R & C Products P/L v S C Johnson & Son P/L

[1993] FCA 931

JUDGMENT No. .. %..!...,.l ........ .... c13

IN THE FEDERAL COURT OF AUSTRALIA )

)

NEW SOUTH WALES DISTRICT REGISTU ) No. NG 907 of 1993

)

GENERAL DIVISION )

BETWEEN:  R & C PRODUCTS PTY LIMITED

Applicant

AND :  S C JOHNSON & SON PTY
bIMITED

Respondent

3 DECEMBER, 1993

REASONS FOR JUDGMENT

LOCKHART J.

This is a motion by the applicant, R & C Products Pty Limited, for interlocutory injunctive relief against the respondent, S C Johnson & Son Pty Limited, with respect to certain products, including insect sprays. The applicant trades under the name Samuel Taylor, and is a manufacturer of household products, including insect sprays, sold under various trade names which include MORTEIN. The respondent also manufactures and distributes insecticide products for household use and other uses, including insect sprays which are marketed under the name, RAID.

complained that the publication of the commercials would give

It is necessary to refer to an earlier matter that was before this Court, at least for the purpose of providing some background to the present controversy. In about November 1992, the respondent commenced a series of television

advertisements featuring its RAID products. The applicant

rise to passing off of the respondent's products as products with which the applicant is associated. The applicant also alleged that the respondent's conduct contravened, or would be likely to contravene S. 52 of the Trade Practices Act 1974. The matter was heard on a final basis by another judge of the Court (Davies J.) and judgment was given in April of this yea,.

His Honour acceded to the applicant's application, and he granted an injunction restraining the respondent from publishing, or causing to be publiehed, certain television advertisements in the form in which they appeared in two exhibits to the proceedings before him.

The evidence before his Honour was that between 1968 and

1981, the applicant used a prominent media personality, Mr

John Laws, to advertise MORTEIN; and that between 1968 and

1991 the applicant's commercials also featured a slogan, "When

before his Honour had threatened to publish television you are on to a good thing, stick to it." The respondent	advertisements also featuring Mr Laws and the slogan, "So when
you find a better thing, switch to it."
His Honour found, amongst other things, that it appeared to him that through the use of Mr Laws as a presenter and what he described as the play upon the MORTEIN slogan, the advertisements evoked a connection with the manufacturer and distributor of MORTEIN without necessarily specifically identifying that corporation by name, and would therefore be likely to mislead or deceive a significant number of consumers.
Following his Honour's judgment, the respondent went back to the drawing board and, through its consultants, sought to prepare forms of television advertisements and commercials which would not contravene the Court's injunction. In the result, television and radio commercials were prepared which feature Mr Laws as the presenter and describe the products known by the name of RAID.
The television commercials which are the subject of the present proceedings have been screened during November this year, are currently going to air and it is proposed that they should proceed throughout the summer months until towards the end of February. Australia, having the climate that it does,
is a country in which insecticides of the kind with which this
case is concerned are mostly used during the late spring and
summer months. Hence, the market for the period late October through to late February or early March is a critical market for partles engaged in the insecticide industry. Consequently it is obvious that the advertising of both parties of their respective products that is currently proceeding is critical to each of them and thelr respective commercial success.
There are certain differences between the television and radio commercials that were prohibited by his Honour, and those which are presently before the Court.
First, reference is made in them to the name of the respondent in one form or another, particularly S C Johnson. Reference is made by Mr Laws to the fact that the RAID products constitute "one of the reasons that I switched companies."
Second, the logo which appears as a "turnover" in the bottom right-hand corner of the advertisements refers to S C Johnson in print that is different from that which appeared in the earlier advertisements, but not in such a way in my view as to be substantially different. Nevertheless there is a difference. The current advertisements of the respondent also feature the slogan "So when you find a better thing, switch to it," as they did in the advertisements that were before the
Court earlier this year.
The applicant contends that the differences between the advertisements, though of course they exist, are not material differences and that the misleading or deceptive conduct is in essence no different from the conduct that is presently the subject of the inlunctions against the respondent. The respondent contends on the other hand that the differences are substantial, such as would lead the Court to conclude that there is not a seriously arguable case or serious question to be tried in the present proceeding.
The Court is, as I said, hearing an application for interlocutory injunctive relief: it is not engaged in the final hearing of this proceeding. Therefore, the findings that are made by the Court are, by their nature, tentative and not intended to express any final view on the evidence. That is a matter to be determined on the final hearing. However, these cases are very much cases of first impression. I have read the relevant evidence before the Court. I have also seen the relevant television commercials, being in the main those shown by the applicant first in the period 1968 to 1981, then in the period 1981 to 1993, and the commercials of the respondent which were impugned in the proceedings before Davies J. and those which are presently being screened that are the subject of the current dispute.
there is an arguable question or a serious question to be Although I have no final view on the matter, in my view, tried, so that that first hurdle is surmounted by the
applicant in this case in its quest for interlocutory injunctive relief.
Before turnlng to the balance of convenience, however, I should say that the balance of convenience and whether there is a serious question to be tried, though in some cases they are distinct questions, more often than not they overlap to a degree, as I think they do here.
I pay due weight to the fact that a judge of this Court has, after hearing all evidence on a final hearing, and not very many months ago, made findings which led him to restrain the respondent from engaging in misleading or deceptive conduct or conduct likely to mislead or deceive under S. 52, but I have also had regard to the differences between the advertisements presently impugned by the applicant and those that were the subject of the earlier proceedings. I have viewed those differences in the light of similarities between the two forms of advertisement and above all I have viewed the advertisements as a whole.
Plainly the respondent has a seriously arguable defence to the case on the basis that the current advertisements distinguish both the rival products and their respective
must say in my opinion the case for the applicant is not one origins. Without expressing a final view on the matter, I
which I place at the higher end of the chances of success on the final hearing. I do not however suggest that the applicant will not succeed at the final hearing. That depends on the evidence before the court when that hearing takes place.
I turn now to the evidence specifically on the question of the balance of convenience. I am satisfied that if injunctive relief on an interlocutory footing is not granted, the applicant may lose sales of its products to the respondent and it may lose a degree of market share, though the precise extent of that is not capable on the evidence before me of precise quantification. On the other hand, if the injunction is refused and the applicant succeeds in due course, it may recover damages from the respondent for its loss. Damages in cases of that kind are not always easy to calculate or determine, but Courts are not infrequently confronted with this problem and I have no doubt that if that event should occur, damages would constitute a sufficient remedy to the applicant.
I am also aware of the loss and damage that may be sustained by the respondent if interlocutory or injunctive relief is granted. The evidence satisfies me that, as the
well under way, if it is restrained as sought by the current advertising campaign of the respondent's products is
applicant, it will, for all practical purposes, prevent the respondent from pursuing its advertising campaign or indeed any effective television commercial campaign in the present summer months, and that it will lose the value of that campaign and the costs that have been incurred with respect to it. It is not necessary to recite the particular figure that would be involved, as that is the subject of a confidential exhibit, but it is sufficient to say that it is a very substantial figure indeed. I am satisfied there would be some loss of market share on the part of the respondent and that also its sales for the summer season would fall not inconsiderably. Again, I will not recite the figures as they are the subject also of a confidential exhibit.
Weighing the various elements in the case that bear on the question of balance of convenience, I am not satisfied that this is a case where it would be proper to grant interlocutory injunctions, and I accordingly decline to do so. The motion for interlocutory injunctive relief is therefore
re£ used.
The costs of the motion should be the respondent's costs in the proceeding.

I certify that this and the

Associate

Dated: 3 December 1993

Counsel for the Applicant A J Sullivan QC
R Cobden

Solicitors for the Applicant	:	Tress Cocks and Maddox
Counsel for the Respondent	T Simos QC
J Stuckey-Clarke

Solicitors for the Respondent :	Blake Dawson Waldron
Date of Hearing	3 December 1993
Date of Judgment	3 December 1993