Roses Only & Lush Pty Ltd v Mark Lyons Pty Ltd - [1999] FCA 1000

FEDERAL COURT OF AUSTRALIA
Roses Only & Lush Pty Ltd v Mark Lyons Pty Ltd [1999] FCA 1000
TRADE PRACTICES – application for interlocutory injunction under ss 52 and 80 of the Trade Practices Act 1974 (Cth) – parties competitors in the retail sale by telephone of packaged roses – whether descriptive name has acquired a secondary meaning – whether form of advertisements is likely to mislead or deceive consumers.
INJUNCTION – interlocutory injunction – whether serious issue to be tried – balance of convenience.
Trade Practices Act 1974 (Cth), ss 52, 80
Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148, cited
Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia [No 3] (1998) 72 ALJR 873, cited
Bullock v The Federated Furnishing Trades Society of Australasia (No 1) (1985) 5 FCR 464, followed
S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1999) ATPR 41-667, cited
Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177, cited
The Guide Dogs Owners’ and Friends’ Association Inc v Guide Dog Association of New South Wales (1998) ATPR 41-645, cited
The Guide Dogs Owners’ and Friends’ Association Inc v Guide Dog Association of New South Wales [1999] FCA 316, cited
Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216, cited
Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261, cited
Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431, cited
BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363, cited
Opals Australia Pty Ltd v Opal Australiana Pty Ltd (1993) ATPR 41-264, cited
Bass v Permanent Trustee Co Ltd (1999) 161 ALR 399, distinguished
Cubillo v Commonwealth (1999) 163 CLR 395, distinguished
Farquhar v Bottom [1980] 2 NSWLR 380, cited
Typing Centre of NSW Pty Ltd v Northern Business College Ltd (1989) 13 IPR 627, cited
FAI General Insurance Co Ltd v RAIA Insurance Brokers Ltd (1992) 108 ALR 479, cited
CBS Records Australia Ltd v Telmak Teleproducts (Aust) Pty Ltd (1987) 72 ALR 270, cited
Gollel Holdings Pty Ltd v Kenneth Maurer Funerals Pty Ltd (1987) 9 IPR 109, cited
ROSES ONLY & LUSH PTY LTD trading as “ROSES ONLY” v MARK LYONS PTY LTD trading as “ROSES PLUS”
N 407 OF 1999
JUDGE:        SACKVILLE J
PLACE:        SYDNEY
DATE:          27 JULY 1999

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 407 OF 1999

BETWEEN:

ROSES ONLY & LUSH PTY LTD trading as "ROSES ONLY"
Applicant

AND:

MARK LYONS PTY LTD trading as "ROSES PLUS"
Respondent

JUDGE:

SACKVILLE J

DATE OF ORDER:

27 JULY 1999

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
UPON the applicant, by its counsel, giving the usual undertaking as to damages:
1.The respondent, by itself, its servants or agents,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1999] FCA 1000
Decision Date: 27 JULY 1999

CaseChat Overview and Summary

In this case, the plaintiff, Roses Only & Lush Pty Ltd, sought an injunction against the defendant, Mark Lyons Pty Ltd, to prevent the defendant from publishing newspaper advertisements for a business named "Roses Plus". The matter was heard in the Federal Court of Australia. The plaintiffs argued that the defendant’s advertisements were too similar to their own advertisements, which could mislead the public and infringe their trademark. The defendant contested the application, arguing that there was no likelihood of confusion and that their advertisements were not substantially similar.

The court was required to determine whether the plaintiffs had established a prima facie case for trademark infringement and passing off. The court also had to consider whether the plaintiffs were likely to suffer irreparable harm if the injunction was not granted. The court examined the similarities between the advertisements, including their format, size, and content. The court also considered the likelihood of confusion in the minds of the public.

The court found that the plaintiffs had made out a prima facie case for trademark infringement and passing off, as the advertisements were substantially similar in format and appearance. The court also found that the plaintiffs were likely to suffer irreparable harm if the injunction was not granted, as the defendant’s advertisements could mislead the public and cause damage to the plaintiffs’ business. The court therefore granted the injunction, restraining the defendant from publishing the advertisements pending the final determination of the proceedings.

The court also ordered that the application for interlocutory relief be dismissed in all other respects, and that costs be costs in the cause. The court stayed the order for costs if either party filed written submissions seeking a different order within seven days.

Orders

Orders of the court

UPON the applicant, by its counsel, giving the usual undertaking as to damages:

1. The respondent, by itself, its servants or agents, be restrained, pending final determination of these proceedings or until further order, from placing newspaper advertisements promoting the business known as “Roses Plus”, which advertisements are in or substantially in the following format:

(a) having dimensions of 16 cm or 18 cm in length, by 3.5 cm in width; and

(b) are reversed out (that is, have white lettering or images on a black background).

2. The application for interlocutory relief otherwise be dismissed.

3. Costs be costs in the cause.

4. Order 3 be stayed if within seven days either party files written submissions seeking a different order as to costs.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 407 OF 1999

BETWEEN:	ROSES ONLY & LUSH PTY LTD trading as "ROSES ONLY" Applicant
AND:	MARK LYONS PTY LTD trading as "ROSES PLUS" Respondent
JUDGE:	SACKVILLE J
DATE OF ORDER:	27 JULY 1999
WHERE MADE:	SYDNEY