Betta Cones Co. Pty Ltd v Microbyte Investments Pty Ltd (Trading as Kouklis Cones)

[1988] FCA 822

JUDGMENT No .. 8ad.!k ...8,8,,

IN THE FEDERAL COURT OF AUSTRALIA	) )
VICTORIA DISTRICT REGISTRY	1 No VG 412 of 1988
)
GENERAL DIVISION	)

BETWEEN: BETTA CONES CO. PTY. LTD.

(First Applicant)

BETTA FOODS AUSTRALIA PTY.

- LTD.

(Second Applicant)

-	AND :	MICROBYTE INVESTMENTS PTY.
LTD. (Trading as Kouklis
Cones)

(First Respondent)

MILTON PAPADOPOULOS

(Second Respondent)

-	Coram: Ryan J
Date: 23 November 1988
-
Place:  Melbourne
-

EX TEMPORE REASONS FOR JUDGMENT

This is an application for lnterlocutory relief which,

They are registered design No. 98054, which was registe

as argued, has been limited to an injunction restraining the

respondents from infringing the applicants' two deslgns

registered under the Deslgns Act 1906.

The firstnamed applicant, Betta Cones Co. Pty. Ltd. is

the registered proprietor of the two designs in question -

-	- 2 -
P'

2 4 September 1987 in respect of an application lodged on 1%

December 1986 for a single ice cream cone, and registered design No. 57369, registered on 13 August 1987 in respect of an applicatlon lodged on 22 September 1986 for an ice cream

cone designed to hold two scoops of ice cream.

The evidence discloses that the secondnamed applicant has been in business for some years in a very substantial way in the manufacture and sale of ice cream cones, and has more recently manufactured and sold very large volumes of ice

cream cones made in accordance with the	two	registered
designs to which I have referred.

The complalnt is made that ice cream cones manufactured

by	the firstnamed respondent, Microbyte Investments Pty.
Ltd., trading as "Kouklis Cones", have infringed	the

registered designs and that the secondnamed respondent, Mr Papadopoulos, is a director of the firstnamed respondent and has been actively involved in those infringements.

Having regard to the interlocutory nature of this

application, it is undesirable that I express any concluded vlew as to whether the applicants can ultimately make out their allegations of infringement. The followlng observatlons reflect only the present state of the evidence, all of which has been adduced by the applicants.

It 1s clear from an ocular inspection of the allegedly
infringing cones, and a comparison of them with the

registered designs, that the allegedly infringing cones

reproduce all of the salient features of the registered

designs. The evidence further suggests that the reproduction came about because the flrstnamed respondent has procured from an Italian machinery manufacturer a machlne for the

manufacture of cones having moulds which incorporate the
registered designs, or incorporates in cones made with the

machine the registered designs at issue in this lltigation.

That result has been achieved because the same

manufacturer had allegedly been commissloned, as I gather it,
to supply a machine to the gpplicants for the purpose of
produclng cones in conformity with its registered design.

It is well established that, for the purposes of the present application, the Court should consider first whether, on the present state of the evidence, the applicants have demonstrated a serious question to be tried and, secondly, if they have, whether the balance of convenience favours the

grant of an interlocutory injunction.

It will be apparent from what I have already said that

I am satisfied that there is a serious question to be tried

as to whether the cones manufactured by the flrstnamed

respondent infringe the registered deslgns of the applicants.
MC Papadopoulos, the secondnamed respondent, who
appeared in person, has urged that if an injunction were
granted that would be the end of his business, but no

evidence has been adduced to support that contention. The
evidence which has so far been adduced on behalf of the
applicants rather suggests that the respondent has other
business ventures to whlch it could devote itself for the
period for which any interlocutory injunction would remain in
force and also suggests that the participation by the
respondents in the business of manufacturing and selling Ice
cream cones 1s of comparatively recent origln.

Although MC Papadopoulos appeared in person, thers is evidence that the respondents have had specialist legal advice available to them since before these proceedings were instituted, but have elected, for reasons which have not been explained, not to have those advisers procure representation in these proceedings.

MC Papadopoulos made an application for an adjournment of the present proceedings to enable the respondents to put

in affidavit evidence. However, in the absence of any explanation as to why the respondents did not avail themselves of that opportunity before this, and when they had the advantage of the speclalist legal advlce to which I have referred, that application was refused.

Having regard to the very extensive involvement of the

applicants in the manufacture and distrlbutlon of cones In conformity with their reglstered design and the time and money which the evidence discloses they have expended in the development of those designs, and in the related development of technology necessary to produce cones in conformity with the designs, I do not consider that damages would be an adequate remedy in this case. Nor, on the present state of lnformation before the Court, am I persuaded that there is any other consideration which should lead the Court to exercise its dlscretlon adversely to the applicants.

Accordingly, I propose to accede in part to the,.

application for interlocutory relief by ordering that the
respondents, and each of them, whether by themselves, their
servants or agents or howsoever otherwise be restrained untll
the hearing and determination of the proceedings herein or
further order from manufacturing, promoting, offering for
sale or selling ice cream cones the same as, or substantially

identical to, those cones exhlbited to the affidavit of

Patrick Salera, sworn herein on 14th day of November 1988 and

marked PS26 and PS21 respectively.

I am not disposed to add to that ~nlunction words to

the effect of the draft whlch has been submltted on behalf of
the applicants. I conslder that to use in an in~unction,
which may have to be obeyed by lay people, references to
fraudulent or obvious imitation or infringements of monopoly

is not helpful. I	also consider that adequate interlocutory
protection should be afforded by	an injunction in the form in
which I have just announced.

Mr Shavin of counsel for the applicants has proposed a

number of interlocutory directions designed to facilitate the final hearing of this matter and I shall hear MC Papadopoulos if he wishes on those matters.

I certify that this and the preceding five (5) pages are a true copy of the

Reasons for Judgment of his	Honour MC
Justice Ryan.

-

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Associate