Alulite Pty Ltd v Harris Scarfe Ltd

[1984] FCA 248

I ---e FURTHER DISTRIBUTION UNNECESSARYJUDGMENT NO. ........ ........ .. 29-8 $9 ........ ....

I N THE FEDERAL COURT OF AUSTRALIA

1

SOUTH AUSTRALIA DISTRICT REGISTRY

)

GENERAL D I V I S I O N 1

S. A. No. G. 26

BETWEEN :

ALULITE PTY. LIXITED

A p p l l c a n t

- AND :

HARRIS SCARFS LIMITED,

HARRY'S HOME CENTRE

t r admg as HARRY 'S HARDWARE

2 AUGUST, 1984 KEELY J.

EX TEMPORE REASONS FOR JUDGMENT

1.

REVISED FROM TRANSCRIPT

IN THE FEDERAL COURT OF AUSTRALIA	)
)

SOUTH AUSTRALIA DISTRICT REGISTRY ) S.A. No. G. 26 of 1984

)

GENERAL DIVISION	)
BETNEEN :

ALULITE PTY. LIMITED

Applicant

AND

HARRIS SCARFE LIMITED, HARRY'S HOME CENTRE

tradinq HARRY'S as

HARDWARE

Respondents

2 AUGUST, 1984 KEELY J.

EX TEMPORE REASONS FOR JUDGMENT

The applicant yesterday sought leave to amend the

application by adding an addltional clalm for lnterlocutory

relief in the following terms :

"(c) An injunction pursuant to section 80 of the

Trade Practices Act, restraining the respondents,

whether by themselves, thelr servants or agents,

from engaglng in any conduct constituting a

contraventlon of sectlon 52 of that Act."

2 .

That application was opposed but I have decided that leave

should be granted to so amend the application, although the

form of the injunction would require consideratlon if the

Court decided that	an interlocutory injunction should be
granted.

It should perhaps be added that leave was granted

yesterday to the applicant by consent amend o the

appllcation by deleting the words "second respondent"

wherever occurring, and substituting the words "the

respondents". The appropriate amendments to the original

appllcatlon are to be made by the applicant's solicitors, and

leave is granted to the applicant to make consequential

amendments to the applicatlon by reason of the amendment (see

paragraph (c) in the form in which leave has just been

granted this morning and compare It	wlth paragraph 4 of the
original applicatlon).

I do not consider that any useful purpose would be

served by reserving my decision on the applicatlon for

Interlocutory injunctions. Having read all of the material

filed before the hearing commenced, and havlng heard

yesterday afternoon the respective cases for both the

applicant and the respondents, I reconsidered the whole

matter overnight, and of course I have heard Mr. Johnson's

reply this morning and raised certain matters wlth him.

The application f o r an interlocutory injunction

restraining the respondents from infringing the applicant's

3 .

alleged trade mark was not pursued In thls hearing. I have

reached the concluslon that the appllcation for interlocutory

in]unctions restraining the respondents from engaging in

conduct in contravention of section 52 of the Trade Practices

-	Act, and restrainmg the respondents from passing off thelr
busmess and goods and services must be dismlssed.

Some of the matters pointing to that conclusion

were put to the appllcant yesterday. It is not necessary to

give elaborate reasons. There was no dlspute between the

partles as to the relevant princlples which are set out by

Mr. Justice Fisher in Cue Desiqns	Pty. Llmited v Playboy
Enterprises Ptv. Limited and others	(1982) 45 ALR 535, and

the cases thee cited by hls Honour at 536 and 537.

It is not necessary to refer to all of the

criticlsms made by the respondents' counsel as to the

inadequacy of the evidentlary materlal upon which the

appllcation is based, including the paucity of the material as to the applicant's "substantial reputation and uoodwill",

a matter to which Mr. Johnson has just referred thls mornlnq.

The applicant's affldavits include reference to

events in December 1983 and Aprll 1984 and to "a display at

the Expo in May" of 1984. However, the respondent's material

revealed that its solicitors by letter dated 12 June, 1984,

written without prejudice response in earlier to

correspondence from the applicant, agreed to a request by the

applicant "to cease using the word 'Alutile' in connection

4 .

wlth the sale, supply and installation	of alumlnlum doors and
windows.

The applicant has contended that the respondents

have not adhered to the intention expressed in the

solicltor's letter of 12 June, 1984. That contentlon leads

to a consideration of paragraph 10 of the affidavit of Mr. La

Vlncente, sworn	30	July, 1984, which	was In the followlng
terms :

"10. As recently as Friday, 27th day of July 1984,

I visited the premises referred to in paragraph 9

hereln (ie the respondents' premises). In what

appears to be a small display area to the rlght of

the door of the said office complex, there is a

display of alumlnlum wlndows. There are also

photographs of some homes, whlch photographs appear

to be emphasizlng the roofs of those homes. There

was also a slgn on the floor with the word

'Alutile' appearing on It."

It will be noted that there are four separate statements in

that paragraph, and that there 1 s nothing sald expressly as

to where the "slqn on the floor with the word 'Alutile'

appearing on it" was	in relation to the display	of alumlnlum
windows.

5 .

Mr. Johnson on behalf of the applicant has urged

the Court to read an lmpllcatlon Into paragraph 10 to the effect that the sign was closely associated with the

alumlnlum windows on display, but I am not prepared to do so .

In so deciding I have had regard to the facts that

: (1) an answerlng affidavlt by Mr. Holllngsworth, sworn and

filed by the respondents on 31 July, 1984, referred

speciflcally to paragraph 10 of Mr. La Vlncente's affldavlt,

and ( 2 ) a further affidavlt was sworn and filed on behalf of

the applicant yesterday, 1 August, 1984, which referred to

some matters dealt	wlth In Mr. Hollingsworth's affldavit
sworn 31 July, 1984.

However, the applicant did not file any affidavit

elaboratlng upon the statements In paragraph 10 of Mr. La

Vincente's affldavlt of 30 July as to "a slgn on the floor

wlth the word 'Alutile' appearing on it". That omission must

be considered in the light of the general tenor of the

statement in Mr. Holllngsworth's affidavlt, namely that the

sign appeared in a context of rooflng tiles. Mr.

Hollingsworth's affldvit also stated expressly that the word

"Alutile" in the sign was followed by the words "number 1 in

S.A. The Great Australian Roof".

6 .

Having considered all of the evldence, the

appllcant has falled to satlsfy me that, if the evldence

remains in the present state, the applicant has "a falr

chance of success'' at the trial, that is success in obtalnlng

an injunction either restralnlng conduct by the respondents

in contravention of section 52 of the Trade Practices Act, or

restraining them from passing off their business or goods or

servlces of the applicant, or in one of the other ways set

out in paragraph 5 of the application.

The appllcant's materlal also falls to satlsfy me

that the lnconvenlence or in-~ury which the applicant would be

likely to suffer, if an injunction were refused, outwelqhs

the injury or inconvenlence which the respondents would

suffer if an lnjunctlon were granted.

Accordlngly, the appllcatlon for interlocutory

injunctions must be refused. That refusal 1 s of course based

upon the present evidence: the evidence at the trial may well

be quite dlfferent.

Mr. Gray yesterday asked for costs. I have decided

to reserve the question of costs on the application for

interlocutory injunctlons for conslderation by the trlal

judge in due course when the whole picture will presumably be

before him.

The formal orders of the Court are :

7 .

1. application The interlocutory for

~n]unctions 1 s dismissed.

2. The costs of the application are

reserved.