LED Technologies Pty Ltd v Elecspess Pty Ltd (No 2) - [2009] FCA 141

FEDERAL COURT OF AUSTRALIA
LED Technologies Pty Ltd v Elecspess Pty Ltd (No 2)
[2009] FCA 141
LED TECHNOLOGIES PTY LTD (ACN 100 887 474) v ELECSPESS PTY LTD (ACN 104 535 597), ADVANCED AUTOMOTIVE AUSTRALIA PTY LTD (ACN 005 955 948), REN INTERNATIONAL PTY LTD (ACN 115 026 438), OLSEN INDUSTRIES PTY LTD (ACN 098 385 730), PETER OWEN MORRISON, ANTHONY JAMES KELLER and LAWRENCE ALFRED ARMSTRONG
VID 316 of 2007
GORDON J
24 FEBRUARY 2009
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 316 of 2007

BETWEEN:
LED TECHNOLOGIES PTY LTD (ACN 100 887 474)
Applicant

AND:
ELECSPESS PTY LTD (ACN 104 535 597)
First Respondent

ADVANCED AUTOMOTIVE AUSTRALIA PTY LTD (ACN 005 955 948)
Second Respondent

REN INTERNATIONAL PTY LTD (ACN 115 026 438)
Third Respondent

OLSEN INDUSTRIES PTY LTD (ACN 098 385 730)
Fourth Respondent

PETER OWEN MORRISON
Fifth Respondent

ANTHONY JAMES KELLER
Sixth Respondent

LAWRENCE ALFRED ARMSTRONG
Seventh Respondent

AND BETWEEN:

ELECSPESS PTY LTD (ACN 104 535 597)
First Cross-Claimant

REN INTERNATIONAL PTY LTD (ACN 115 026 438)
Second Cross-Claimant

OLSEN INDUSTRIES PTY LTD (ACN 098 385 730)
Third Cross-Claimant

and:

LED TECHNOLOGIES PTY LTD (ACN 100 887 474)
First Cross-Respondent

ANTHONY OTTOBRE
Second Cross-Respondent

AND BETWEEN:

PETER OWEN MORRISON
Fourth Cross-Claimant

ANTHONY JAMES KELLER
Fifth Cross-Claimant

LAWRENCE ALFRED ARMSTRONG
Sixth Cross-Claimant

and:

LED TECHNOLOGIES PTY LTD (ACN 100 887 474)
First Cross-Respondent

ANTHONY OTTOBRE
Second Cross-Respondent

JUDGE:

GORDON J

DATE OF ORDER:

24 FEBRUARY 2009

WHERE MADE:

MELBOURNE

OTHER MATTERS

Upon each of the First to Fourth Respondents undertaking by their Counsel to set aside, retain and preserve until further order all base portions of the Infringing Products (as defined in para 3 of the Orders below) in their possession, custody, power or control.
THE COURT DECLARES THAT:
1.The Condor product with the code number TL80RA offered for sale and sold by each of the First to Fourth Respondents infringes the Applicant’s registered Australian Design no. 302359.
2.Each of the Condor products with the code numbers:
(a)TL80RRA / TL80ARR;
(b)TL80ARW;
(c)TL100ARR;
(d)TL100RAA;
(e)TL100ARW;
(f)TL125AAR / TL125RRA; and
(g)TL125ARW,

offered for sale and sold by each of the First to Fourth Respondents infringes the Applicant’s registered Australian Design no. 302360.
THE COURT ORDERS THAT:
3.The First, Second, Third, Fourth, Sixth and Seventh Respondents, whether by themselves, their servants or agents or otherwise howsoever be restrained during the term of the Applicant’s registered Australian Design nos. 302359 and 302360 (“the Registered Designs”) from infringing the Applicant’s monopoly in the Registered Designs and, in particular, from directly or indirectly making, importing, selling or offering for sale any automotive lamps to which any or all of the Registered Designs, or any design that is identical to, or substantially similar in overall impression to the Registered Designs, have been applied in infringement of the Applicant’s monopoly in the Registered Designs (“the Infringing Products”).
4.The First, Second, Third, Fourth, Sixth and Seventh Respondents pay to the Applicant damages in the sum of $200,000 for infringement of the…

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: [2009] FCA 141
Decision Date: 24 February 2009

CaseChat Overview and Summary

The case of LED Technologies Pty Ltd v Elecspess Pty Ltd (No 2) involved the Applicant, LED Technologies, and multiple Respondents, with a dispute centred around the infringement of registered designs and subsequent damages. The matter was heard in the Federal Court of Australia. LED Technologies sought a declaration of infringement and damages for the Respondents' use of designs that were identical or substantially similar to the Applicant's registered designs. Additionally, the case included cross-claims between some of the Respondents.

The primary legal issue before the court was whether the Respondents were entitled to a stay of the final orders pending the outcome of their appeal. The Applicant argued that the Respondents had not demonstrated any compelling reason for a stay, and in fact, the Corporate Respondents had offered an undertaking that effectively mooted the need for a stay. The court had to determine whether the undertaking provided by the Corporate Respondents was sufficient to negate the necessity for a stay and if the appeal would be rendered nugatory without one.

The court found that the Respondents had not provided sufficient grounds for a stay, especially in light of the undertaking offered by the Corporate Respondents. This undertaking, in the form of a final order, effectively prevented the sale of the infringing products, thus addressing the core concern that the appeal would be rendered nugatory without a stay. The court concluded that a stay was unnecessary and refused to grant it. The court emphasised that an application for a stay could still be made to the Full Court if appropriate grounds were presented.

In conclusion, the court dismissed the application for a stay and ordered that the declarations and orders as set out in the undertaking be enforced. The specific orders included restraining certain Respondents from infringing the Applicant’s designs, payment of damages by the Respondents to the Applicant, dismissal of the Applicant’s claims against one Respondent, and orders regarding costs and cross-claims between the Respondents. The court also provided for a retention of a sum of money in trust to cover potential costs pending further orders.

Orders

Orders of the court

3. The First, Second, Third, Fourth, Sixth and Seventh Respondents, whether by themselves, their servants or agents or otherwise howsoever be restrained during the term of the Applicant’s registered Australian Design nos. 302359 and 302360 (“the Registered Designs”) from infringing the Applicant’s monopoly in the Registered Designs and, in particular, from directly or indirectly making, importing, selling or offering for sale any automotive lamps to which any or all of the Registered Designs, or any design that is identical to, or substantially similar in overall impression to the Registered Designs, have been applied in infringement of the Applicant’s monopoly in the Registered Designs (“the Infringing Products”).

4. The First, Second, Third, Fourth, Sixth and Seventh Respondents pay to the Applicant damages in the sum of $200,000 for infringement of the Applicant’s monopoly in the Registered Designs, such payment to be made by 25 March 2009.

5. The Applicant’s claims against the Fifth Respondent in its Second Further Amended Application and Fourth Amended Statement of Claim filed 5 May 2008 be dismissed and the Applicant pay the Fifth Respondent’s costs of those claims incurred after 10 April 2008.

6. The First, Second, Third, Fourth, Sixth and Seventh Respondents pay the Applicant’s costs of those claims under the Designs Act 2003 (Cth) in the Applicant’s Second Further Amended Application and Fourth Amended Statement of Claim filed 5 May 2008.

7. The Applicant pay the First, Second, Third, Fourth, Sixth and Seventh Respondents’ costs of those claims under the Trade Practices Act 1974 (Cth) in the Applicant’s Second Further Amended Application and Fourth Amended Statement of Claim filed 5 May 2008.

8. The application by the First to Third Cross Claimants to further amend their Amended Cross Claim dated 9 May 2008 is dismissed, that cross claim is otherwise dismissed and those Cross Claimants pay the Cross Respondents’ costs of that cross claim.

9. The Amended Cross Claim of the Fourth, Fifth and Sixth Cross-Claimants dated 25 July 2008 is dismissed and those Cross Claimants pay the Cross Respondents’ costs of that Cross Claim.

10. Subject to the Applicant’s solicitors, Griffith Hack, retaining the sum of $75,000 in the Griffith Hack Trust Account, until further order of the Court, as security for the Fifth Respondent’s costs of the Second Further Amended Application and Fourth Amended Statement of Claim filed 5 May 2008, Griffith Hack is released from the undertaking given by letter dated 10 July 2008, a copy of which is attached to this Order.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

GORDON J

It is now well established that the grant of a stay does not require special or exceptional circumstances and a court will ordinarily grant a stay where the appeal would otherwise be rendered nugatory: Alexander v Cambridge Credit Corporation Ltd (1985) 2 NSWLR 685 at 693 and 695. Counsel for the Applicant submitted that none of the Respondents had provided any, let alone a sufficient, basis for a stay and that the Applicant should have the fruits of the litigation. In my view, I agree. The Respondents did not identify any reason why in the absence of a stay the appeal would be rendered nugatory. In fact, having regard to the form of the undertaking that was readily proffered by the Corporate Respondents regardless of the stay, at least those Respondents conceded that a stay was unnecessary. The undertaking was in the form of a final order. By its terms, it prevents the Respondents selling the Infringing Products. In those circumstances, I refuse to grant the Respondents a stay of the final orders. Of course, an application for a stay on proper material can be made to the Full Court.CONCLUSION For those reasons, upon the undertaking of the Corporate Respondents set out in para [5] above, there will be declarations and orders in the terms there set out.

Ratio Decidendi

Legal Principle Established

Established by: GORDON J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 316 of 2007

BETWEEN:	LED TECHNOLOGIES PTY LTD (ACN 100 887 474) Applicant
AND:	ELECSPESS PTY LTD (ACN 104 535 597) First Respondent ADVANCED AUTOMOTIVE AUSTRALIA PTY LTD (ACN 005 955 948) Second Respondent REN INTERNATIONAL PTY LTD (ACN 115 026 438) Third Respondent OLSEN INDUSTRIES PTY LTD (ACN 098 385 730) Fourth Respondent PETER OWEN MORRISON Fifth Respondent ANTHONY JAMES KELLER Sixth Respondent LAWRENCE ALFRED ARMSTRONG Seventh Respondent
AND BETWEEN:	ELECSPESS PTY LTD (ACN 104 535 597) First Cross-Claimant REN INTERNATIONAL PTY LTD (ACN 115 026 438) Second Cross-Claimant OLSEN INDUSTRIES PTY LTD (ACN 098 385 730) Third Cross-Claimant
and:	LED TECHNOLOGIES PTY LTD (ACN 100 887 474) First Cross-Respondent ANTHONY OTTOBRE Second Cross-Respondent
AND BETWEEN:	PETER OWEN MORRISON Fourth Cross-Claimant ANTHONY JAMES KELLER Fifth Cross-Claimant LAWRENCE ALFRED ARMSTRONG Sixth Cross-Claimant
and:	LED TECHNOLOGIES PTY LTD (ACN 100 887 474) First Cross-Respondent ANTHONY OTTOBRE Second Cross-Respondent

JUDGE:	GORDON J
DATE OF ORDER:	24 FEBRUARY 2009
WHERE MADE:	MELBOURNE