El Barador Holdings Pty Ltd v Logan Units (Australia) Pty Ltd

[1991] FCA 901

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c f O l / Q -

JUDGMENT No ........ ........ ... . , ..... .

IN THE FEDE- COURT OF AUSTRALIA 1 No. QG 111 of 1991

QUEENSLAND DISTRICT REGISTRY	1
GENERAL DIVISION	1

BETWEEN: EL BARADOR HOLDINGS PTY. LTD.

Applicant

AND: LOGAN UNITS (AUSTRALIA) PTY. LTD.

First Respondent

AND: GRAHAM JOHN CLARE

Second Respondent

CORAMI PINCUS J.

PLACE$ BRISBANE

W: 18 NOVEMBER 1991

EX TEMPORE REASONS FOR JUDGMENT

This is an application to split proceedings which relate to a registered design. By the amended statement of claim which was filed on 18 September 1991, the applicant

pleads the registered design number 102949, of which I have
been shown a copy, and alleges that at some relevant times it

representations. Those representations show a U shaped or

was the owner and at other relevant times was the exclusive
licensee. The applicant also says that the first respondent,
with the authority of the second respondent, was guilty of

infringement of the applicant's monopoly in the design.

The design relates to a metal section; the

statement of monopoly is claimed in the shape and
configuration of a metal section of indefinite length and
constant cross-section as illustrated in the accompanying

i .,-

2

channel shaped section which has a crimping at either end of

what one might call the base.	It is a relatively simple
design.

I am told that the section is used in construction

of houses, but the statement of monopoly is not confined to a section so used and indeed is not confined to steel sections; it would seem to apply to metal sections of the shape

depicted, of whatever size.

The defence admits that the first respondent has

manufactured and sold certain sections, and I have been shown

a sample. The defence does not admit that there was any

illegality involved in doing so and there is a cross-claim challenging the validity of registration of the design and seeking an order expunging its registration.

When the matter was called on this morning, counsel

for the applicant raised a problem concerning confidentiality

of documents discovered on his side and one response to that

from counsel for the respondents was to say that the problem

would be solved if the trial was split.

The argument against splitting, put by Mr Bain for

the applicant, is principally that there may be a loss of time
and perhaps additional cost if the trial is split. He says
that experts may have to be called twice. The argument in
favour of it is that if, as is no doubt possible - although I
have no view about this at the moment - the respondents

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succeed on the question of whether or not their section is an
infringement or on the question whether the registration is
good, then there will not be any need to spend any more money

on any other problem.

Mr Bain, for the applicant, has emphasised that the

matter is one of exercise of discretion. I have come to a
clear view that the discretion should be exercised in favour
of the respondents' application that the trial should be
split. There is some dispute as to whether or not there is
still any manufacture going on on the respondents' side, but I
take into account that it may be - and I put it no higher than
that - that the issue now is entirely historical in the sense
that the only question of significance is whether or not, in

the past, illegalities have been committed.

If that is so, and it may be so, then a potential

loss of time does not seem to be so critical. In this sort of

case quantum is likely to be fairly complicated, whereas the

issues apart from quantum do not seem to me to be complicated.

People have been making metal sections now for centuries and the question of whether or not this metal section is of such a character as to be entitled to a statutory monopoly is obviously one about which different views may be open.

The question, then, is in what form the order for

splitting should be made. It is true that the division of the

issues can sometimes cause problems, and one problem was
adverted to by Mr Bain, and that is, does one in the first

hearing determine to what extent there has been an

infringement or does one simply take the admission? It seems

to me that it would be quite possible to have a useful hearing of the question of liability without going into the details of how many units were sold and on what occasions, but it is

desirable to make it clear, by the order, precisely what is to

be heard in the first trial.

What I propose to do is to put the matter over till

this afternoon and let the parties discuss an appropriate form of order. If they cannot agree, then I will decide for myself what the order should be.

In short, I am persuaded by Mr McMurdo that there

should be a split trial. I think it is a convenient course.

I do not think it is likely to do any injustice to the

applicant, if the applicant ultimately is successful, and in
saying that I take into account the fact that there is a

personal respondent as well as a corporate respondent.

I certify that this and the

three preceding pages are a
true copy of the reasons
for judgment herein of his
Honour Mr Justice Pincus

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Associate

Date 10 Noqewbev- \qq\