Lewis, T.A. & S.P. v W.D. & V.J. Hambley Pty Ltd

[1987] FCA 491

IN THE FEDERAL COURT ) NOT INTENDED FOR GENERAL DISTRIBUTION

OF AUSTRALIA	)
WESTERN AUSTRALIA	1
DISTRICT REGISTRY	)
GENERAL DIVISION	) No. WAG 79 of 1987

B E T W E E N :	TREVOR ALAN LEWIS and
SHARYN PATRICIA LEWIS

Applicant

and

W.D. & V.J. HAflBLEY PTY LTD

First Respondent

MAL JONES & CO. PTY LTD

Second Respondent

WARREN DUDLEY HAMBLEY

Third Respondent

I CORAM : FRENCH J. 30 JULY 1987

EX TEMPORE REASONS FOR JUDGMENT

This is a claim for urgent Interlocutory relief in an

applicatlon in which the appllcants seek permanent injunctions

under the provisions of the Designs Act 1906 and the Trade promotion by the respondents of a device known as the warrie

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; That devlce is said by the applicants to fall within the

scope of the monopoly conferred upon them in relatlon to a like

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i	device,	the	subject	of Australian	Design	registration	number
96858.

The causes of action relled upon are:-

(1) infrlngement of the registered design;

(ii) somewhat obliquely, contravention, associated with that infringement, of s.52 of the Trade Practlces

-	Act.
No statement of claim has been filed but there	does

arise from the affldavits put before the court by the applicants, an allegatlon that by selllng the products said to infrlnge their registered design, the respondents impliedly represent that they

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are entitled to sell the products contrary to the monopoly, which	L
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representation is mlsleading and deceptive.

Certain promotional material put out by the first

respondent in relation to the Warrie Crutching Frame conveys the impression that there i s already in existence a registered design

in relation to that article. The truth is that an application for

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a registered design has been made in respect of the respondents‘

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product but not yet determined. Other promotional material put

out by the first respondent discloses	that design registration is
pending.

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3 .

I thlnk, havlng regard tu Lhe naLure of the rellef that

1s sought, that issue rather falls into the background, for the

relief sought seeks to restraln the respondents from:-

(1) selllng or offerlng or keeping for sale or hiring

or offering or keeping for hire the Warrie

Crutching Frame:

(ii) applying the deslgn of the apparatus to any back

support to be worn by shearers or:

(iil)displaying, demonstratlng, presenting or promoting

the Warrie Crutchlng Frame by way of advertlsement,

any prlnted material, brochure, public or private,

talk or otherwise, including but not limited to,

display or demonstratlon at the Hamilton Fleld Days

In Victoria on 3 and 4 August 1987.

So the relief sought prima facle goes considerably wlder

than the contravention of s.52 or the Designs Act that might be

raised on the basls of the statement contained In the promotional

material put out by the first respondent.

I approach the question of the grant of interlocutory

relief therefore, on the basis that the case for the applicants

rests, In relatlon to this relief, on the allegation of the deslgn

infringement and the contravention of s.52 associated wlth the

very conduct that constitutes that infringement.

Mr Owen-Conway for the respondents, has raised at the

threshold a jurisdictional questlon as to whether or not the s.52

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claim is raised bona fide on the materials put to the court so

far, or whether it is, as ~t were, merely tacked on to the designs

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lnfrlngement claim as a way of attracting the ~urisdiction of	this
court.

I would not at this stage dispose of the motion on the basls of a finding that there was no ~urisdictlon	to entertain the
6.52 clalm and the assoclated deslgns claim.

I am not satisfled that the s.52 claim as I have

identified it, is not raised bona flde and that it does not

constitute a substantial, in the sense of non-trlvial, element of

the applicants' clalm. So I deal with this motion for

interlocutory relief on the basis that the court does have

~urlsdictlon. I emphasise in saying that, as 1s so often the case

in applications for urgent interlocutory relief, my determination

In that respect is provisional and certainly does not foreclose

argument on the issue of ~urisdict~on at some later tlme.

The guestlon then, is whether or not the interlocutory relief sought ought to be granted. It is conceded by the respondents that there is a serious question whether the product known as the Warrie Crutching Frame falls within the scope of the applicants' monopoly. If that be so, then one can say that there

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may well be at least an arguable question as to whether associated

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with that conduct, there 1s a contravention of s.52. To say that !-

a serious questlon is made out does not allow the court simply to	l~
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turn to the balance of convenience to see where it lies.

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As the Full Court sald ln Bullock and Others v The

Federated Furnlshing Trades Soclety of Australasla and Others (NO.

- 1) (1985) 5 FCR 4 6 4 at 472:-

"...an apparently strong claim may lead a court more

readily to grant an injunction when the balance of

convenience 1s falrly even. A more doubtful clalm

(which nevertheless ralses "a serious question to be

l	tried") may still attract interlocutory relief If there
1s a marked balance of convenience In favour of It."

so the two questlons - that is, whether there is a

serlous question to be trled and where the balance of convenience

lles - are not independent. In looking at the balance of

convenience one has to give consideratlon to the strength of the

question that is raised by way of the assertion of the applicant's

cause of actlon. There is another element and that is the

question of the adequacy of damages as a remedy if interlocutory

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relief be refused. I. I _

As counsel for the respondents rightly put it, that cuts	L .
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two ways. Firstly, one has to consider the adequacy of damages to compensate the applicants ~n the event that the conduct 1s	.,
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allowed to occur and they later prove to be successful in thelr

substantive application. Secondly, there is the question of their

abillty to compensate the respondents for any	loss incurred by	, .
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reason of the imposition of lnterlocutory relief in the event that	r
they are ultimately unsuccessful in the applicatlon.

6.

In this case, although they have glven an undertaking as

to damages, nothlng is known of thelr flnancial substance or thelr

abllity to meet any loss that mlght be Incurred by the respondent.

Havlng looked at their registered esign, or the

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representations whlch form part of their deslqn registration, and having loooked also at the form of the respondents' product, the Warrie Crutchlng Frame, sald to lnfrlnge that design, ~t is

apparent that there are similarlties and differences.

It would, no doubt, be a question to be litlgated In

due course, whether the dlfferences are merely colourable, whether

or not the respondents' design 1s a fraudulent imitation of the

appllcants' .

At thls stage I say no more than that the existence of

points of difference polnts to an argument available to the

respondents as to whether thelr product lnfringes at all the

design registration secured by the appllcants.

The s . 5 2 question that I have identifled as belng

associated with the deslgn lnfrlngement clalm is not an easy one. As I think Mr Pullln indlcated, there is no reported case dealing

with the proposltion that by Infringing a statutory intellectual property monopoly by selling products which are said to infrlnge

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that monopoly, one conveys an implied representatlon of an

entitlement to sell them, carrying wlth it the possibility of a

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contraventlon of s.52.	That 1s a serious questlon, but it is not
free from doubt.

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I think It desirable, therefore, at thls stage to say no

more than that, havlng regard to the nature of the arguments which

I i t w ~ l l be necessary for the appllcants to mount in order to

succeed, the posslbillties of argument on the other slde, the

absence of any evidence of their ablllty to meet their undertaking t

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I	and the arrangements that have already been made by the first
l	respondent In relatlon to partlcipatlon at the Hamilton Fleld Days
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I	in Victorla, and taking all those factors together, it would be
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Inappropriate at thls stage to grant the interlocutory relief that
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is sought.
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That 1s not to say that a further appllcation may not be

made at some later time. But on the materlals presently before me

and having regard to the submlssions that have been made, I will

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dismiss the clalm.

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I certlfy that this and the preceding

six (6) pages are a true and correct

copy of the Reasons for Judgment herein

of his Honour Mr Justice French.

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Counsel for the Applicants: Elr C.J.L. Pullin

Sollcitors for the Applicants: Jackson McDonald

Counsel for the Respondents: Nr S. Owen-Conway wlth Mr R.

McCormack

Sollcltors €or the Respondents: flessrs. Corser & Corser

Date of Hearing: 30 July 1987

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Date of Judgment: 30 July 1987	i
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I t o the provis ions of Rule 38 ,

I n t h e r e s u l t , t h e C l a i m a n t has fa i led t o make good

a n y p a r t o f h i s case. It is , the re fo re , unnecessa ry fo r u s t o

dea l w i th the submiss ion made, on behalf of the respondents,

t ha t , even i f t he C la iman t had succeeded in making good h l s

a l l e g a t i o n s or' i n v a l i d i t y a n d i r r e g u l a r i t y , he was n o t as a

matter of law e n t i t l e d t o any r e l i e f o r t h e s u b m l s s i o n t h a t ,

even i f t h e C l a m a n t would otherw.rise have been e n t i t l e d t o

r e l i e f , t h e C o u r t s h o u l d , as a matter of d i s c r e t i o n , r e f u s e

it. It is a lso unnecessary t o examlne whether, i f any

i n v a l i d i t y h a d b e e n e s t a b l l s h e d , it could o r should have

been r e c t i f i e d p u r s u a n t t o the provis ions of s .171C.

The R u l e t o Show Cause must be d ischarged .

I c e r t i f y t ha t t h i s and the 23 precedlng

pages are a t rue copy of the Reasons for

Judgment of the Court .

Assoc ia te

Dated:

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