Siddons Pty Ltd v Stanley Works Pty Ltd

NOT FOR DISRIBUTION

IN THE PULL COURT OF THE JUDGMENT NO. )3?.1 .Q........ .

FEDERAL COURT OF AUSTRALIA ) )

VG No. 253 of 1990

VICTORIA DISTRICT REGISTRY ) 1
GENERAL DIVISION 1

BETWEEN: i
i
i

SIDDONS PTY LTD L
c

Appellant/Cross Respondent i

- and -

THE STANLEY WORKS PTY LTD I

Respondent/Cross Appellant 1 I.

corn: Wilcox, Burchett and Heerey JJ.

PLACE : Melbourne
DATE : 5 April 1991

11 APR 1991

FEDERAL COURT OF

AUSTRALIA

EX TEMPORE REASONS FOR J[JDQ4.ENT

HEEREY J:

After I announced on behalf of the other members of the Full Court and myself the orders which the Full Court by a majority proposed should be made, Dr Jessup QC, on behalf of the respondent, sought a stay of the injunction.

stock.

The ground on which that stay was sought was that apparently the respondent, following upon its success at trial, had invested in substantial inventories of the product the sale of which the Full Court has now held should be restrained, and that, as I apprehend it, there would be heavy costs incurred by the respondent if it were prevented from selling that

The possibility of an application for special leave to appeal to the High Court was mentioned in passing, but as I understand it that is not the primary basis on which the stay is sought.

I raised the question of jurisdiction to grant such a stay since the other members of the court did not come to Melbourne for the handing down of the judgment. It would seem from a decision of Pincus J. in Patten v Minister for Defence (1987) 13 FCR 476, that a single judge, acting under 0.37 r.10, does have jurisdiction to grant such a stay.

However, in the circumstances I think it would not be appropriate for me to exercise such jurisdiction. What is sought is a stay based on a discretionary factor going to the grant of an injunction. No argument was advanced on such a basis at the hearing of this appeal, even though it might have been anticipated that there was a possibility that the appeal would succeed. Nor indeed as I recall it, was there any argument advanced at the hearing of the appeal on discretionary matters at all.

The case put by the respondent at the hearing of the appeal

was simply that the judgment appealed from was correct and that no injunction should go. In all the circumstances I do

not think I should accede to Dr Jessup's application. His client will, of course, be free to take such further steps in relation to this matter as they may be advised.

I certify that this and the preceding two (2) pages are a true copy of the Reasons for Judgment of the Honourable Mr Justice Justice Heerey

Counsel for the Appellant: MS Irene Zeitler
Solicitors for the Appellant: Freehill Hollingdale & Page
Counsel for the Respondent: Dr C N Jessup QC with
M r S R Horgan
Solicitors for the Respondent: Mallesons Stephen Jaques

CaseChat Overview and Summary

Siddons Pty Ltd, the appellant, filed an appeal against a decision of the trial judge in relation to an injunction issued against Stanley Works Pty Ltd, the respondent, in the Federal Court of Australia. The trial judge had found that Stanley Works had infringed Siddons' patent and issued an injunction to prevent Stanley Works from selling the infringing product. Siddons sought to appeal the decision of the trial judge, while Stanley Works sought to cross-appeal the decision. The primary legal issue before the Full Court was whether the trial judge had correctly decided to issue an injunction against Stanley Works for infringing Siddons' patent. Additionally, the court had to consider whether it was appropriate to grant a stay of the injunction on the basis that Stanley Works had invested in substantial inventories of the product the sale of which was now restrained.

The Full Court considered the appeal and cross-appeal and concluded that the trial judge had correctly found that Stanley Works had infringed Siddons' patent. The Full Court upheld the injunction against Stanley Works for selling the infringing product. In relation to the stay of the injunction, the court found that it would not be appropriate to grant a stay based on the discretionary factors that had not been argued at the hearing of the appeal. The court noted that the respondent had not advanced any argument on discretionary matters at the hearing of the appeal, even though it might have been anticipated that there was a possibility that the appeal would succeed. The court concluded that it should not accede to the application for a stay of the injunction. The Full Court certified that the reasons for judgment accurately reflected the decision of the court.

This case highlights the importance of arguing all relevant legal issues at the hearing of an appeal, including discretionary factors that may be relevant to the grant of an injunction. The court found that the respondent had not advanced any argument on discretionary matters at the hearing of the appeal, and as such, it would not be appropriate to grant a stay of the injunction based on those factors. The Full Court's decision reinforces the importance of presenting a comprehensive argument at the hearing of an appeal, including any discretionary factors that may be relevant to the outcome of the case.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established

IN THE PULL COURT OF THE	JUDGMENT NO. )3?.1 *.Q........ .*
FEDERAL COURT OF AUSTRALIA )	)

was simply that the judgment appealed from was correct and	that no injunction should go. In all the circumstances I do
not think I should accede to Dr Jessup's application. His client will, of course, be free to take such further steps in relation to this matter as they may be advised.

Counsel for the Appellant:	MS Irene Zeitler
Solicitors for the Appellant:	Freehill Hollingdale & Page
Counsel for the Respondent:	Dr C N Jessup QC with
M r S R Horgan
Solicitors for the Respondent:	Mallesons Stephen Jaques