Moons Products Pty Ltd v Herbs of Gold Pty Ltd

[1991] FCA 573

Re: MOON'S PRODUCTS PTY. LTD.; ROBERT DUNCAN HOWELL and KAYE LYNETTE HOWELL
And: HERBS OF GOLD PTY. LIMITED
No. Q G104 of 1991
FED No. 573
Trade Practices
21 IPR 577

COURT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Pincus J.(1)

CATCHWORDS

Trade Practices - misleading or deceptive conduct - whether use of name "Celery 2000+" misleading or deceptive where earlier product named "Celery 1600+" - use of word "Celery".

Trade Practices Act 1974, s.52

HEARING

BRISBANE

#DATE 18:9:1991

Counsel for the applicants: Mr D.R. Cooper

Solicitors for the applicants: Lees Marshall and Warnick

Counsel for the respondent: Mr R.J. Douglas

Solicitors for the respondent: Holmans

ORDER

Upon the respondent by its counsel undertaking, until trial of this application or further earlier order, to:-

(a) maintain a written account recording the number of

units of the product "Eco-herbs Celery 2000+", "Celery 2000 Plus", "Celery Seed 2000+" or "Celery Seed 2000

Plus" sold by the respondent to any third party in the Commonwealth of Australia together with a record of

the price of each unit sold;

(b) file in the Court by the 15th day of each month an

affidavit by or on behalf of the respondent setting

forth the number of units of the said product sold in the Commonwealth of Australia in the previous calendar month and the price obtained in respect thereof;

the application for interlocutory injunctive relief is dismissed.

The costs of the application for interlocutory injunctive relief be the respondent's cost in the cause.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

This is an application for an interlocutory injunction in a suit alleging passing off and breach of s.52 of the provisions of the Trade Practices Act 1974. The applicants' case is that the respondent has unlawfully put on the market what is said to be an extract of celery under the name "Celery 2000+", in imitation of the applicants' product which is called "Celery 1600+". These extracts are claimed to be capable of alleviating the symptoms of certain diseases.

1. Each of the applicants, on the one hand, and the respondent, on the other, has spent significant sums in advertising its product, but on the evidence, the respondent has spent considerably more. Each of the products came on the market comparatively recently, but the applicants' was first in the field. In an affidavit of Mr R.D. Howell, one of the second applicants, he explained that the applicants formed an association with one Paul Sweeney and that the "first commercial quantity of the product" was produced in or about early February 1991. At the same time, a "low-key" publicity campaign was begun. The respondent's product came on the market in May 1991.

2. It is desirable to observe, at the outset, that the bottles in which the two products are sold look quite different. They are different in size and in colour and the lettering is different. Also, the respondent's label has upon it, above the words "CELERY 2000+", the expression "ECO-HERBS" in lettering of similar conformation and size, but different colour. Above the words "CELERY 1600 +" on the applicants' bottle, there is an ellipse, containing a small emblem and the word "MOONS".

3. In short, no-one could possibly mistake the two bottles.

4. There is evidence which was read to suggest confusion. An example is an affidavit of Lisa Perini who says that she recently went into a health food shop to purchase a bottle of Celery 1600+. When she asked for that, the member of the staff explained that the shop no longer stocked Celery 1600+, but had another better, stronger and cheaper product, namely Celery 2000+. In my opinion, that evidence does not assist the applicant. There is also an affidavit from P.J. Kent, who works in a business distributing health food products. What that deponent principally says is that there have been a number of inquiries concerning Celery 2000+ and, in each case, the customer has said words to the effect:
   

"I have been told by 'Health Minders' the distributors of a product called 'Celery 2000+' that it is stronger than 'Celery 1600+', that it supersedes 'Celery 1600+', is cheaper and that 'Celery 1600+' is about to go off the market because it is a bad product".

1. Again, this does not appear to assist the applicants in the present application, which is based on the proposition that by using the name "Celery 2000+" the respondent might induce members of the public to think that it is the same product as, or associated with, the applicants' product.

2. The respondent's case is that the use of a name similar to the applicants' is purely a coincidence. It is said that the choice of "2000+" as an addendum to the word "Celery" is connected with a measure of the strength of the respondent's extract. Without going into detail, I must say the circumstances are such that there is a triable issue on that question, but the difficulty the applicants have is, in my opinion, demonstrating that there is any significant likelihood of confusion.

3. Mr David Cooper, for the applicants, referred me to a number of authorities, of which I think the most helpful to the applicants is Abundant Earth Pty. Ltd. v R and C Products Pty. Ltd. (1985) 7 FCR 233. The respondent's product there was an aerosol oil sold under the trade mark "Pure and Simple". The appellants used the same name for imported mustard and that was held to be unlawful. The point was made, of course, that one should be slow to accord a monopoly in two ordinary English descriptive words: see pp 238, 239. The case must surely be close to the borderline. Here, there is no suggestion that the word "Celery" can be expropriated by the applicants, nor is there any solid evidence that the applicants had established a considerable reputation for their product under the name "Celery 1600+". It has to be said in favour of the applicants that there is evidence that their business has fallen off sharply since the respondent's product came on the market, but that, of course, is explicable by ordinary competition.

4. There is a considerable amount of discussion and a number of documents included in the material relating to such subjects as whether either of the competing substances is appropriately formulated, the respective merits of the constituents and matters of that sort. It is, in my view, unnecessary to reach a conclusion on the issues raised by that material, but I should say, lest the Court's decision be misunderstood, that there is nothing before me on which any rational person could reach a conclusion as to whether either product produces any beneficial result, when ingested.

5. I feel obliged to remark that the material filed contains a deal of information of marginal relevance. An example is that with the affidavit of K.H. Fraser is a copy of a lengthy "Theurapeutic Goods Advertising Code", the terms of which cannot possibly be of any assistance to the Court in determining the matter before it. If it is necessary to tax the costs of this application, attention will no doubt be given by the Registrar to the question whether the inclusion of such material is reasonably necessary. There is reason to think that on occasions insufficient attention is given to ensuring that affidavits are concise and that only material of real relevance is included.

6. The respondent offers to undertake to keep an account of its sales of "Celery 2000+" pending the trial. The applicants' case is, on this material, an arguable one but rather weak. The absence of strong evidence of confusion, the dissimilarity of the two get-ups, the fairly thin evidence of the extent of recognition of the name "Celery 1600+" and, most of all, the fact that the applicants' name consists mainly of an ordinary English word - all combine to produce a case which seems unlikely to succeed at the trial. So the convenient course, in my opinion, is to accept the respondent's offer to keep an account pending trial. On that basis, the application for interlocutory relief will be dismissed and the costs will be the respondent's costs in the proceedings.