Optic Express Pty Ltd v Sunglass World Pty Ltd

[1991] FCA 800

j"l)WIENT NO. .- @t\

IN THE FEDERAL COURT OF AUSTRALIA	)
NEW SOUTH WALES DISTRICT REGISTRY j	NO. NG 750 of 1991

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BETWEEN:  QPTIC EXPRESS PTY LIMITED

Applicant

AND :  SUNGLASS WORLD PTY LIMITED

Respondent

22 November 1991

REASONS FOR JUDGMENT

LOCKHART J.

This proceeding commenced less than half an hour ago and it is a motion for an interlocutory injunction by the applicant, Optic Express Pty Limited, to restrain the respondent, Sunglass World Pty Limited, from engaglng in conduct which is said to be misleading or deceptive and thus in contravention of S. 52 of the

T r a d e P r a c t i s e s A c t 1974.

The evidence that has been adduced is evidence adduced by the applicant, save for a letter fromthe respondent's solicitors to the applicant's solicitors. The case to this point has obviously been prepared quickly and the respondent has not had a chance to put on evidence itself, whatever that may be. Any statements of fact which the Court makes are based on the material before it and express no firm and certainly no final view of the Court concerning the facts, and everything I say must

be read in the light of that observation.

The applicant is a retailer of prescription glasses and sunglasses and has been engaged in such a business in Sydney for over three years. It has advertised its shops over the last three years in the electronic and print media and is at the moment engaged in a heavy advertising campaign. The applicant has a number of shops in the Sydney metropolitan area in various suburbs including shops in Chatswood and in the Macquarie Shopping Centre.

The respondent is also a retailer of sunglasses and, although there is no evidence to this effect, counsel for the respondent tells me that his instructions are that his client has a substantial business operating from over 70 shops.

It appears that both companies have shops in the Macquarie Shopping Centre and at Chatswood. Plainly, they are in competition with each other in respect of sunglasses.

The circumstances which have given rise to this case late this afternoon is that the respondent has placed at the entrance to at least two of its shops certain advertising signs, the first sign saying "ALL SUNGLASSES 50% OFF PROMOTION ENDS SATURDAY" ("the first sign"), and close by and underneath it, but yet to

a sllght extent separated from it physically, a second sign with the words "OPTIC EXPRESS" and in smaller print "WELCOME TO BUY" ("the second sign"). It is the second sign which has caused the problem today.

The applicant says that the effect of the signs which I have just mentioned would be to mislead or deceive a reasonable number of persons in the requisite class of those to whom S. 52 is directed into believing that the respondent's sunglasses are those of the applicant or associated with the applicant in some way. The respondent denies that assertion and says that, in the light of the first sign, the second sign is a form of amusing invitation to the applicant to itself come in if it wishes and buy the respondent's sunglasses at its diminished price.

The first question which arises, of course, is as to whether or not there is a sufficiently arguable question to proceed to trial within the meaning of the authorities. I will say very little about that for the moment except to say this: that I do not rule out of account the possibility that there is a class of persons of the kind to which counsel for the applicant has referred but, as at present advised, my view is that the more likely interpretation that will be given to the sign, by at least most readers, is that for which counsel for the respondent contends. Accordingly, I do not think the applicant's case is

a strong one.

I turn to the balance of convenience, itself a matter which must take into account comparative strengths of cases. Since it would seem from the evidence that the respondent proposes to conclude its current advertising campaign or sales campaign by the conclusion of trading tomorrow at 5.00 pm and the sign will not remain in existence on its stores thereafter, I think the balance of convenience in any event favours the refusal of interlocutory relief. I should say, however, simply this: that

the case is another example, although quite a novel one, of advertising, while not really being comparative advertising is akin to it, in that by inviting the applicant to come into the respondent's shops and buy its sunglasses, no doubt at reduced prices, it is engaging in what some might think is, though not unlawful, nevertheless, not very tasteful advertising. I shall say nothing further about it than that. However, it would be,

I think, in the best interest of everybody and in the interest

of sound commerce if the signs were removed after the conclusion

of tomorrow's trading.

Accordingly, I decline to grant any interlocutory relief.

The costs of today's motion will be the respondent's costs in the proceeding and the matter is adjourned to 3 December next at 9.30 am.

preceding three (3) pages are a	I certify that this and the
true copy of the reasons for judgment herein of the Honourable Mr. Justice Lockhart.
Associate Dated: 22 November 1991

Counsel for the Applicant	J.S. Wheelhouse
Solicitors for the Applicant :	Freehill Hollingdale & Page
Counsel for the Respondent	S.M.P. Reeves
Solicitors for the Respondent :	Mourice Wermut & Co.
Date of Hearing	22 November 1991
Date of Judgment	22 November 1991