Liberation Developments Pty Ltd v Lomax Group Pty Ltd
[2018] FCA 721
•28 March 2018
FEDERAL COURT OF AUSTRALIA
Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2018] FCA 721
File number: QUD 117 of 2018 Judge: RANGIAH J Date of judgment: 28 March 2018 Catchwords: INTELLECTUAL PROPERTY – alleged infringement of patent, trademark and copyright – application for interlocutory injunctions – whether prima facie case – balance of convenience – whether damages an adequate remedy – application dismissed Cases cited: Australian Broadcasting Corporation v O’Neill (2006) 229 ALR 457
Beecham Group Limited v Bristol Laboratories Proprietary Limited (1968) 118 CLR 618
Date of hearing: 28 March 2018 Registry: Queensland Division: General Division National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Category: Catchwords Number of paragraphs: 11 Counsel for the Applicants: Mr A Franklin SC Solicitor for the Applicants: Bennett & Philp Lawyers Counsel for the Respondents: Mr T Cordner QC Solicitor for the Respondents: Interface Legal Counsel for the Cross-Respondents: Mr T Cordner QC Solicitor for the Cross-Respondents: Interface Legal ORDERS
QUD 117 of 2018 BETWEEN: LIBERATION DEVELOPMENTS PTY LTD ACN 127 681 118
First Applicant
TITAN HOARDING SYSTEMS AUSTRALIA PTY LTD ACN 166 386 303
Second Applicant
AND: LOMAX GROUP PTY LTD ACN 615 835 848
First Respondent
HOARDING IDEAS PTY LTD ACN 604 219 712
Second Respondent
MARIA LOMAX (and another named in the Schedule)
Third Respondent
AND BETWEEN: LOMAX GROUP PTY LTD ACN 615 835 848 (and another named in the Schedule)
First Cross-Claimant
AND: LIBERATION DEVELOPMENTS PTY LTD ACN 127 681 118 (and another named in the Schedule)
First Cross-Respondent
JUDGE:
RANGIAH J
DATE OF ORDER:
28 MARCH 2018
THE COURT ORDERS THAT:
1.The applicants’ claim for interlocutory relief as set out in the Originating Application dated 1 March 2018 is dismissed.
2.Costs are reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
EX TEMPORE REASONS FOR JUDGMENT
RANGIAH J:
The applicant has commenced proceedings against the respondents alleging infringement of a patent, trademark and copyright, as well as misleading and deceptive conduct, in connection with the respondents’ sale and hire of a hoarding system described as “the Lomax hoarding system”.
The application presently before the Court is for interlocutory injunctions restraining the respondents from selling or hiring the Lomax hoarding system in its current configuration, from using certain logos and from using certain written instructions relating to the hoarding system. The application for injunctions in respect of the use of the written instructions has been resolved by the giving of mutual undertakings. However, it remains necessary to determine the application for interlocutory injunctions based upon the claims of patent and trademark infringement.
In Beecham Group Limited v Bristol Laboratories Proprietary Limited (1968) 118 CLR 618 at 622–623, the High Court said that there are two main enquiries in an application for an interlocutory injunction:
The first is whether the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief. The second inquiry is whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted.
In Australian Broadcasting Corporation v O’Neill (2006) 229 ALR 457, the High Court affirmed the principles stated in Beecham Group. Justices Gummow and Hayne, referring to the passage quoted above, said at 478:
By using the phrase, “prima facie case” their Honours did not mean that the plaintiff must show that it is more probable than not that at the trial the plaintiff will succeed. It is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances preservation of the status quo pending the trial.
Having had the benefit of detailed argument upon the merits of the principal proceeding, I am satisfied that the applicants have demonstrated a prima facie case of patent and trademark infringement. It is undesirable, and in the circumstances unnecessary, to say anything more about the weakness or strength of that prima facie case.
When considering the balance of convenience it is important to examine whether the applicant would suffer irreparable harm if interlocutory injunctions are not granted, or whether damages will be an adequate remedy.
The applicant’s principal submission on this issue is that damages would be inadequate because it will be very difficult, or impossible, to properly assess its damages for the patent infringements. The applicant sells its hoardings in Western Australia, but only hires them out in the other States. In contrast, the respondent both sells and hires its hoardings in all States. The applicant says that among the customers it will lose are those who will buy the Lomax hoarding system, and that it will be very difficult to calculate how much the applicants could have earnt from hiring out its own hoardings. I do not accept that the calculation of damages will be impossible, or as difficult as suggested by the applicant. For example, the applicant sells its system in Western Australia and is obviously aware of the prices it is able to achieve for such sales, which would provide some indication of its loss.
The applicants also submit that damages will not be an adequate remedy because the corporate respondents lack the resources to pay any award of damages. I have had regard to the financial information before the Court concerning the corporate respondents. While that information is not up to date, at least in respect of the first respondent, it does not demonstrate that the corporate respondents will be unable to meet an order of damages. Further, the fourth respondent deposes that there is stock available valued at about $700,000. In the circumstances, I do not accept the applicant’s submission that the respondents will be unable to satisfy an award of damages.
The applicants seek an injunction restraining the respondents from selling or hiring the Lomax hoarding system involving the use of a support post. If the support post is not used, the applicants accept that there will be no infringement of the patent. The applicants point to material which suggests that the use of the support post is optional. The applicants submit that the fact that it is not seeking a total restraint upon the sale or hiring of Lomax hoarding system is relevant to the balance of convenience.
However, the fourth respondent deposes that its contract with a major client requires the Lomax system to comply with Australian standards, and that the system is not certified as compliant without the support post. The fourth respondent deposes that if the injunctions are granted then the business would not survive and would have to close. That evidence is supported by the evidence of an accountant. I accept that evidence.
In these circumstances, I consider that the balance of convenience favours the refusal of the interlocutory injunctions sought by the applicants, noting the undertakings given in relation to use of the written instructions. I will dismiss the interlocutory application.
I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Rangiah. Associate:
Dated: 21 May 2018
SCHEDULE OF PARTIES
QUD 117 of 2018 Respondents
Fourth Respondent:
MARK LOMAX
Cross-Claimants
Second Cross-Claimant:
HOARDING IDEAS PTY LTD ACN 604 219 712
Cross-Respondents
Second Cross-Respondent
TITAN HOARDING SYSTEMS AUSTRALIA PTY LTD ACN 166 386 303
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