Caterpillar Inc v Desert Storm Management Proprietary Ltd (ACN 003 356 474)
[1996] FCA 1046
•20 Nov 1996
IN THE FEDERAL COURT OF AUSTRALIA No VG 185 of 1996
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
BETWEEN:CATERPILLAR INC
First Applicant
AND:DESERT STORM MANAGEMENT PROPRIETARY LIMITED
(ACN 003 356 474)
Second Applicant
AND:SUN FORWARD PTY LTD
(ACN 064 840 115)
Respondent
MINUTES OF ORDERS
JUDGE MAKING ORDER: Drummond J
DATE OF ORDER: 20 November 1996
WHERE MADE: Brisbane
THE COURT ORDERS AND DECLARES THAT:
The importing by the respondent of Caterpillar branded Logger boots into Australia without the licence of the first applicant bearing a reproduction of the first applicant’s Raised Sprocket Tractor logo (as defined in paragraph 13 of the Amended Statement of Claim herein) (“the Raised Sprocket Tractor logo”) constitutes an infringement of the copyright of the first applicant.
The respondent, whether by itself, its employees or agents or howsoever otherwise, has passed off, is continuing to pass off and has threatened to pass off footwear as and for footwear manufactured by
or under the authority of the first applicant and imported and distributed in Australia by the second applicant by promoting, offering for sale and selling footwear in the following get-up:(a)footwear packaged in a box bearing the expressions “GAT” or “GAT Walking Stage” with or without a depiction of a tank device; or
(b)footwear packaged with tags bearing the expressions “GAT” or “GAT Walking Stage” with or without a depiction of a tank device;
(the “GAT get-up”)
The promotion, offering for sale and sale by the respondent whether by itself, its employees or agents or howsoever otherwise of footwear under or by reference to the GAT get-up constitutes conduct which is misleading or deceptive or which is likely to mislead and deceive in contravention of s 52 the Trade Practices Act 1974 (Cth).
The respondent, whether by itself, its employees or agents or howsoever otherwise by promoting, offering for sale and selling footwear under or by reference to the GAT get-up has:
(a)falsely represented that the said footwear has the sponsorship or approval of one or both of the applicants: and
(b)represented falsely that the respondent has a sponsorship, approval or affiliation with one or both of the applicants;
in contravention of the provisions of s 53(c) and (d) the Trade Practices Act 1974 (Cth).
The applicants have leave to discontinue the proceedings in so far as it makes claims not disposed of by these orders.
Upon the applicants by their counsel undertaking to file a notice of discontinuance of the proceeding forthwith in so far as it makes claims not disposed of by these orders (“the undertaking to discontinue”) the respondent be and is hereby restrained whether by itself, its employees, or agents or howsoever otherwise without the licence of the first applicant from:
(a)(i) importing for the purpose of sale or by way of trade offering or exposing for sale;
(ii)selling or by way of trade offering or exposing for sale;
(iii)exhibiting in public by way of trade;
Caterpillar branded Logger boots bearing a substantial reproduction of the first applicant’s Raised Sprocket Tractor logo;
(b)passing off footwear under or by reference to the GAT get-up or any get-up deceptively or misleadingly similar thereto or constituting merely a colourable imitation thereof as and for the footwear manufactured by or under the authority of the first applicant and imported and distributed by the second applicant;
(c)promoting, offering for sale and selling footwear under or by reference to the GAT get-up or any get-up deceptively or misleadingly similar thereto or constituting merely a colourable imitation thereof in trade or commerce in Australia;
(d)(i) representing that footwear promoted, offered for sale and sold under or by reference to the GAT get-up or any get-up deceptively or misleadingly similar thereto or constituting merely a colourable imitation thereof has the sponsorship or approval of one or both of the applicants;
(ii)representing that the respondent has in connection with the promotion or sale of footwear under or by reference to the GAT get-up or any get-up deceptively or misleadingly similar thereto or constituting merely a colourable imitation thereof, a sponsorship, approval or affiliation with one or both of the applicants.
Unless the respondent files and serves a notice of motion and all material to be relied upon by it on or before 22 November 1996 seeking an order that it be at liberty, on such terms and conditions as the Court may impose, to retain and sell all footwear, promoted, offered for sale and sold under or by reference to the GAT get-up or any get-up deceptively or misleadingly similar thereto or constituting merely a colourable imitation thereof, the respondent deliver up to the applicants for destruction:
(a)all of the said footwear in its possession, power, custody or control or that of its employees or agents;
(b)all signs, signage, cards, advertising and promotional material, labels, packaging, catalogues, price lists, brochures and other documents and materials in the possession, power, custody or control of the respondent or its employees or agents relating to the advertising, promotion or sale of the said footwear
such delivery to occur on or before 25 November 1996 and to be verified by affidavit filed and served on or before 29 November 1996.
The respondent deliver up to the first applicant any footwear of the respondent bearing a substantial reproduction of the first applicant’s Raised Sprocket Tractor logo, such delivery to occur on or before 25 November 1996 and be verified by affidavit filed and served on or before 29 November 1996.
The goods the subject of a Notice of Seizure to Objector dated 14 March 1996 be forfeited to the Commonwealth for destruction.
There be interlocutory judgment for the applicants for damages to be assessed or, at the applicants’ option, for an account by the respondent of the profits made by it by passing off the footwear promoted, offered for sale and sold under or by reference to the GAT get-up or any get-up deceptively or misleadingly similar thereto or constituting merely a colourable imitation thereof, as and for footwear of the applicants.
There be interlocutory judgment for the first applicant for damages (including additional damages pursuant to s115(4) the Copyright Act 1968 (Cth) and damages for conversion pursuant to s 116 of the said Act) to be assessed or, at the first applicant’s option, for an account by the respondent of the profits made by it by infringing the first applicant’s copyright in the Raised Sprocket Tractor logo.
There be interlocutory judgment for the applicants for damages to be assessed pursuant to s 82 the Trade Practices Act 1974 (Cth) for the contravention of the respondent of ss 52 and 53(c) and (c) of the said Act.
The directions hearing herein be adjourned to 9 am on 9 December 1996 for the giving of directions as to the making of any enquiries as to damages or the taking of any accounts of the respondent’s profits.
The applicants’ notice of motion be otherwise dismissed.
(a) The respondent pay two thirds of the applicants’ costs of the notice of motion herein dated 13 June 1996 save that the respondent shall pay the whole of the applicants’ costs of the notice of motion of today, 20 November 1996;
(b)The respondent otherwise pay the applicants’ costs of and incidental to the proceeding (including costs reserved).
Liberty to any party to apply on not less than 72 hours notice in writing.
NOTE:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA No VG 185 of 1996
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
BETWEEN:CATERPILLAR INC
First Applicant
AND:DESERT STORM MANAGEMENT PROPRIETARY LIMITED
(ACN 003 356 474)
Second Applicant
AND:SUN FORWARD PTY LTD
(ACN 064 840 115)
Respondent
CORAM:Drummond J
DATE:20 November 1996
PLACE:Brisbane
ON 20 NOVEMBER, 1996, THE MATTER CAME ON FOR FURTHER CONSIDERATION. THE COURT MADE THE FOLLOWING RULING AND THEN PROCEEDED TO MAKE FINAL ORDERS.
RULING
I decline to grant the adjournment sought on behalf of the respondent. When I handed down my reasons on 8 November in the presence of counsel for both parties, I indicated that I would like the parties to try to agree on the form of the orders, but stated, in effect, that if there were no agreement, I would resolve the
question myself today. It is apparent that there has been considerable discussion between the parties, although it seems that Mr Wee has, in recent days, been silent in response to requests from the applicants to further try to resolve the question of the appropriate orders.In any event, the position really seems to me to come down to this. I have, in exhibit 1, the considered submissions of Mr Ogborne, counsel for the respondent at the trial, on the orders that should be made. His criticisms of the orders originally proposed by the applicants fall into two categories. Very broadly, the first concerns the form of the restraint that is appropriate in relation to passing off and Trade Practices Act breaches, and the second deals with whether it is open to the applicant now to claim damages or, at its election, an account of profits, in connection with the passing off claim and the copyright claim on which the applicants have succeeded.
So far as the first of Mr Ogborne's two concerns goes, the applicants have very largely, although by no means completely, met the concerns raised by Mr Ogborne: they agree that the order in question should in large part be that which Mr Ogborne proposes. So far as the second of Mr Ogborne's concerns go, it seems to me that it is entirely without substance. The authority relied on, McDonald's Hamburgers Ltd v Burgerking (UK) Ltd (1987) 13 FSR 112, does not support the proposition that Mr Ogborne advances. I gather he wishes to draw my attention to pages 117 through to 120.
I note that the successful applicant in that case succeeded in belatedly obtaining an order for an enquiry as to damages, the reason being, as appears from page 118, that it was able to bring itself within what the Court of Appeal saw as the appropriate principle, viz, that if the plaintiff has an arguable case for claiming damages, the court will, as a matter of ordinary justice, make an order for an enquiry to enable it to pursue it. In the course of my reasons, at pp 26 and 27, I expressly found that the applicants had proved the likelihood of future damage, if the Court did not intervene at their behest, and I also expressly found that the applicants had suffered past damage. That, therefore, makes this a clear case in which the applicants are entitled to an enquiry for damages.
Mr Ogborne also contends that, because the applicants, in the draft orders they put forward at the commencement of the case, did not mention damages, the respondent suffered a detriment in the form of Mr Ogborne's failure, because he did not think the applicants were going to seek damages, to address on that particular issue. However, he does not, in his written submissions, identify anything that he would have put to the Court at the hearing if he had then considered that the applicants might seek damages or an account of profits, in addition to other relief if they were to succeed, apart from the rule in the McDonald's Hamburgers case. At least, that is the only possible prejudice that he identifies in his written submissions. He has now made a submission based on that case. For the reasons I have given, the contention is without substance.
There therefore appears to me to be no basis upon which an adjournment should be granted, notwithstanding what Mr Wee has to say about his belated unsuccessful attempts to find anyone at the Melbourne bar who could represent the respondent on what is, after all, quite a short point.
I certify that this and the preceding three
pages are a true copy of the reasons for
judgment herein of the Honourable
Justice Drummond.
Associate:
Date: 20 November 1996
0
0
0