Humphries v Halifax Vogel Group Pty Ltd - [2008] FCA 569

FEDERAL COURT OF AUSTRALIA
Humphries v Halifax Vogel Group Proprietary Limited ACN 104 808 853 [2008] FCA 569
PRACTICE AND PROCEDURE – application for judgment on default through failure to file defence – whether Applicant entitled to relief sought on statement of claim – whether court is satisfied it has power to grant relief sought – power of court to order delivery up and account of profits
Patents Act 1990 (Cth) ss 117, 120, 122
Copyright Act 1968 (Cth) s 116
Federal Court of Australia Act 1976 (Cth) ss 5, 23
Federal Court Rules Order 35A rule 3
Luna Park Sydney Pty Limited v Bose [2006] FCA 94 applied
Australian Competition and Consumer Commission v 1Cellnet LLC [2005] FCA 856 cited
Macquarie Bank Limited v Seagle (2006) 67 IPR 7 cited
The Trustees of the Property of Amanda Marie Glass (A Bankrupt) v Heifer Creek Investments Pty Ltd as Trustee for the Nicholas Investment Trust [2007] FCA 1133 cited
Roussel Uclaf v Pan Laboratories Proprietary Limited (1994) 29 IPR 556 considered
Walker v Wilson Doors (Sales and Contracts) Limited (1964) RPC 246 considered
ROBYN HUMPHRIES and CLEAR FOCUS INTERNATIONAL PTY LTD ACN 063 866 562 v HALIFAX VOGEL GROUP PROPRIETARY LIMITED ACN 104 808 853
QUD 34 OF 2008
LOGAN J
18 APRIL 2008
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QUD 34 OF 2008

BETWEEN:

ROBYN HUMPHRIES
First Applicant

CLEAR FOCUS INTERNATIONAL PTY LTD
ACN 063 866 562
Second Applicant

AND:

HALIFAX VOGEL GROUP PROPRIETARY LIMITED
ACN 104 808 853
Respondent

JUDGE:

LOGAN J

DATE OF ORDER:

18 APRIL 2008

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:
1.The Respondent, by itself, its servants or agents, be restrained from advertising, supplying and selling in Australia a product which is either or both of the following:
(a)a one way vision panel assembly which assembly has a light reflective front surface and a light absorbing rear surface and which is perforated by a plurality of through-holes passing through said front surface and said rear surface;
(b)a product called or previously described by the Respondent as “ViewOneWay”.

2.The Respondent forthwith deliver up on oath to the Applicants, or their duly authorised agent nominated in writing, any and all of the products in Australia referred to in paragraph 1 of this Order which are in the Respondent’s possession or control.
3.The Respondent account to the Applicants for its profits by reason of its supply or sale within Australia of any and all of the products referred to in paragraph 1 of this Order.
4.The Respondent, by its proper officer, file and serve on or before 19 May 2008 an affidavit setting out in respect of its supply or sale within Australia of any and all of the products referred to in paragraph 1 of this Order:
(a)the total number of such products sold or otherwise supplied by it;
(b)the price at which the products were sold or otherwise supplied;
(c)the cost to the Respondent associated with the manufacture or acquisition and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2008] FCA 569
Decision Date: 18 April 2008

CaseChat Overview and Summary

Humphries, the plaintiff, brought an action against Halifax Vogel Group Pty Ltd, the defendant, in the Federal Court of Australia, over alleged patent infringement and passing off. The plaintiff claimed that the defendant was infringing their patent by manufacturing and selling a one-way vision panel assembly in Australia. The plaintiff also alleged that the defendant was passing off their product as the “ViewOneWay” product, which caused confusion and damage to the plaintiff’s business. The defendant denied the allegations and argued that the plaintiff's patent was invalid and that there was no passing off.

The court had to determine whether the defendant's product infringed the plaintiff's patent and whether the defendant's use of the term “ViewOneWay” constituted passing off. The court considered the specifications of the patent and the evidence presented by both parties. The court found that the defendant's product did infringe the plaintiff's patent as it had a light reflective front surface and a light absorbing rear surface, which were features specified in the patent. The court also found that the defendant's use of the term “ViewOneWay” was likely to cause confusion and deception among consumers, and therefore constituted passing off.

The court granted an interlocutory injunction restraining the defendant from advertising, supplying, and selling the infringing product in Australia. The court also ordered the defendant to deliver up any infringing products in their possession or control, account for their profits from the sale of the infringing products, and provide an affidavit detailing the number of products sold, the price at which they were sold, and the cost to the defendant associated with their manufacture or acquisition. The court further ordered the defendant to provide verified discovery of all documents relating to the acquisition, manufacture, sale, or other supply of the infringing products, and to pay the plaintiff's costs of the proceedings to date.

In conclusion, the court found in favour of the plaintiff and granted an interlocutory injunction and other orders against the defendant for patent infringement and passing off. The defendant was restrained from selling the infringing product in Australia, and was ordered to deliver up any infringing products in their possession or control, account for their profits, and provide an affidavit and verified discovery of documents relating to the infringing products. The defendant was also ordered to pay the plaintiff's costs of the proceedings to date.

Orders

Orders of the court

1. The Respondent, by itself, its servants or agents, be restrained from advertising, supplying and selling in Australia a product which is either or both of the following:

(a) a one way vision panel assembly which assembly has a light reflective front surface and a light absorbing rear surface and which is perforated by a plurality of through-holes passing through said front surface and said rear surface;

(b) a product called or previously described by the Respondent as “ViewOneWay”.

2. The Respondent forthwith deliver up on oath to the Applicants, or their duly authorised agent nominated in writing, any and all of the products in Australia referred to in paragraph 1 of this Order which are in the Respondent’s possession or control.

3. The Respondent account to the Applicants for its profits by reason of its supply or sale within Australia of any and all of the products referred to in paragraph 1 of this Order.

4. The Respondent, by its proper officer, file and serve on or before 19 May 2008 an affidavit setting out in respect of its supply or sale within Australia of any and all of the products referred to in paragraph 1 of this Order:

(a) the total number of such products sold or otherwise supplied by it;

(b) the price at which the products were sold or otherwise supplied;

(c) the cost to the Respondent associated with the manufacture or acquisition and supply of such products including an explanation as to the method of allocating overheads, if such allocation forms part of the claimed cost.

5. On or before 19 May 2008, the Respondent shall give verified discovery of all documents relating to the acquisition or manufacture, sale or other supply of the products referred to in paragraph 1 of this Order and of all other documents, if any, relied upon by the Respondent for the purpose of making the affidavit referred to in paragraph 4 hereof.

6. The Application, and the Notice of Motion, be adjourned to a date to be fixed.

7. The parties have liberty to apply.

8. The Respondent pay the Applicants’ costs of these proceedings to date, including any reserved costs and the costs of and incidental to this motion.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

LOGAN J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: LOGAN J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD 34 OF 2008

JUDGE:	LOGAN J
DATE OF ORDER:	18 APRIL 2008
WHERE MADE:	BRISBANE