Elconnex Pty Ltd v Gerard Industries Pty Ltd

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JUDGMENT NO. ....- ........ .... -.-.-..

NOT SUITABLE FOR DISTRIBUTION

IN THE FEDERAL COURT OF AUSTRALIA	)
)

NEW SOU TH WALES DISTRICT REGISTRY ) NG 351 of 1990

1

GENERAL DIVISION 1

BETWEEN:  ELCONNEX PTY LIMITED

Applicant

AND :  GERARD INDUSTRIES PTY LIMITED

Respondent

CORAM: Burchett J.
PLACE: Sydney

DATE : 20 December 1991

EX TEMPORE REASONS FOR JUDGMENT

BURCHETT J.:

An issue as to costs has been raised in this matter, which proved lengthy and fraught with some difficulty. The applicant sought relief in respect of the sale by the respondent of certain electrical connectors. Relief was sought on a number of bases: it was alleged there had been an infringement of patent, an infringement of the monopoly in a registered design, and breaches of S. 52 of the Trade practices Act. There was a cross-claim for revocation of the patent. The cross-claim succeeded, so the case on the patent, although otherwise established, was not successful. The case in respect of a registered design also failed, but the case succeeded under S. 52 of the Trade Practices Act.

Certainly, a large amount of time was taken up on issues on which the applicant ultimately failed, but it seems to me that sight cannot be lost of the fact that, if one departs from the formal categories of the law and looks at the substance of the matter, the applicant sought to restrain the sale of the connectors, and to obtain damages in respect of the sale that had occurred; and the applicant succeeded in finding an appropriate legal category of claim, albeit it also failed in alternative ways of putting the claim.

I do think the court should endeavour to make an appropriate over-all order, if possible, rather than a form of order that involves a great deal of additional work in connection with taxation. Taking all these factors into account, I think the appropriate order is that the respondent pay one third of the applicant's costs.

Mr Catterns asks for some orders for corrective advertising. I will defer the question what the orders, if made, ought to be, but in general tens he seeks a notice to

go individually to wholesalers or bulk contract purchasers,

and he also seeks advertisements in trade journals.

The power to make an order requiring corrective advertising in cases where there has been an infringement of S. 52 of the Trade Practices Act was confirmed by me in Janssen Pharmaceutical Ptv Ltd v. Pf izer Ptv Ltd [l9961 ATPR 47285 at 47295, which was approved by a Full Court in Hos~itals Contribution Fund of Australia Limited v. Switzerland Australia Health Fund Ptv Limited [l9881 ATPR 49108 at 49117. However, although there 1s plainly power, I do accept the submission of Mr Yates that a court ought to be sparing in its exercise. It is a power to be exercised where there is shown to be a real need for it, and certainly not as of course. An obvious example of a…