Buzacott and Company Limited v Cyclone Pty Ltd

27 CLR 286

BUZACOTT &COMPANY LIMITED

CYCLONE PROPRIETARY LIMITED

ON APPEAL FROM A JUSTICE OF THE HIGH COURT. Practice-High Court-Appeal from Justice of High Court-Admission of further

evidence-New trial-Terms-Rules of the High Court 1911, Part II., Sec. I., MELBOURNE,

On an appeal to the Full Court of the High Court from the judgment of a Justice of that Court the appellant applied for leave to call further evidence. The Court, being of opinion that further evidence should be taken, set aside the judgment and ordered a new trial on the terms that the appellant should pay the costs of the first trial and of the appeal.

27 CLR 287

APPEAL from Isaacs J.

The Cyclone Proprietary Ltd., which was the owner of two designs registered under the Designs Act 1906, viz., No. 1053 regis- tered in respect of gates, &., for a period of five years from 30th August 1912, which period was subsequently extended for a further five years, and No. 2697 registered in respect of gates for a period of five years from 13th June 1918, brought an action in the High Court against Buzacott &Co. Ltd. wherein the plaintiff alleged that the defendant without the licence or authority of the plaintiff had sold and offered and kept for sale gates to which the plaintiff's registered designs or fraudulent or obvious imitations thereof had been applied in infringement of the plaintiff's copyright in such designs. The plaintiff claimed an injunction, damages or an account of profits, and delivery up of infringing articles. One of the defences taken was that neither of the registered designs was new or original, but that each of them had been published and in use in connection with (inter alia) gates which were sold to the general public.

The action was heard by Isaacs J., who gave judgment for the plaintiff for an injunction, having found that there had been infringe- ment of both of the registered designs and that the defendant had not proved prior publication of either of those designs.

From that decision the defendant appealed to the Full Court, and, on the appeal coming on for hearing, the appellant applied for leave to call further evidence as to prior publication.

Latham, for the appellant. The Court has jurisdiction under rule 10 of Sec. I. of Part II. of the High Court Rules to admit further evidence on an appeal. This is a proper case for admitting further evidence (In re Neath Harbour Smelting and Rolling Works (1) ).

[RICH J. referred to Nash v. Rochford Rural Council (2) ).] Weigall K.C. (with him Owen Dixon), for the respondent. The judgment of the Court, which was delivered by KNOX C.J., was as follows :-We wish to make it clear that we do not deal in any

(2) (1917) 1 K.B., 384.

27 CLR 288

way with any ruling given by our brother Isaacs at the trial, nor do

we in any way, except formally, depart from any decision of his.

I say "formally," because it is necessary to vacate his judgment in order that there may be a new trial. In this case we think it is eminently desirable that the new trial should take place before our brother Isaacs, the real object of the new trial being that he may inform his mind by fresh evidence on a point raised before him at the first trial and which he then had to decide on less evidence than will be available on the new trial. We express no opinion whatever as to the effect of the new evidence; that is entirely a matter for the trial Judge.

Judgment set aside. New trial granted. Order

by consent that the evidence on the former trial be used at the new trial. Defendant to pay the costs of the first trial and of this appeal. Solicitors for the appellant, Sly &Russell, Sydney, by Hedderwick, Fookes &Alston.

Solicitors for the respondent, Weigall &Crowther.

CaseChat Overview and Summary

Buzacott & Company Limited appealed to the Full Court of the High Court of Australia against a judgment of Isaacs J. The original action was brought by Cyclone Proprietary Limited, the owner of two registered designs for gates, alleging infringement by Buzacott & Company Limited. Cyclone claimed that Buzacott had sold, offered for sale, and kept for sale gates to which the registered designs or imitations thereof had been applied without licence. Buzacott's defence included a claim that the registered designs were not new or original and had been previously published and in use. Isaacs J. found in favour of Cyclone, granting an injunction and finding that infringement had occurred and prior publication had not been proven.

On appeal, Buzacott & Company Limited sought leave to adduce further evidence concerning the prior publication of the designs. The legal issue before the Full Court was whether to admit this further evidence and, consequently, whether to grant a new trial. The Court considered its jurisdiction under the High Court Rules to admit further evidence on appeal and the appropriateness of doing so in the circumstances of the case.

The Full Court, in its judgment delivered by Knox C.J., determined that it was "eminently desirable" that a new trial should take place. The Court explicitly stated that it was not ruling on any aspect of Isaacs J.'s original decision, other than formally vacating the judgment to enable a new trial. The primary purpose of the new trial was to allow Isaacs J. to consider fresh evidence on the issue of prior publication, which had been a point of contention at the first trial. The Court expressed no opinion on the potential effect of this new evidence, leaving that entirely to the discretion of the trial judge.

The Court ordered that the judgment of Isaacs J. be set aside and a new trial be granted. By consent, the evidence from the former trial was to be used in the new trial. Crucially, the terms of the order stipulated that Buzacott & Company Limited, as the appellant, was to pay the costs of the first trial and the costs of the appeal.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established