Goodman Fielder Industries Ltd (trading as Meadow Lea Foods) v S a Olive Oil Co Pty Ltd

[1988] FCA 25

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NOT FOR GENERAL DISTRIBUTION

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NEW SOUTH	WALES	D I S T R I C T	R E G I S T R Y	)	NSW G . 9 1 of 1988
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G E N E R A L D I V I S I O N 1

BETWEEN :  GOODMAN F I E L D E R I N D U S T R I E S

L I M I T E D t r a d i n g as MEADOW

LEA FOODS

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A p p l i c a n t I '

AND :  S A O L I V E O I L CO PTY

I L I M I T E D
R e s p o n d e n t

CORAM :	WILCOX J
PLACE :	SYDNEY
DATE :	27 JANUARY 1988

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MINUTES OF ORDER

t h e m .

THE COURT NOTES THAT:

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A . Pend ing t h e f u r t h e r de te rmmat ion of t h i s proceeding,

t h e r e s p o n d e n t , by i ts c o u n s e l , u n d e r t a k e s t o the

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C o u r t t h a t it w i l l keep f u l l and accurate records of	' I
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a l l sa les made by i t of t h e product known as " O l i o " , I

marketed i n 750 millilitre cans, s u c h records to

i n c l u d e i n f o r m a t i o n a s t o a l l purchasers and t h e

q u a n t i t i e s purchased	by	them	and t h e amounts	p a i d by	k
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THE COURT ORDERS THAT:

1. The matter p roceed t o f i n a l h e a r i n g o n 2 3 , 24 and 25

March 1988.

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2 . T h e h e a r i n g b e u p o n t h e b a s i s o f a f f i d a v i t e v i d e n c e ,

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s u b j e c t t o c r o s s - e x a m i n a t i o n as r e q u i r e d .

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3 . 9.30 a.m. o n Wednesday 2 March 1988 be f ixed for

r e t u r n o f s u b p o e n a s .

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4 . L i b e r t y b e g r a n t e d t o e i t h e r p a r t y t o app ly on

t w e n t y - f o u r ( 2 4 ) h o u r s ' notice. i

5.	C o s t s	t o d a y	o f	r e s e r v e d .	b e	I.
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THE COURT DIRECTS THAT:

(1) Any f u r t h e r a f f i d a v i t s t o b e r e l i e d u p o n b y t h e

I	a p p l i c a n t	b e	f i l e d	a n d s e r v e d b y F r i d a y 1 9 F e b r u a r y
l

1 9 8 8 ; a n y a f f i d a v i t s o f t h e r e s p o n d e n t b e f i l e d a n d

s e r v e d o n or b e f o r e Monday 7 March 1988; any

a f f i d a v i t s i n r e p l y b e f i l e d a n d s e r v e d o n or b e f o r e

Monday 1 4 March 1988.

(11) L i s t o f d o c u m e n t s b e f i l e d a n d s e r v e d o n o r b e f o r e 1 2

F e b r u a r y 1 9 8 8 a n d i n s p e c t i o n t a k e p l a c e o n or b e f o r e

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1 9 February 1988.

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Note :	Settlement and entry of orders is dealt with in Order	1 -
36 of the Federal Court Rules.	I :
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NOT FOR GENERAL DISTRIBUTION

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IN THE FEDERAL COURT	OF AUSTRALIA	l
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NEW SOUTH WALES DISTRICT REGISTRY	) NSW G.91 Of 1988
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GENERAL DIVISION	1

BETWEEN :	GOODMAN FIELDER INDUSTRIES LIMITED trading as MEADOW LEA FOODS
Applicant

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AND :	S A OLIVE OIL	CO PTY
LIMITED Respondent

CORAM :	WILCOX J
PLACE :	SYDNEY
DATE :	27  JANUARY 1988

EXTEMPORE REASONS FOR JUDGMENT

The application which is made today in this case is

for a grant of an interlocutory order to restrain the

respondent from contlnulng to market a product which it puts

out under the name of "Olio". It is said on behalf of the

I	applicant that this conduct by the respondent infringes	the
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I	applicant's trade mark, registered under	the Trade Marks Act	_ i
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I 1955, In the word "016" . It is further said that the conduct

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of the respondent constitutes conduct in breach of s.52 of the I .

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Trade Practices Act 1974.

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There has been debate as to whether there is a

serlous question to	be tried on either or both of these
matters.	I am of the opinlon that there is a serlous
question.	I do not think that it is appropriate for me to

discuss the nature of the evidence or to indicate any view as to the strength of the applicant's case on these matters. That

is a matter best deferred until the final hearing. It may be

that the applicant's stronger case arises under the Trade

Marks Act rather than under the Trade Practices Act,	but it is
possible that the applicant	has a case under both of these

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Acts or indeed under neither of them.	I merely say that I
think that there is a serious question as to whether there	is

conduct of the respondent giving rise to some rights in the

applicant.	To my mind the real question for determlnation 1s	, .
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the appropriate course to be taken by the Court, having regard

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to the balance of convenience.

The evidence indicates that the respondent devlsed

its label over a period of some months in 1987.	In October
1987 application was made by the respondent for registration

of the word "Olio" as a trade mark. At that time the patent

attorneys acting for the respondent	indlcated that there may
be opposition because of the applicant's registered trade mark	i ..
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"016". However, there was no resolutlon of that question and , .

the application for registratlon has yet to be determined.

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It further appears that, In early December 1987, it came to the attentlon of Mr M L Savige, the State Sales Manager of Eta Food Services, which is a dlvlsion of the applicant company, that the respondent had produced a can in	I .
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the form complained of. This occurred because Mr Savige was vlslting Mr Rosetto, the Managlng Director of the respondent, In connection with the supply by Eta of bulk liquid oil, this being the oil, as I understand the posltion, whlch was then to
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be marketed by the respondent in the subject cans under	the
name "Olio".	Mr Savige observed to Mr Rosetto that the
package looked very similar to	that used for the applicant's

packaged "01;" o i l . He says that Mr Rosetto made no comment. He subsequently mentioned this matter to blr Stewart Vohmann, who is the Retail Sales Manager for the Meadow Lea division of

the applicant -- Meadow Lea being the division directly
concerned with the sale of "016" oil -- and, at Mr Vohmann's

suggestion, Mr Savige obtalned from Mr Rosetto one of the

cans. The exact date when this was supplled does not appear,

but it appears to have been elther in early or mid December.	. ,
Mr Savige sent the can on to	Mr Riley at the head office of

Eta Food Services In Sydney, who apparently received	it on
Christmas Eve.	I am a llttle puzzled as to the apparent lapse

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of time in Mr Rlley receiving the can but, In the event, no	, '
complaint was made untll	a letter was despatched on 14

January. This was received on the following day and, over the

next week, correspondence was exchanged between the parties

and, in the case of the	applicant, its solicitors, leading to
the filing of thrs Application	on 22 January.

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The parties have agreed that the matter can be made

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ready for final hearing withln a short tune. I have indicated

that it would be possible for the final hearing to take place

on 23 to 25 March and I understand that this is sultable to

l the parties.

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The respondent states that it would be prepared to .. .

undertake to the Court to keep full records of all sales made

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pending the final hearlng. As counsel for the applicant

polnts out, such an undertaking does not necessarily, or perhaps even normally, cover the problem of an applicant who

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finds its trade affected by conduct of a respondent. Even

though the respondent may not gain trade, damage can be done

to the goodwill and reputation of an applicant.	I accept this
as a general proposltlon, but at the same	time I have to bear
in mind the position in which the respondent	would be placed

if an order were made. It is true, as counsel for the

applicant says, that the order would not directly prevent the respondent marketing 011 in 750 millilitre containers but, in

a practical sense, it would do so.	It would take some time --
one would assume at least a few weeks -- for the respondent to
design and have manufactured alternatlve packaging.	There

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would necessarily be an hiatus in its selling campaign and the

change in packaging, part.lcularly if there was subsequently a

change back as a result of success by the respondent at the

final hearlng, would be likely to cause confusion to customers

and some damage to the respondent.

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I am, therefore, placed in the position in which any course which is taken might disadvantage

the party against

whom it is directed, partlcularly if that party is ultimately

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successful. I think, in the clrcumstances, that I ought not

to make any interlocutory order restrainlng the respondent
from trading, pending the final hearing. I do so because It
seems to me that the consequences for the respondent of such

an order are potentially quite drastic. It

would be very

difficult for the respondent to quantify and prove its damage if it were forced to discontinue a marketing campaign at this

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stage.	I
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I am very strongly influenced in taking that view by the delay which has occurred.

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It is unfortunate that the

complaint took so long.	I do not fully understand the
reasons. It may be that no individual bears the blame for the delay and I have in mind, of course,	that Christmas
intervened.	Notwithstanding those matters,. it seems to me

that the applicant's officers could have moved much more

quickly than they did.	It seems that they knew the form of
the can some time around the middle of December and, to my

mind, it would have been appropriate for them to take some steps to resolve the matter, at least on an interim basis,

before Christmas. As it happened, durlng the period of the

delay, action was taken	by the respondent's marketing	!
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consultants, Barlna Marketing Services Pty Limited, in

connection with the promotion of the respondent's product.

How slgnlficant this is in terms of either effort or	result
does not appear,	but it seems to me quite posslble that the

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period was of some Importance. Had the respnndent had more
tlme to deal with today's affidavit, I think that I would have

demanded a higher degree of proof of the disadvantage, but I

bear in mind that the Appllcation was	served only last Friday
and that the two intervening	week days have been public
holidays In South Australia, where	the respondent is located.
I can only go on	impression, and my impression is that the

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period of delay has been at a significant time from the	!
respondent's polnt of new.

Having regard to all of those matters, I think the

appropriate course is for me to accept the undertaking to the

Court whrch I will ask counsel to formulate and formally to

give and, providing that that undertaklng 1s glven, to make

no further order other than	to fix a hearing date and to make
the necessary directions.	I will reserve liberty to the

parties to apply in the case of some change in the situation

in the meantime.

I certify this and the five (5)

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precedlng pages to be a true copy of

the Reasons for Judgment of
his Honour Justice	Wilcox.
Associate:  Date :

Counsel	for	the Applicant:	Mr T F Bathurst QC with
Mr G 0 L Reynolds i

Solicitors for the Applicant:	Dawson Waldron
Counsel for the Respondent:	Mr C S Leahy

Solicitors for the	Respondent:	Sly and Russell
Date(s) of hearing:	27 January 1988  I .

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