Simplot Australia Pty Limited v McCain Foods (Aust) Pty Ltd

FEDERAL COURT OF AUSTRALIA

Simplot Australia Pty Limited v McCain Foods (Aust) Pty Ltd [2001] FCA 518

SIMPLOT AUSTRALIA PTY LIMITED ACN 070 579 609
-v-  McCAIN FOODS (AUST) PTY LTD (ACN 000 629 587)

V299 of 2001

RYAN J
MELBOURNE
4 MAY 2001

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V299 of 2001

BETWEEN:	SIMPLOT AUSTRALIA PTY LIMITED ACN 070 579 609 Applicant
AND:	McCAIN FOODS (AUST) PTY LTD (ACN 000 629 587) Respondent
JUDGE:	RYAN J
DATE OF ORDER:	4 MAY 2001
WHERE MADE:	MELBOURNE

THE COURT ORDERS:

1.        THAT the application for an interlocutory injunction be refused.

2.THAT the parties to bring in, at 10.15 am on 14 May 2001, minutes of the orders which each of them proposes as appropriate to embody directions for a speedy trial and for the keeping of records of sales of McCain’s Hash Brown Triangles.

3.THAT the costs of both parties of and incidental to the motion for interlocutory relief be costs in the cause.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V299 of 2001

BETWEEN:	SIMPLOT AUSTRALIA PTY LIMITED (ACN 070 579 609) Applicant
AND:	McCAIN FOODS (AUST) PTY LTD (ACN 000 629 587) Respondent

JUDGE:	RYAN J
DATE:	4 MAY 2001
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. By notice of motion dated 24 April 2001, the applicant, Simplot Australia Pty Limited (“Birds Eye”) seeks the following interlocutory relief against the respondent McCain Foods (Aust) Pty Ltd (“McCain”):

   “An injunction restraining the Respondent until the trial of the proceeding or further order, whether by itself, its directors, officers, servants or agents or otherwise from manufacturing, supplying, selling or offering for sale or supplying or promoting any hash brown product in the packaging referred to in paragraph 10 of the statement of claim;”

2. The packaging referred to in par 10 of the statement of claim is a polythene envelope bearing on its face one larger and one smaller representation of the McCain trade mark, being the name “McCain” in white cursive script on an oblong black background surrounded by a yellow border.  The largest legend on the front of the wrapping is the word “triangles” in lower case black lettering surmounted by the words “Hash Brown” in a smaller different script, also in black.  The three words just described are displayed against a yellow background and below them and slightly to their left there is quite prominently displayed in white lettering against a purple background the legend “750g NET”.  In the bottom front of the envelope is a red disk about the size of a 10 cent coin, bearing the words in white uppercase fonts “OVEN HEAT”, accompanied by a stylised representation of yellow flames.  Surrounding the written material are pictorial depictions in various sizes of golden-brown triangles, apparently of cooked potatoes.  The uniform background of the whole envelope has been variously described but can be designated, not inaccurately,…