "Parkdale Custom Built Furniture" of the "Rawhide" range. The label could be tucked under the upholstery of the chair and would not then be visible and it might easily enough be removed by cutting it off from the chair. Nevertheless it appears to have been the practice of manufacturers to identify chairs by labelling them in that way, and in fact the respondent's chairs bore labels of a similar kind, but somewhat smaller. Having regard to the fact that all chairs which left the appellant were delivered to retailers and were labelled so as to identify the appellant as the manufacturer, and having regard to evidence as to some differences between the chairs respectively manufactured by the parties, the learned primary judge refused to find that the appellant intended to mislead or deceive any potential purchaser into believing that the "Rawhide" chairs were "Contour" chairs. The Full Court did not make any finding to the contrary.