Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 12)

[2011] FCA 1109

FEDERAL COURT OF AUSTRALIA

Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 12) [2011] FCA 1109

Citation:	Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 12) [2011] FCA 1109
Parties:	SCHUTZ DSL (AUSTRALIA) PTY LTD (ACN 009 069 907), SCHUTZ GMBH & CO KGAA and PROTECHNA S.A. v VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705) and VIP STEEL PACKAGING PTY LTD (ACN 095 314 195)
File number:	WAD 136 of 2009
Judge:	MCKERRACHER J
Date of judgment:	28 September 2011
Catchwords:	TRADE MARKS – Norwich Pharmacal relief – whether alleged breach of undertaking justifies the additional Norwich Pharmacal relief – change in circumstances
Cases cited:	Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 10) [2011] FCA 1107 Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 11) [2011] FCA 1108
Date of hearing:	20 June 2011
Place:	Perth
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	9
Counsel for the Applicants:	ML Bennett with EJ Heerey
Solicitor for the Applicants:	Bennett + Co
Counsel for the Respondents:	SCG Burley SC with AR Lang
Solicitor for the Respondents:	Gilbert + Tobin

IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION	WAD 136 of 2009

BETWEEN:

SCHUTZ DSL (AUSTRALIA) PTY LTD
(ACN 009 069 907)
First Applicant/Cross-Respondent

SCHUTZ GMBH & CO KGAA
Second Applicant/Cross-Respondent

PROTECHNA S.A.
Third Applicant/Cross-Respondent

AND:

VIP PLASTIC PACKAGING PTY LTD
(ACN 095 313 705)
First Respondent/Cross-Claimant

VIP STEEL PACKAGING PTY LTD
(ACN 095 314 195)
Second Respondent/Cross-Claimant

JUDGE:	MCKERRACHER J
DATE OF ORDER:	28 SEPTEMBER 2011
WHERE MADE:	PERTH

THE COURT ORDERS THAT:

1.The applicants/cross-respondents’ motion to extend the Norwich Pharmacal orders made on 3 June 2011 be dismissed with costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION	WAD 136 of 2009

BETWEEN:

SCHUTZ DSL (AUSTRALIA) PTY LTD
(ACN 009 069 907)
First Applicant/Cross-Respondent

SCHUTZ GMBH & CO KGAA
Second Applicant/Cross-Respondent

PROTECHNA S.A.
Third Applicant/Cross-Respondent

AND:

VIP PLASTIC PACKAGING PTY LTD
(ACN 095 313 705)
First Respondent/Cross-Claimant

VIP STEEL PACKAGING PTY LTD
(ACN 095 314 195)
Second Respondent/Cross-Claimant

JUDGE:	MCKERRACHER J
DATE:	28 SEPTEMBER 2011
PLACE:	PERTH

REASONS FOR JUDGMENT

INTRODUCTION

1. The background to and abbreviations in these reasons are the same as those in Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 10) [2011] FCA 1107 (Schutz No 10).

   FURTHER NORWICH PHARMACAL ORDER

2. Schutz seeks an order in the follow terms:

   3.Within 7 days, [VIP] by their proper officer file and serve an affidavit specifying the names, addresses, telephone numbers and email addresses of those of their customers to whom they have fold Reconditioned Cross-Bottled IBCs bearing UN certification markings, save for those customers, if any, identified in the third and fourth affidavits of Andrew Robert Smith sworn on 13 October 2009 and 30 November 2009 respectively.

   4.[Schutz] have leave to despatch a letter, in the form annexed hereto and marked ‘D’, to any of [VIPs’] customers identified in the affidavit filed and served pursuant to Order 3 above.

3. These orders require the disclosure, by VIP, of any customers to whom they have sold or supplied cross-bottled IBCs which comprised of Schutz manufactured cages and inner plastic containers manufactured by persons other than Schutz or VIP and bearing any UN certification markings indicating that they are certified for use in the transport of Dangerous Goods (DG) (reconditioned cross-bottled IBCs).

4. Schutz also seeks to write to the customers to put them on notice as to the nature, providence and fitness for purpose (or lack thereof) of the reconditioned cross-bottled IBCs sold to them by VIP.

5. The purpose of these orders appears, once again, to be, in Schutz’ words, to ‘capture customers’ to whom VIP have sold reconditioned cross-bottled IBCs like ‘Q67’ and ‘Q68’. 

6. On 6 October 2009, similar orders were granted in relation to customers to whom VIP had sold or supplied cross-bottled IBCs for use in the transport of DG.  However, VIP resists this order for the same reasons as opposing the injunctive and labelling relief sought by Schutz.  That is, that the sale and supply of reconditioned (i.e. washed) cross‑bottled IBCs are not covered by the undertakings.  The undertakings apply to IBCs cross-bottled by VIP, not IBCs cross-bottled by others. 

7. Schutz advanced this argument for further Norwich Pharmacal orders primarily on the basis that VIP had breached their undertaking.  I have rejected this argument in Schutz No 10. 

   CONSIDERATION

8. This extended form of Norwich Pharmacal relief has also been previously sought without success.  The only apparent function of the additional Norwich Pharmacal relief would be to support the injunctive or labelling relief which I have rejected in Schutz No 10 and in Schutz DSL (Australia) Pty Ltd v VIP Plastic Packaging Pty Ltd (No 11) [2011] FCA 1108 (Schutz No 11) respectively. 

   CONCLUSION

9. It follows that the motion by Schutz to extend the Norwich Pharmacal orders made on 3 June 2011 be dismissed with costs.

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice McKerracher.

Associate: 

Dated:       28 September 2011