Chef Clothing Revival P/L v Ian M. Brain & Co P/L

9 8 3 1 9 3 ; - '

JUDGMENT NO. ,.1.1.1.1111.111m1 m111111.1111

IN THE FEDERAL COURT OF AUSTRALIA 1
QUEENSLAND DISTRICT KEGISTRY

) No. QG 207 of L993
GENERAL DIVISION 1

BETWEEN: CHEF CLOTHING REVIVAL PTY LTD
First Ap~licant
TIMOTHY PATRICK GRUBI and KIM ALAIN De La
VILLEFROMOY

Second Applicants I
L

AND : IAN M. BRAIN & CO PTY LTD
First Respondent
IAN MAXWELL BRAIN and SHIRLEY ALICE BRAIN
Second Respondents

MINUTES OF ORDER

JUDGE MAKING ORDER: SPENDER J 15 FEE 1994

FEDEFUL COURT OF

DATE OF ORDER: 14 DECEMBER 1993 AUSTRALVl
PRINCIPAL
REGISTRY
WHERE MADE: BRISBANE ,

Upon the applicants giving the usual undertaking as to
damages -
THE COURT ORDERS THAT:
(1) pending the hearing and determination of this action or until further order, the first and second respondents whether by themselves their servants or agents or howsoever otherwise be restrained from -

NOTE: Settlement and entry of orders is dealt with in 0. 36

of the Federal Court Rules.
(i) supplying or selling in Australia "Haydex Denim Rap Trousers", "Haydex Raps Trousers" and "Haydex Workwear Raps Trousers" or any other similar product; or
(ii)further offering for sale in Australia "Haydex Denim Rap Trousers", "Haydex Raps Trousers " and "Haydex Workwear Raps Trousers" or any other similar product.

(2) Costs of today be the costs of the parties in the principal
proceedings.

IN THE FEDERAL COURT OF AUSTRALIA 1
9UEENSLAND DISTRICT REGISTRY

) No. QG 207 of 1993
GENERAL DIVISION 1

BETWEEN: CHEF CLOTHING REVIVAL PTY LTD
First Applicant
TIMOTHY PATRICK GRUB1 and KIM ALAIN De La
VILLEFROMOY
Second Applicants

AND: IAN M. BRAIN & CO PTY LTD
First Respondent

IAN MAXWELL BRAIN and SHIRLEY ALICE BRAIN
Second Respondents

LRAM: SPENDER J

PLACE : BRISBANE
DATE : 14 DECEMBER 1993

EX TEMPORE REASONS FOR JUDGMENT

This is a notice of motion by Chef Clothing Revival Pty Limited ('Chef') and Timothy Patrick Grubi and Kim Alain De La Villefromoy seeking orders against Ian M. Brain & Co. Pty Ltd and Ian Maxwell Brain and Shirley Alice Brain. The orders sought are that pending the hearing and determination of this action or

until earlier order, the respondents by themselves, their servants or agents or otherwise be retrained from manufacturing,

distributing, offering for sale, supplying or selling in Australia Haydex denim rap trousers, Haydex raps trousers, and

I:.

Haydex work wear raps trousers, or any other similar product. ' I 1

The first applicant, Chef, was incorporated on 11 September 1987. Chef manufactures and sells a specialised range of uniforms, including tops, tunics, trousers, aprons, workwear and neckwear for use specifically by chefs and cooks in the
hospitality industry. It has done so since 1987. A part of the company's uniform line comprises size adjustable Chef trousers. Mr Grubi says that he designed those trousers personally in about 1987. Its current catalogue shows the trousers in Chef's range, and those appear particularly at page 8 and 9 of Chef's catalogue, which is in evidence before me.
The trousers are in different patterned fabrics, including a houndstooth, a black and white check and a black and white stripe, as well as plain black. All of them have a large waist, four identical panels, similar length from the front of the waist to crotch and from crotch to the back of the waist, and side ties which permit the trousers to be closed either to the front or to the rear of the wearer.
On 16 June 1988, Mr Grubi and another director of Chef, Kim Alain De La Villefromoy, were granted a certificate of registration of design in relation to trousers pursuant to the Desians Act 1973 ('the Act'). Such registration gives a monopoly

in respect of that design.
It is important to have regard to the extent of the design which has that protection. The monopoly is claimed in the shape and configuration of an article of clothing as illustrated in the certificate of registration. The article of clothing is trousers and shows a shape of trousers with four identical panels; a large waist, side ties which are fastened to the waist area by cross-stitching in the form of a cross, and which are able to be tied reducing the waist to the size of the wearer.
There i s no ident i f icat ion o f any colour or pattern i n the cloth o f which the trousers are made nor i s there any depiction o f , or an express reference t o , velcro or studding i n that registered design. The registration o f the design under the Act has been extended and i s current.
Section 17 o f the Act provides:
" Subject t o t h i s Act, a design shall not be registered unless it i s a new or original design
. , .
Section 2 6 provides:

" ( 1 ) I f the Registrar decides t o register a design, he shall enter i n the register the prescribed particulars relating t o the design, and shall issue t o the applicant a cer t i f i ca te

o f registration i n the prescribed form.
a . .
(3) The cer t i f i ca t e o f registration shall be prima facie evidence o f the facts stated therein, and o f the va l id i t y o f the registration. "
So f a r as it i s presently relevant for these

proceedings, section 30 o f the Act provides:
" A person shall be deemed t o infringe the monopoly i n a registered design i f he, without the licence or authority o f the owner o f the design -

( a )

applies the design or any fraudulent or obvious imitation o f i t t o any ar t ic le i n respect o f which the design i s registered;
. , .

The evidence on behalf o f the applicants does not reveal
a licence expressly granted by the second applicants t o the f i r s t
applicant, but it is material that two of the three directors of the first applicant are the second applicants who are the grantees of the certificate of registration of the design in question. It is sufficient for present purposes that the second applicants have an entitlement to initiate proceedings to protect their rights conferred by the registration of their design.
It seems to me, however, that Mr Grubi may be confused as to the width of the monopoly that is conferred by registration under the Act. In particular, various matters such as the use of velcro and studding in the clothing covered by the design seems to be outside the monopoly granted by the registration of the design. However, such features of the Chef trousers, (including the placement, and size of studs), are relevant, it seems to me, in assessing the question of the means by which the respondents bought their trousers into existence and into commercial competition with the trousers of Chef.

Mr Grubi says that this design was introduced into the marketplace in or about 1987, and that the trousers now represent

approximately 30 per cent of Chef's sales, and that up until

August 1992 the Chef trousers (the subject of the registered design) were the only style of trousers sold by Chef. There are attempts by Chef to expand its sales of Chef products, including the trousers, in countries overseas.
Mr Grubi says that on or about 22 November 1993 he
received a copy of a catalogue and price list produced by Haydex
Workwear Australia ('Haydex'), the catalogue of the respondents.

In that catalogue, on the front cover and at pages 6 and 7, there appear depictions of trousers which have a method of fastening involving a wide waist with cross ties permitting the trousers to be fastened. The trousers appear in plain navy, denim or black; black and white checks; and a houndstooth design.
Mr Grubi says that on seeing this catalogue, and in particular
those parts to which I have referred,'he examined the trousers
and compared them with those covered by the registered design.

After correspondence between the solicitors, these proceedings were initiated. The evidence of Mr Ian Brain for the respondents is to the effect that Haydex has been a registered trademark since the 1 9 4 0 ~ ~ and has been used in the manufacture and sale of uniforms since that time. Haydex Uniforms and Haydex Workwear, however, from the material filed on behalf of the applicants, are business names which have been registered for businesses that commenced on 1 August 1993. Mr Brain says:
" The first respondent manufactures and sells a range
of uniforms principally for use in the catering and

medical and dental professions and corporate office hospitality industries, as well as uniforms for

uniforms .

The first respondent carries on business essentially by sales to mail order customers which represent 75 per cent of its sales. The name Haydex and trademark are displayed prominently on the back and front covers of the Haydex brochure, and on the order form contained with the Haydex brochure. The balance of the sales are retail sales to the public from its manufacturing showroom in Fortitude Valley, Brisbane. "

So far as the present controversy is concerned, he says
that Haydex Raps Trousers, including the Haydex Denim Rap
Trousers and Haydex Workwear Raps Trousers, is a name that some
of the members of the first respondent's sales and marketing

i

team, including Mr Brain, came up with to market the trousers. He says that there are four styles of raps trousers manufactured by the first respondent. He details his experience in the clothing industry since 1950, and the gravamen of his affidavit is to suggest that there is nothing new or unique about the features listed by Mr Grubi.

Three patterns are referred to in, and exhibited to, his affidavit. Two of the three indicate that the copyright is claimed for 1991 and 1993 respectively, and in respect of one other of the patterns exhibited to Mr Brain's affidavit, there is no indication of when that pattern came into existence. Each of the patterns indicates an adjustable unisex pant closing

feature

.

Mr Brain says that the first respondent has sold 15,000 copies of the brochure printed at a cost of approximately $9000.00, and has paid the sum of $2,400 to the publishers of

mailing list: throughout Australia in mid-November 1993. The

Chef magazine to distribute 9000 copies of the brochure to their

first respondent does not have the ability to recall those

!

brochures because the mailing list is confidential to the

publishers of Chef magazine.

Mr Brain says if the first respondent is restrained from
selling the Haydex raps trousers, it will suffer a loss which

I

cannot be quantified easily, if at all.

It would cause

!

irreparable damage to the first respondent's good will and

i

I

i

business if it were restrained from supplying Haydex raps trousers to customers or potential customers who see them displayed in the Haydex brochure. Apart from the loss of sales of the Haydex raps trousers themselves, the first respondent would, as a consequence, also expect to lose sales of other - -

lines.

Importantly for my purposes, there is no explanation by
Mr Brain as to when precisely the Haydex raps trouser range came
into existence and by what means the design of those trousers was arrived at. Having regard to the nature and extent of the applicant's business, its volume being of the order of $300/$400,000 per year, it is a fair inference that the Haydex trousers came into existence as a consequence of inspection or acquaintance with the Chef trousers.

There are some contrasts between the Chef trouser range and the Haydex denim rap trouser range.

In particular, there is
a three buttoned fly in the Haydex trouser.

The questions here to be considered are whether there is

I

a serious question to be tried, and if so where the balance of

!

convenience lies.

!	I start on the basis that it is only the Desiqns Act aspect of the claim which is relevant for these interlocutory
I	proceedings. The material on behalf of the respondents seems to put in issue the validity of the registration of the design of
I	the second applicants.
l
Having regard to the material before me, and to the provisions of section 26(3) of the Act, I proceed on the basis that there is a serious question to be tried as to whether there has been infringement by at least the first respondent of the registered design of the second applicants.
The question of infringement'is the primary question that has to be considered here. The test of what is protected by a registered design appears from the observations of the High Court in Mallevs Ltd v J.W. Tomlin Ptv Ltd where Taylor, Menzies and Owen JJ delivered a joint judgment. Their Honours said, at

"

I f a d e s i g n a p p l i e d by a n o t h e r h a s the f e a t u r e s

t h a t a r e c h a r a c t e r i s t i c o f the r e g i s t e r e d d e s i g n

and i s s o arranged t h a t t o the eye the r e s u l t i n g

shape i s s u b s t a n t i a l l y the same there i s

i n f r i n g e m e n t , whereas i f the same f e a t u r e s a r e

arranged so t h a t t o the eye the r e s u l t i n g shape

i s d i f f e r e n t there i s , i n the absence o f

f r a u d u l e n t l i m i t a t i o n , n o i n f r i n g e m e n t . In

d e c i d i n g one way o r the o t h e r the propor t i ons o f

common f e a t u r e s may be o f the u tmos t impor tance ,

b u t accep tance o f th i s does n o t involve d e c i d i n g

t h a t t o be r e g i s t r a b l e the r e p r e s e n t a t i o n d e s i g n

must be r e p r e s e n t e d s o t h a t i t s propor t i ons can

be a c c u r a t e l y c a l c u l a t e d . I t i s s u f f i c i e n t i f
it shows a shape w i t h enough i n d i v i d u a l i t y o f appearance t o d i s t i n g u i s h it and enab l e it t o be de termined by v i s u a l comparison whe ther the shape o f an a r t i c l e i s either the same a s or n o t h i n g more t h a n an i m i t a t i o n o f t h a t d i s c l o s e d

by the r e g i s t e r e d d e s i g n . "
It is that test (namely, that it is a question of visual comparison as to whether the shape or con£ iguration of an article is the same as, or no more than, an imitation of that disclosed by the registered design) that has to be applied in this case. The view I take of the matter is that the Haydex trouser is an
imitation of the registered design of the second applicants, although there are some changes which do not alter the fundamental conclusion. I am fortified in this conclusion by the absence of material from Mr Brain to which I have referred.
I am, of course, not deciding this as a matter of ultimate conclusion, but simply that it'is at least arguable that there is infringement by the first respondent of the registered design of the second applicants, so that for interlocutory purposes the question really becomes a question of a balance of convenience. This aspect of the matter is troublesome.
The respondents have offered an undertaking which in different circumstances would be not only satisfactory but the preferable way to go, having regard to the balance of convenience. That undertaking is as follows:

" The First Respondent HEREBY UNDERTAKES AND AGREES

to keep a record of all sales by reference to the date, number/quanti ty, description, customer name and amount of such sales of the Haydex Raps Trousers, the Haydex Denim Raps Trousers and the

Haydex Workwear Raps Trousers from the date hereof until the trial of this action or earlier Order
and, further, to keep all usual business records
recording the profit calculations on such sales.

The First Respondent undertakes to allow access to such records for the purposes of inspection upon reasonable notice (but not more than once in any period of three months), such access to be limited to an accountant to be mutually agreed between the parties and to the solicitors for the Applicants, who shall undertake not to disclose the contents of such records to the Applicants without the consent of the Respondents or the leave of this Honourable Court.
DATED this thirteenth day of December 1993. "

S i r G a r f i e l d Barwick, i n Hornsbv B u i l d i n a In fo rma t ion

Cen t r e P r o ~ r i e t a r v L imi ted v Svdnev B u i l d i n a I n f o r m a t i o n Centre

L imi ted (1978 ) 140 CLR 216 s a i d a t 2 2 1 :
l'

In a n y c a s e it i s o n l y i n the mos t e x c e p t i o n a l

c a s e s t h a t a c o u r t shou ld by i n t e r l o c u t o r y o rder

r e s t r a i n the c a r r y i n g on o f a b u s i n e s s . As a

general r u l e the k e e p i n g o f accoun t s i n the
i n t e r i m w h i l s t t h e r i g h t s ' o f the p a r t i e s a r e de t enn ined i s n o t o n l y p r e f e r a b l e b u t s u f f i c i e n t
t o p r o t e c t the interests o f the mov ing p a r t y . "

Toohey J i n Dairv V a l e Metro CO-operat ive Ltd v Brownes

Dairv L imi ted 35 ALR 494 a t 502, where he s a i d :

" Damages a r e , o f c o u r s e , a v a i l a b l e t o b o t h

companies i f they make good a cause o f a c t i o n .

I t may be d i f f i c u l t t o a s s e s s w i t h a n y p r e c i s i o n

the quantum o f t h o s e damages, b u t th is i s a
m a t t e r the c o u r t s have t o cope w i t h on many occas ions and however d i f f i c u l t some assessment o f damages shou ld be p o s s i b l e . S e c t i o n l l S ( 4 )

o f the Copyright Act c o n t a i n s an extensive power

t o award damages i n the c i r cums tances there

d e s c r i b e d . O n the other hand, t o gran t an

i n j u n c t i o n would e f fect ively r e s t r a i n the

re sponden t from s e l l i n g i t s produc t a t a l l . I f

i t i s h e l d t o be engaging i n m i s l e a d i n g o r

d e c e p t i v e conduct t h a t may w e l l be i t s f a t e , b u t

t o r e s t r a i n it a t t h i s s t a g e w i l l be to c r e a t e

a monopoly i n the a p p l i c a n t s , a s i t u a t i o n which

shou ld n o t be reached l i g h t l y . "

I am consc ious o f t h e s e m a t t e r s i n r each ing t h e cour se

which I t h i n k i s the appropr ia t e c o u r s e i n a l l the c i rcums tances
here.

I am quite s a t i s f i e d f o r p r e s e n t purposes t h a t there has

been a r e c e n t entry b y the f i r s t r e sponden t i n t o the f i e l d o f

s e l l i n g t r o u s e r s s i m i l a r t o the shape and c o n f i g u r a t i o n o f the

r e g i s t e r e d d e s i g n o f the second a p p l i c a n t s .
There is no evidence before me, apart from that which I have earlier set out, to indicate that this has been a continuing business or there are substantial stocks on hand of the various items of the Haydex denim rap trousers range. Essentially, it is a new entrant, and the second applicants have acted promptly to seek to protect the monopoly which their registered design presently gives them. To permit this new endeavour by the first applicants to continue to trial seems, in a sense, to undermine the protection which the registration of designs under the Act is meant to give.
My view is that there is a prima facie entitlement in the applicants to have a monopoly in respect of the design granted to them under the Act. It is very seriously arguable that the Haydex denim rap trousers infringe that design. Having regard to the chronology of matters and the absence of any other material from Mr Brain, it seems to me that the appropriate order is to restrain any sale of the Haydex denim rap trousers range until trial or earlier order.

I propose to hear counsel as to the form of order that I should make. I note, of course, that the applicants have each proffered the usual undertaking as to damages, and the order is conditional, of course, on that undertaking as to damages.
The order that I propose is that on the applicants giving the usual undertaking as to damages, the first and second
respondents by themselves, their servants, or agents, or
howsoever otherwise be restrained from distributing, supplying
or selling in Australia Haydex denim rap trousers, Haydex raps
trousers, and Haydex worknear raps trousers, or any other similar

product, and that until the hearing and determination of this .

action or earlier order they be restrained from further offering for sale in Australia Haydex denim rap trousers, Haydex raps trousers and Haydex workwear raps trousers.

The effect of that order is that the respondents will not be able to sell any of the Haydex trousers range and any further distribution of the brochure which contains the depiction of those trousers is also restrained, unless it is clearly indicated in the brochure that the trousers are not available for sale.

The brochure can be circulated by the respondent provided there is a sufficient indication on it that the trousers advertised in it are not available for sale.

After hearing counsel as to costs, I order that the
costs of today be the costs of the parties in the principal
proceedings.
I cer t i fy t h a t t h i s and t h e preceding

e leven (11 ) pages a r e a t r u e copy of

t h e reasons for judgment here in o f t h e

Honourable m J u s t i c e Spender.
Date: 14 December 1993

Counsel f o r the appl icants: M r I . Hanger QC

S o l i c i t o r s for the appl icants: Greves Cheswick

Counsel for the respondents: m S . Doyle
S o l i c i t o r s f o r the respondents: McCullough Robertson
Date o f Hearing: 14 December 1993

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Chef Clothing Revival P/L v Ian M. Brain & Co P/L [1993] FCA 983

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BETWEEN:	CHEF CLOTHING REVIVAL PTY LTD First Ap~licant
TIMOTHY PATRICK GRUBI and KIM ALAIN De La VILLEFROMOY

DATE OF ORDER:	14 DECEMBER 1993	AUSTRALVl
PRINCIPAL
REGISTRY
WHERE MADE:	BRISBANE ,
Upon the applicants	giving the usual undertaking	as to
damages -

BETWEEN:	CHEF CLOTHING REVIVAL PTY LTD First Applicant
TIMOTHY PATRICK GRUB1 and KIM ALAIN De La VILLEFROMOY

until earlier order, the respondents by themselves, their	servants or agents or otherwise be retrained from manufacturing,
distributing, offering for sale, supplying or selling in Australia Haydex denim rap trousers, Haydex raps trousers, and

Haydex work wear raps trousers, or any other similar product.	' I 1
The first applicant, Chef, was incorporated on 11 September 1987. Chef manufactures and sells a specialised range of uniforms, including tops, tunics, trousers, aprons, workwear and neckwear for use specifically by chefs and cooks in the

*( a )*	applies the design or any fraudulent or obvious imitation o f i t t o any ar t ic le i n respect o f which the design i s registered;
. , .

Mr Grubi says that this design was introduced into the marketplace in or about 1987, and that the trousers now represent	approximately 30 per cent of Chef's sales, and that up until
August 1992 the Chef trousers (the subject of the registered design) were the only style of trousers sold by Chef. There are attempts by Chef to expand its sales of Chef products, including the trousers, in countries overseas.
Mr Grubi says that on or about 22 November 1993 he received a copy of a catalogue and price list produced by Haydex Workwear Australia ('Haydex'), the catalogue of the respondents.
In that catalogue, on the front cover and at pages 6 and 7, there appear depictions of trousers which have a method of fastening involving a wide waist with cross ties permitting the trousers to be fastened. The trousers appear in plain navy, denim or black; black and white checks; and a houndstooth design.
Mr Grubi says that on seeing this catalogue, and in particular
those parts to which I have referred,'he examined the trousers and compared them with those covered by the registered design.
After correspondence between the solicitors, these proceedings were initiated. The evidence of Mr Ian Brain for the respondents is to the effect that Haydex has been a registered trademark since the 1 9 4 0 ~ ~ and has been used in the manufacture and sale of uniforms since that time. Haydex Uniforms and Haydex Workwear, however, from the material filed on behalf of the applicants, are business names which have been registered for businesses that commenced on 1 August 1993. Mr Brain says:

t h a t	t o be	r e g i s t r a b l e	the r e p r e s e n t a t i o n	d e s i g n
must	be	r e p r e s e n t e d	s o t h a t i t s propor t i ons	can

Haydex Workwear Raps Trousers from the date hereof	until the trial of this action or earlier Order
and, further, to keep all usual business records recording the profit calculations on such sales.
The First Respondent undertakes to allow access to such records for the purposes of inspection upon reasonable notice (but not more than once in any period of three months), such access to be limited to an accountant to be mutually agreed between the parties and to the solicitors for the Applicants, who shall undertake not to disclose the contents of such records to the Applicants without the consent of the Respondents or the leave of this Honourable Court.
DATED this thirteenth day of December 1993. "

In	a n y c a s e it	i s o n l y i n the mos t	e x c e p t i o n a l
c a s e s	t h a t a	c o u r t shou ld	by i n t e r l o c u t o r y o rder

r e s t r a i n	the	c a r r y i n g on	o f	a	b u s i n e s s .	As	a
general	r u l e	the	k e e p i n g	o f	accoun t s	i n	the

d e c e p t i v e conduct	t h a t may w e l l be	i t s f a t e ,	b u t
t o r e s t r a i n it	a t t h i s s t a g e	w i l l be	to c r e a t e
a monopoly i n the	a p p l i c a n t s ,	a	s i t u a t i o n which

product, and that until the hearing and determination of this	.
action or earlier order they be restrained from further offering for sale in Australia Haydex denim rap trousers, Haydex raps trousers and Haydex workwear raps trousers.
The effect of that order is that the respondents will not be able to sell any of the Haydex trousers range and any further distribution of the brochure which contains the depiction of those trousers is also restrained, unless it is clearly indicated in the brochure that the trousers are not available for sale.
The brochure can be circulated by the respondent provided there is a sufficient indication on it that the trousers advertised in it are not available for sale.

*t h e reasons for judgment*	*here in o f t h e*
*Honourable m*	*J u s t i c e Spender.*

*Counsel for the respondents:*	m *S . Doyle*
*S o l i c i t o r s f o r the respondents:*	*McCullough Robertson*
*Date o f Hearing:*	*14 December 1993*

[1993] FCA 983

14 Dec 1993