Commonwealth of Australia v Oceantalk Australia Pty Ltd

[1996] FCA 1126

IN THE FEDERAL COURT OF AUSTRALIA  )  
  )
NEW SOUTH WALES DISTRICT REGISTRY  )    NG 625 of 1996
  )
GENERAL DIVISION                 )

BETWEEN:COMMONWEALTH OF AUSTRALIA

Applicant

AND:OCEANTALK AUSTRALIA PTY LIMITED

First Respondent

AND:     NAVIONICS S.p.A.

Second Respondent

CORAM:    Burchett J.
PLACE:    Sydney
DATE:     19 December 1996

REASONS FOR JUDGMENT

BURCHETT J.:

This is an application for urgent interlocutory relief. The case concerns electronic charts, incorporating a position finding facility, designed particularly for small pleasure craft.  The product is produced by Navionics SpA (Navionics), an Italian company, which appears to be the largest producer of electronic charts of this particular kind.  They are marketed in Australia by the other respondent, Oceantalk Australia Pty Limited (Oceantalk).

In the proceeding, the Commonwealth sues Navionics, alleging breach of the Commonwealth's copyright in official charts, and also alleging contravention of section 52 of the Trade Practices Act 1974. The application for interlocutory relief, however, is based only on the claims under section 52 of the Trade Practices Act.

The Commonwealth says that misrepresentations occurred in connection with the supply of the equipment, and have been made expressly or impliedly by the supply, and by the nature of the equipment itself, including in that expression a notice which appears on the screen of the equipment.  The Commonwealth says that there are risks to the lives of persons and to property, in particular risks to vessels, as a result of the misrepresentations it alleges, and as a result of errors and omissions of which, it says, the equipment is in effect represented as being free, and against which adequate warning has not been given.

The principles governing a grant of interlocutory relief are well known, and I do not intend to attempt to re-state them.  I set them out in a reported decision, Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405. I should note that, because of the limitations of an interlocutory hearing, facts found and views expressed in these reasons are only found and expressed on a provisional basis, and should not be understood otherwise.

On that footing, I say that the evidence shows, prima facie, that representations evidenced at the hearing of this matter as to the qualities of the equipment do appear to have been overstated, and it seems to me that purchasers might have gained an impression that the Navionics charts were a complete or near complete substitute for official charts, and perhaps even superior to them; whereas in fact there are some defects and omissions which could render the use of the electronic charts unsafe, unless care is taken to check with the official charts and make appropriate use in planning a voyage of the official charts.  At the same time, the evidence does show that, after several years, there has been no report of a safety problem actually arising from the use of the respondent's charts in any practical situation. 

I do not consider that a prima facie case for an injunction absolutely stopping the sales of the charts for any period has been made out, and certainly I am not satisfied that the balance of convenience would justify such an injunction, or the extensive relief that the Commonwealth primarily seeks.  On the evidence, any problems have to be balanced against the increased safety which is offered, in a number of respects, by the electronic charts.

It should be clearly understood that this decision is not based on any compromise over the demands of safety, but on a view, which I think the evidence requires me to take, of what has been shown to be the true nature of the safety equation.  As I have said, there are safety pluses, and they outweigh any safety minuses.

But this conclusion does not leave the respondents with a completely clear field.  What I have been saying relates to the future, assuming that the respondents market the equipment in accordance with what they say they will do.  Persons who have already acquired equipment are in a different position, if they received it at a time when the respondents were making what, on the evidence, seem to have been somewhat exaggerated claims for their equipment.  There are also some apparently demonstrated defects in the existing equipment.  I think these matters should be the subject of relief, in the interests of safety, and that this relief should be implemented as quickly as possible, having regard to the fact that the holiday season is beginning.  Sensibly, the respondents have accepted that something ought to be done.  I have thought appropriate only relatively slight amendments and additions to what, although only after the hearing had progressed some distance, they have themselves proposed.

A sufficient case has been made out to justify, and I think the balance of convenience supports, orders in the form that I have already indicated.  I accept the undertaking as to damages which has been proffered on behalf of the Commonwealth and I order:

1. that as rapidly as possible and at latest within 14 days Navionics SpA send or procure to be sent to all purchasers and owners of Navionics cartridges of the types identified in the schedule proffered by counsel for Navionics, which I now initial and date, whose names and addresses are reasonably ascertainable from records available to Navionics SpA, a notice in the form of attachment A, a document also provided today and which I have also initialled and dated with some corrections in my own handwriting, and continue to supply a notice to the same effect to all purchasers, except that the notice may be modified to take account of corrections to the cartridges as they are made.

1. Secondly, I direct that Navionics SpA file and serve by 17 February 1997 a statement of the steps taken to amend discrepancies in its cartridges, and I reserve liberty to the Commonwealth to apply on three days notice should this direction not be complied with, or should compliance with it reveal that the indications given today shall not have been adequately fulfilled.

1. I order that the costs of this interlocutory           application be the Commonwealth's costs in the        cause.

I certify that this and the preceding four (4) pages are a true copy of the Reasons for Judgment herein of his Honour Justice Burchett.

Associate:

Date: 20 December 1996

Counsel for the Applicant:        Mr R.J. Ellicott QC and Mr D.M. Yates

Solicitor for the Applicant:      Australian Government      Solicitor

Counsel for the Respondent:       Mr A.J. Bannon SC and Mr R. Cobden

Solicitors for the Respondent:     Gilbert & Tobin

Date of hearing:                 16 - 19 December 1996