Puxu Pty Ltd v Parkdale Custom Built Furniture Pty Ltd

[1978] FCA 83

B E T W E E N :	PUXU	PTY	m	LTD.
P l a i n t i f f

A N D: - PARKD4LE CUSTOM BUILT :

FURNITURE PTY. LT'llo

Defendact

O R D E R

TEE COURT ORDERS TEAT: -

See conclusion o€ Ressons f o r Judgment published

t h i s day.

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I N T I E FEDERAL COURT OF AUSTPJ.LIA )

VICTORIA DISTRICT RXGISTRY i VG No. 27 of 1978

GEENEML DIVISION

I N THE NATTER of the TR&DE PMCTICES ACT

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B E T 11 E E N : PUXU PTP. LTD.

Plaintiff

P. N D: PARKDALE CUSTOM

I I I

BUILT FUFNITiiRE PTY ~

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I	SMITmRS J.
18 AUGUST 1378

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P3ASONS FOR JUDSiCENT

This is the return of a summons seeking an injunction

under s.80 of the Trade Practices Act 1374 (the Act) restralning

the defendant from committing certam specified conduct which is

alleged to breach s.52 of that Act.

The plalntiif's baslc allegation is that since 1975

it has built up a reputation as the manu€acturer and marketer

of a class of furnlture known as 'contour' furniture llhlch is

of quite distinctive construction, and design and that it

.-	is currently displaying	and offering that furnlture	for sale at
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the HomesShow being conducted at the Exhibition Builciings Melbourne

where the defendant	is also displaying and marketlng furniture
including furniture	of the nature ?f that with respect t3 which

the plaintiff's complaint is made. It is then said that the defendant has from a time considerably after the establishment

of the plaintiff's repdtation manufactured and marketed furniture

of such similar construction, colour and deslgn that it is

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calculated to be thought by persons knowing,that furniture of

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that construction, colour and design is furniture manufactured and marketed by the plalntiff,to be furniture manufactured and marketed by the plaintiff. It is also alleged that the defendaxt

has marketed thls furniture without indicating that it 1 s

furniture manufactured and marketed by it or by any person other

than the plaintiff and in circumstances in which members of the

public will m all probability mistake it for furniture

manufactured and marketed by it o r by the plaintiff.

Despite the able argument of Dr. Emmerson my mlnd at the

moment is influenced by the distlnctlon in the Act from

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t h e p r i n c i p l e s which apply i n p a s s i n g of f actlons and thc

other proceedings that have been mentioned. I am f a r from

say lng t ha t I f e e l s a t l s f i e d -chat the plaintiff must succeed i n this

ac t ion , bu t I am s a t i s f i e d t o t h e e x t e n t t h a t one sh-uld be

s a t i s f i e d i n an ac t ion of t h i s k i n d i n r e l a t i o n t o t h e g i v i n g of

i n t e r l o c u t o r y r e l l e f of the kind asked and that 1s the s tandard

t h a t was desc r ibed i n Adamson v. West Australian Nat ional Footbal l -

League (1978) ATPR 40-078that there should be a r ea l p rospec t

of success. To my mind t h i s i s i n accord with the remarks of Ki t to J.

i n Beechan Group Limited v. Bristol Laboratories Pty. Limlted

(1968) 118 CLR 618; m t e r p r e t i n g t h o s e remarks no t as lnd ica t lng

t h a t t h e e v i d m c e must show t h a t t h e l i k e l i h o o d

o f success i s more probable than no t , bu t to quote h i s Honour:

ttHow s t rong t he p robab i l i t y needs t o be depends no

doubt, upon the na tu re o f t he r i gh t s he a s se r t s

and the practical consequences i i!<ely t o flow from

the order he seeks.1t (118 C.L.R. a t 622)

The na ture o f the r igh ts here seem t o me t o be not s o much t h e

p r o t e c t i o n o f t h e p l a i n t i f f b u t t h e p r o t e c t i o n of t h e community

and the p ro t ec t ion of people l ike ly to dea l wi th the defendant .

I t h i n k t h e r e f o r e t h a t v i t h i n t h e p r i n c i p l e s which have been s e t

o u t i n World Series Cricket Pty. Limited v. Parish (1977)

16 ALR 301 and t h e Adamson Case (supra) I am s a t l s f i e d t o t h e

e x t e n t t h a t I consider I s h o u l d b e s a t i s f i e d i n a case o f th i s

k i n d t h a t t h e p l a i n t i f f h a s a r e a l p r o s p e c t of success.

Therefore it is p rope r t o g ran t some r e l i e f but I should

be ca re fu l t o ensu re 1 do not embarrass the defendant more, o r

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I perhaps I hope n o t a t a l l , t h a n IS necessary and it seems CO ne tha r

a t t h e moment s u b j e c t t o what exther of you say, ' that the justice or^

the case xrc-uld be p reserved fa i r ly on the balance of convenience

i f an order were made res t ra in ing the defendant f rom se l l ing

o r deal ing with cha l r s of t h i s p a r t i c u l a r d e s c r i p t l o n o t h e r

than in clrcumstances i n which those concerned, and people t o whom

any display of t he cha l r s were made, would understand by reasonable

-. n o t i c e t h a t t h e goods were t h e goods of Parkdale Custom B u i l t

Furni ture Pty. Ltd . and t h a t t h a t be s o until fu r the r o rde r o r .

until the hea rmg o f t h i s a c t l o n , whichever comes first. O f course

- i n the no t ion of fur ther o rder , should the p la in t i f f p roceed in the

Supreme Court, I would include any appl icat ion that was made CO

this Court on t h a t basis by r e fe rence t o t ha t even t .

I shou ld s ay t ha t t o my mind t h e c r i t i c a l f a c t o r i n

! the case i s the d l s t i nc t ive cha rac t e r o f t he goods which were

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i manufactured by t h e p l a i n t i f f s i n c e 1975, and marketed i n

assoc ia t ion with the business name "Post and Rail". I th ink I

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shou ld be s a t i s f i ed t ha t it i s probable a reputa t ion i n respec t

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of t h a t p a r t i c u l a r d i s t i n c t i v e c l a s s of f u r n i t u r e was es tab l i shed

before the defendant commenced t o market the furni ture made by

i t and i n r e s p e c t o f which t h i s ac t ion 1 s brought.

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The conduct xhich I would th ink was r e l e v a n t t o t h e L

ac t ion of t h e p l a i n t i f f i s that the defendant manufactured a cha i r I

substarntially having the characterist lcs of the chalr manufactured

by t he p l a in t i f f and calculated to be regarded by persons having

knowledge of the chairs manufactured by t h e p l a l n t i f f a s b e i n g

c h a ~ r s	manufactured	2nd	marketed	by	t h e p l a i n t i f f .
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It is -true that i n o r d e r that the conduct of the

defendant be shown t o have the qv-ality of conduct which

is d s l e a d i n g and deceptive within the meaning of s.52 of

t h e Act it i s necessary to look no t on ly a t t h e a c t u a l a c t s o f

the defendant in manufacturing the furniture andmal-kctlng it, but

t o look a t t h o s e a c t s i n t h e c o n t e x t of the circumstances tha t

t h e p l a i n t i f f ' s r e p u t a t i o n i n r e s p e c t o f t h o s e goods was es tab l i shed .

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I am not wrespons ive to the a rguments addressed to me

- by Dr. Emmerson that r e l i e f of the kind tha t is sought i n this

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ac t ion might tend t o g i v e t h e p l a i n t i f f monopoly r i g h t s i n

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circumstances where no monopoly has been earned, but I t h i n k t h a t 1 ,

the untoward features which xight be associated with g i v i n g r e l i e f

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i n t h i s case would be	resolved within	a	reasonable time	i f t h e	I
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defendant 's goods are marketed henceforth and perhaps they have !

been a l ready but cer ta inly henceforth - i n circumstances i n which

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those dea l ing with the defendant and i t s servants and agents

c lear ly understand the ident i ty of the manufacturer and the

f- o r i g i n a l s e l l e r of those goods.

A s t o t h e p r i n c i p l e s a p p l i c a b l e i n t h i s mat te r I

would r e f e r t o what was	said by Franki	J. i n Veitmann v.	Katies
._	L t d (1977) 1 ATPR 40-040

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The exact form of the Court ' S order 1,7111 be

d i scussed w i th t he pa r t i e s bu t I set out hereunder the general

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terms envisaged:

Upon the p la in t i f f under tak ing to pay to any par ty adverse l -

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affected by this order such compensation ( i f any) as the Court

t h inks , just, i n svch manner as the Court d-irects the defendant

i t s servants and agents are hereby unti l the determirlation of

these proceedings o r fur ther order res-cramed f rcm sel l ing o r

of fe r ing for . sa le o r dea l ing with o r displaying any furni ture

made in t he d i s t i nc t ive shape adop ted by t h e p l a i n t i f f , namely,

i t s 'contour ' furniture of exposed wood with contoured seats

uphols tered i n patchwork l ea the r cons l s t ing o f t h ree d l s t i nc t ive

colours without:

(a) i n the case of purchasers , not being re ta i lers o r

dea le rs , demonst ra t ing to them by reasonable means

t h a t t h e f u r n i t u r e was manufactured by Parkdale

Custom Euil t Furni ture Pty. Ltd. , and

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(b ) i n t he ca se o f dea l e r s o r r e t a i l e r s conveylng t o them t h a t

t h e f u r n i t u r e is t o be marketed and sold a s f u r n i t u r e

manufactured by Parkdale Custom Bui l t Furn i ture P ty . Ltd.

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