Spencer and Rutherford v Horizons Holdings
[2005] FMCA 1874
•16 December 2005
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| SPENCER & RUTHERFORD v HORIZONS HOLDINGS & ANOR | [2005] FMCA 1874 |
| COPYRIGHT – PRACTICE & PROCEDURE — Interlocutory injunction – serious question to be tried – balance of convenience – delay. |
| Trade Practices Act 1974 (Cth), ss.52, 80(2) Copyright Act 1968 |
| Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593 Johnson v Mortgage Processing Centre & Ors [2003] FMCA 483 Norwich Pharmacal Co. v Customs & Excise Commission [1974] AC 133 Outdoor Power Products Pty Ltd v Silvan Australia Pty Ltd VID 1295 of 2005 Sheldon & Hammond Pty Ltd v Metrokane Inc. (2004) 135 FCR Sydneywide Distributors Pty Ltd v Red Bull Australia Lty Ltd (2002) 55 IPR 354 TGI Fridays Australia Pty Ltd v TGI Fridays Inc (1999) 45 IPR 43 |
| Applicant: | SPENCER & RUTHERFORD |
| First Respondent: | HORIZONS HOLDINGS PTY LTD |
| Second Respondent: | TELPAC INTERNATIONAL PTY LTD |
| File Number: | MLG 1573 OF 2005 |
| Judgment of: | Connolly FM |
| Hearing date: | 13 December 2005 |
| Date of Last Submission: | 13 December 2005 |
| Delivered at: | Melbourne |
| Delivered on: | 16 December 2005 |
REPRESENTATION
| Counsel for the Applicant: | Mr E. Heerey |
| Solicitors for the Applicant: | Rigby Cooke Lawyers |
| Counsel for the Respondent: | Mr W. Rothnie |
| Solicitors for the Respondent: | Madgwicks Lawyers |
UPON THE APPLICANT by its Counsel undertaking:
a) to submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the interlocutory order or undertaking or any continuation (with or without variation) thereof; and,
b) to pay the compensation referred to in (a) to the person there referred to.
THE COURT ORDERS THAT:
An injunction until trial or further order restraining each of the Respondents, whether by themselves, their directors, agents, servants or howsoever otherwise, from importing, distributing, promoting, offering for sale or selling, whether at wholesale or retail level, any of the following products identified in exhibits “CM-29” (pages 20 and 21): 316 Green and Red, 307 Green and 306 Pink, 319 Pink, Blue, Black, 304 Black, Blue, Green, 300 Pink, Blue, Red, 301 Pink, Red, Blue, 312 Pink and Green and “CM-34” to “CM-38” inclusive to the affidavit of Chris Michaelides dated 5 December 2005, or any other products which are similar to or a colourable imitation of or a reproduction of a substantial part of any of the Applicant’s products identified in exhibits “CM-1” to “CM-9” inclusive and “CM-11” to “CM-18” inclusive to the affidavit of Chris Michaelides dated
5 December 2005.
An order that the Third Respondent file and serve on the Applicant within 7 days an affidavit deposing as to the name and address of all manufacturers, importers, wholesalers, suppliers, customers, retailers and other recipients of the following products identified in exhibits “CM-29” (pages 20 and 21): 316 Green and Red, 307 Green and 306 Pink, 319 Pink, Blue, Black, 304 Black, Blue, Green, 300 Pink, Blue, Red, 301 Pink, Red, Blue, 312 Pink and Green and “CM-34” to “CM-38” inclusive of the affidavit of Chris Michaelides dated 5 December 2005.
It is appropriate that the proceeding continue on pleadings.
The Applicant file and serve a Statement of Claim by 4pm on
30 January 2006.
The Respondents file and serve a Defence with supporting affidavit by 4pm on 20 February 2006.
The Applicant file and serve any Reply by 4pm on 6 March 2006.
The matter be listed for further directions on Tuesday 14 March 2006.
The costs of this application be reserved.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT MELBOURNE |
MLG 1573 of 2005
| SPENCER & RUTHERFORD |
Applicant
And
| HORIZONS HOLDINGS PTY LTD |
First Respondent
| TELPAC INTERNATIONAL PTY LTD |
Second Respondent
REASONS FOR JUDGMENT
The proceedings
This is an application for an interlocutory injunction. The Applicant is an Australian company that sells handbags and other accessories through independent retailers and concept stores. The application and supporting affidavits rely on three separate heads. It is alleged that the importation, sale and promotion of the Respondent’s hand bags contravenes s.52 of the Trade Practices Act 1974 (Cth) and is a passing-off and infringes the copyright claimed to be owned by the Applicant. The interlocutory injunction seeks to restrain each of the Respondents from importing, distributing, promoting selling or offering for sale any of a number of identified products which are similar to, or a colourable imitation of, or a reproduction of the Applicant’s products identified in various exhibits. The Applicant also seeks a Norwich Pharmacal order, that is an order that the Third Respondent file and serve on the Applicant within 7 days an affidavit deposing as to the name and address of all manufacturers, importers, wholesalers, suppliers, customers, retailers and other recipients of the identified products.
The Applicants claims are supported by the following affidavits:
i) The affidavits of Chris Michaelides, the Managing Director of the Applicant, filed on 6 and 13 December 2005.
ii) The affidavit of Katherine Zamira Pakula filed 6 December 2005.
iii) The affidavit of Sher Michaelides filed 6 December 2005.
iv) The affidavit Chivy Chan filed 6 December 2005.
v) The affidavit of Jill Drummond filed 6 December 2005.
vi) The affidavit of Alison Milne filed 13 December 2004.
The first and second Respondent hold the registered business name “Rose Garden at the Walk”. The current director of both companies is Xi Chan, the Third Respondent. The first respondent is a wholesaler of fashion goods and accessories under the brand names “Michael Rene” and “Rose Garden at the Walk”. The second Respondent is one of its retailers. The Respondents say they have been importing and selling the handbags which the Applicant complains of since July 2005 and that this application is brought against them only in the peak sales period in the year when it will be most disruptive and damaging. The Respondents deny the allegations against them and say that the Applicant has established no case for relief under the Trade Practices Act1974 passing off and at its highest, only a very weak case for relief under the Copyright Act 1968 and that the balance of convenience lies strongly in favour of refusing the injunctions and other orders sought.
The Respondents rely on the following affidavits:
i.The Affidavit of Lisa Slavin (the CEO of the first and second respondents) filed 12 December 2005.
ii.The Affidavit of Catherine Maisie Pierce filed 13 December 2005.
The law
The requirements for the grant of an interlocutory injunction are clear. The Applicants must satisfy the Court that there is a serious issue to be tried and that the balance of convenience favours the grant (see Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153). Finkelstein J conveniently sets out the approach to be adopted in paragraph 1 of Outdoor Power Products Pty Ltd v Silvan Australia Pty Ltd VID 1295 of 2005:
“This is an application for an interlocutory injunction. The cases that explain the principles which govern the granting of interlocutory injunctions establish that first the applicant must make out a fair case for the breach, or in a quia timet application the apprehended breach, of his legal rights. That is, the applicant must show that he has a case worthy of trial. This does not mean that the court will undertake a preliminary trial in an attempt to predict the outcome. Indeed, in most cases that will be an impossible task: not all the facts will be known; cross-examination of witnesses is not usually permitted; such applications are generally brought on short notice; the judge will not have had sufficient time to give adequate consideration to the often intricate questions of fact and law that may arise. Still, on occasion it will be necessary for an applicant to show more than that his case is not frivolous. Or, at least, the judge should exercise a degree of caution when assessing the strength of the applicant’s case. This is particularly so when, as here, the decision on the interlocutory application may have the practical effect of resolving the case. The second element that the applicant must establish is irreparable injury. If the applicant’s injury in the event of final success would be adequately compensated by damages, an injunction will not issue. Where the applicant makes out both these requirements (a serious issue to be tried and irreparable harm) and the respondent also shows a fighting case, it is then necessary to consider whether the balance of convenience favours the grant or refusal of the injunction. On this question many factors may be taken into account.”
It is also standard that when an interlocutory injunction is granted the Applicant will be required to given an undertaking to pay any damages that the Court may find that the Respondents have suffered as a result of the injunction. The Applicant has agreed to such an undertaking.
The Applicants claim for breach of s.52 of the Trade Practices Act 1974 require it to establish that the appearance or get up of its products is recognised by consumers as distinctive and that the Respondent’s sale of their imitation products is likely to mislead consumers that the Respondent’s products emanated from the same manufacturer as the Applicant’s products (see Sydneywide Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354).
The factors which the Applicant is required to demonstrate in a passing off claim are similar. It must establish:-
a.Recognition by consumers of the distinctive get up of the Applicant’s products
b.That the Respondent’s conduct amounts to a misrepresentation to the consumers which is likely to lead them to believe that the Respondent’s products are the Applicant’s products (and it is immaterial whether those consumers are aware of the Applicant’s identity as the manufacturer of its goods).
c.That the Applicant suffers (or in a quia timet action) is likely to suffer damage by reason of the erroneous belief engendered by the Respondent’s misrepresentation (see TGI Fridays Australia Pty Ltd v TGI Fridays Inc (1999) 45 IPR 43.
Conclusions and findings
The history of the Applicant’s handbag and luggage products are set out in the first affidavit of Chris Michaelides. The handbags and luggage products are designed by Kim Michaelides as an employee of the Applicant, with copyright held by the Applicant pursuant to an agreement executed by the parties on 26 March 1999. The Applicant’s designer handbags and leather goods were first unveiled at the Mercedes Australian Fashion week in 1999 and since then it has continued to present its products at trade fairs around Australia. The Applicant has also promoted its products by way of community events and charity auctions and as a result has developed a reputation within Australia and internationally.
The Applicant’s products are sold in 403 outlets throughout Australia. Annual sales have increased each year and last year totalled 50,000 units. Expenditure on advertising has exceeded 1 million. The public recognition of the Applicant’s products is supported by a wide range of media references detailed in paragraphs 25 and 26 of Chris Michaelides first Affidavit. Indeed in a Victorian Government research paper “Where to from here- The future of the TCF industry”
“5.12 Spencer & Rutherford
Designer handbags and luggage
. . .
The core design of the handbags and luggage is a quality eclectic mix of fabrics, colours and textures in assorted shapes and sizes that are a complete design statement and highly functional. The market considers each piece a collectible heirloom of tomorrow. Targetting the niche upper medium market, price is generally not an issue. Only the finest raw materials and trims are used, and are source locally and globally through agents.
. . .
In 2001 Mademoiselle Spencer & Rutherford was launched.
A diffusion brand, it started life as a tizzy cheaper version of Spencer & Rutherford but has since evolved into its own product. Also designed by Kim, Mademoiselle offers excellent quality with value at designated price points.”The Ragtrader fashion magazine said of the Applicant’s products:
“The brand is characterised by its quality, artistry, personality and wit. In barely five years, the company has become recognised as a highly desirable global design house.”
The level of the Applicant’s success internationally can be gauged by the fact that it employs full-time sale and marketing managers in the US and Europe. It also has an international marketing strategy which includes endorsement by Australian actress Nicole Kidman.
The current dispute arises as a result of the Respondent selling items or products which the Applicant says are deceptively similar to the Applicant’s products. The evidence that the Applicant relies on to establish that similarity are firstly, what is said by a number of the deponents of the Affidavits with respect to that and secondly, by tendering various handbags and luggage that are products of the Applicant and of others that are the product of the Respondent which the Applicant claims are copies. I have also been shown catalogues of the Applicant and of the Respondents that display both the original product and the items alleged to have been copied.
While the original Applicant sought that the injunction apply to all of the Respondent’s products on page 20 and 21 of the Respondent’s current catalogue, (exhibit “CM 29” to the first Affidavit of Chris Michaelides) Counsel for the Applicant indicated in his address that he was content to limit that part of the injunction to the following products on these pages:
·316 Green and Red (allegedly representing the Gabrielle style)
·307 Green and 306 Pink (allegedly representing the Babette style)
·319 Pink, Blue, Black (allegedly representing the Twiggy style)
·304 Black, Blue, Green (allegedly representing the Coco style)
·300 Pink, Blue, Red (allegedly representing the Gabrielle and the Ingrid style)
·301 Pink, Red, Blue (allegedly representing the Olivia style)
·312 Pink and Green (allegedly representing the Daisy style).
The affidavit material of Ms Pakula indicates that she has been in the retail accessories business for 25 years. She was actually induced by the Respondent’s products to believe that the Respondent’s were selling genuine Spencer & Rutherford products. She says at paragraphs 12 & 13 of her affidavit as follows:
I went overseas for a few weeks in October and returned to Melbourne on 31 October 2005. On 1 November 2005, I noticed that a new store had opened up in Acland Street named “Rose Garden at the Walk”. I saw the signage of the store, the overall look of the store and notice a number of what I thought were Spencer & Rutherford handbags on display inside. It was obvious to me that the store was directly competing with Seagulls because the products were identical to the Spencer & Rutherford handbags. When I looked at the handbags, I concluded that Spencer & Rutherford were supplying “Rose Garden at the Walk”.
I was furious when I saw the handbags at “Rose Garden at the Walk”. I was quite angry with Spencer & Rutherford. Even with my twenty-five years of experience in the accessory industry, I am unable to distinguish between the original Spencer & Rutherford handbags and the ones on display at “Rose Garden at the Walk”. I was also informed by my Store Manager, Chivy Chan, and believe that the pricing of the bags at “Rose Garden at the Walk” were approximately one third to one half of the cost of the original Spencer & Rutherford bags being sold at Seagulls.
The evidence of Ms Chan is also evidence of actual deception. She says in paragraph 4 “I immediately thought they were Spencer & Rutherford handbags” despite being ultimately able to distinguish between their origin on a close inspection of their trimmings and quality of materials (paragraph five of her affidavit). Clearly ordinary consumers would not have the same special knowledge and would in my view be likely to be left with a mistaken belief that the Respondents imitation products emanated from the same source as the Applicants products.
In paragraph 13 of Chris Michaelides first affidavit he refers to a number of styles and designs of the Applicant’s products and exhibits various examples of those designs.
·CM 11 represents the Eliza style
·CM 12 represents the Twiggy style
·CM 13 represents the Gabrielle style
·CM 14 represents the Ingrid style
·CM 15 represents the Coco style
·CM 16 represents the Daisy style
·CM 17 represents the Babette style
·CM 18 represents the Olivia style.
In paragraph 43 of the same affidavit he says that imitations of the styles and designs where purchased from various of “Rose Garden at the Walk” stockists apart from one which was purchased from a stockist Cinori. All of the exhibits had “Rose Garden at the Walk” on the inside tag. It is alleged that of those purchases which are exhibited as follows:-
CM 34 imitates the Eliza style
CM 35 imitates the Olivia style
CM 36 imitates the Gabrielle style
CM 37 imitates the Coco style
CM 38 imitates the Babette style.
In comparing the items alleged to have been copied and referred to in the previous paragraph as well as the items referred to in the Respondent’s current catalogue at paragraph 12 herein with the original items in paragraph 15 herein, I am in no doubt that the general appearance (the shape, colour, patterns and type of material used) of each of the products is so similar that there is no possibility that it could have been affected by accident or coincidence. At the very least I have no doubt that the reasonable hypothetical class of persons to whom these products are being offered for sale will suspect that they have come from the Applicant. That was my initial impression and nothing that has occurred since has changed my opinion. That impression is only reinforced by the affidavit material that I have already referred to.
In my view this evidence of actual deception contained in the affidavit material will be significant at the Trial of this matter. So far as the interlocutory application is concerned it supports the contention that there is a very real risk that consumers will be misled by the Respondents products. In all the circumstances the balance of convenience weighs in favour of granting the injunction. I am satisfied that the Applicant’s case is a strong one. The Respondent says that the Applicant’s delay of four months should preclude the Applicant from obtaining the injunctive relief sought. However the Applicant does provide some explanation and even more importantly the Respondent on his own evidence (of the last shipment of the relevant goods having been affected in July) has suffered no detriment as a result. Nor do I accept the Respondent’s argument that the interlocutory injunction will have a potentially drastic consequence on the Respondent. The injunction applies to a very small number of the Respondent’s products and there is no particularity to support the financial consequences that the Respondent predicts.
Whilst it is not a requirement for the Applicant to establish that the Respondent had a subjective intention to mislead, I am concerned that having sold the genuine products of the Applicant, that the Respondents well know the distinctive style and get up of the Applicant’s products and their attraction to customers.
In Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 at [117] the Court held:
“…where a trader, having knowledge of a particular market, borrows aspects of a competitor's get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was "fitted for the purpose and therefore likely to deceive or confuse ...”.
Further at [45] the court cited the High Court decision in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 per Dixon and McTiernan JJ:
"The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of a trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.”
The Respondent contends that both the claim for passing off and the claim pursuant to the Trade Practices Act 1974 should fail because both the Applicant’s products and the Respondent’s products are labelled in accordance with the usual practices in the trade or industry and relies on the decision in Sheldon & Hammond Pty Ltd v Metrokane Inc. (2004) 135 FCR at 161-163:
I agree with the contention of S & H that these claims face formidable hurdles, irrespective of the conclusions I have already reached on the copyright issues arising. The following passages from judgments of the High Court in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 exemplify that observation:
‘... the sale by one manufacturer of goods which closely resemble those of another manufacturer is not a breach of s 52 if the goods are properly labelled. There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another. In some cases this is because the design of a particular article has traditionally, or over a considerable period of time, been accepted as the most suitable for the purpose which the article serves. In some cases, indeed, no other design would be practicable. In other cases, although the article in question is the product of the invention of a person who is currently trading, the suitability of the design or appearance of the article is such that a market has become established which other manufacturers endeavour to satisfy, as they are entitled to do if no property exists in the design or appearance of the article. In all of these cases, the normal and reasonable way to distinguish one produce from another is by marks, brands or labels. If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public’ (per Gibbs CJ at 149 CLR 191 at 199-200).
‘Therefore, a manufacturer who exercises his freedom to manufacture goods according to a design which is not protected by valid registration does not engage in conduct which is misleading or deceptive or which is likely to mislead or deceive. If consumers or potential customers believe that all goods of a particular design are manufactured by him who first establishes a market reputation as a manufacturer of those goods, that belief is or may be erroneous. The error may be attributed to a preconceived belief that the manufacturer who first establishes a market reputation has a monopoly in the manufacture and sale of goods of that kind but, unless the manufacturer has acquired a statutory monopoly, that belief is also erroneous and the error flows from a misconception of law. A later manufacturer who does no more than exercise his freedom to manufacture and sell goods made in accordance with a design in the public domain does not mislead or deceive; and if a consumer has an erroneous preconceived belief that the first manufacturer has a monopoly, a false assumption by the consumer as to the source of the later manufacturer’s goods is self-induced. That was the approach taken by the full court of the Federal Court with respect to trade names in McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394, and I respectfully agree with it’ (per Brennan J at 149 CLR 191 at 225).
162 For the reasons I have earlier outlined in the segment relating to infringement, the evidence discloses in the present proceedings that both the Rabbit and Pull It corkscrews are sold within differing and well marked and labelled packaging, notwithstanding that the products may ‘closely resemble’ one another, to adopt the expression used by Gibbs CJ above.
163 Two authorities of Full Courts of this Court have also addressed the theme of similar or almost identical goods marketed under or by their respective or different labels. Thus in Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136 at [41], Sundberg, Emmet and Hely JJ, after referring to Puxu, said as follows:‘If the appellants in Puxu could copy the respondents’ claims provided they labelled them so that it was clear they were not the goods of the respondents, we can see no reason why the appellants cannot do the same with their footwear...’
And subsequently in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90, in finding that the passing off and TP Act claims concerning a rotary shaver, with a similar appearance to the appellant’s rotary shaver, should fail, Burchett J, with whom Branson and Hill JJ agreed, said (at 281) as follows:
‘Nor is there any more reality to the suggestion that the mere similarity of goods ... might lead some persons to assume the Remington shaver is produced under licence, or is a sub-brand of Philips ... The public is thoroughly accustomed to competing brands of almost identical products, which may or may not have some link...’
While each of the Applicants and Respondents have labels inserted on the inside of the product it is in my view unclear where the product of the Respondent was manufactured. The Respondents product was not in my view labelled in such a way that it made it clear that they were not the goods of the Applicant. It is not clear whether the label referred to the particular retailer or even the style of the product. Indeed as I have already said I am satisfied that the general appearance of the imitation product will mislead the reasonable consumer to come to the conclusion that it is the product of the Applicant.
I am reinforced in this view by what Justice Finkelstein had to say in Outdoor Power Products Pty Ltd v Silvan Australia Pty Ltd [2005] FCA 1696 at [29] and [30]:
“For this purpose the applicant has tendered an example of the Solo sprayer and an example of the current version of the Selecta sprayer. I am in no doubt that the general appearance (shape and colour) of each product is so similar as to cause a reasonable hypothetical member of the class of persons to whom these products are being offered for sale to suspect they may be from the same source. That was my immediate impression when I saw the exhibits. It is the impression which has remained with me in the few days since the hearing.
Not only is this the impression that I think is likely to be induced in the minds of prospective purchasers, it is, I think precisely the impression intended by the Respondent. That is to say, I suspect that it is no accident that the respondent has put onto the market a product which, so far as its get up is concerned, is very similar in appearance to the Solo sprayer. My view about the respondent’s position is confirmed by the first two versions of its packing box. Each box was, so it seems to me as presently advised, deliberately designed to take advantage of the reputation the applicant has in the colour and style of its packing box.”
Further with respect to the issue of whether the injunction should be granted Justice Finkelstein said at paragraph [32]:
“On the question whether an injunction should be granted I am in no doubt whatever that it should. Rarely will damages be an adequate remedy for an interference with the applicant’s goodwill, which is, after all, what lies at the root of a passing off claim. Indeed, as an examination of the cases will show, an injunction is the remedy granted almost as of course in such cases. As well, one should not lose sight of the fact that the misleading conduct claim is founded on a statute enacted to serve the public interest and not simply private rights. Once it has been found that there is a misrepresentation to the public, or to a section of the public, the court should, whenever possible, restrain the continuance of that conduct even where no private rights are affected.”
Those paragraphs apply very much to this matter.
The further contention of the Applicant is that the injunctive relief ought to be granted because the Respondent’s conduct amounts to an infringement of copyright subsisting in the Applicants products as works of artistic craftsmanship (Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593). I accept the Applicants contention that given that the Respondents have had possession of the Applicant’s genuine products and given the strikingly objective similarity between the Applicant’s and the Respondent’s products, this is clearly a serious issue to be tried. Indeed, even if the Respondent did not copy the Applicant’s products or plans, or authorise another person to do so, the Respondent’s may infringe the Applicant’s copyright by importing and or offering them for sale in circumstances in which they ought reasonably have known would have been an infringement of the Applicant’s copyright if made in Australia under ss.37 and 38 of the Copyright Act 1968.
In addition to the interlocutory injunction the Applicant seeks a Norwich Pharmacal order (see Norwich Pharmacal Co. v Customs & Excise Commission [1974] AC 133). In that case Lord Reid said that the basis for such an order was the duty falling on a person who possesses such information “to assist a person who has been wronged by giving him full information and disclosing the identity of the wrongdoers”. FM Raphael applies this authority to make such an order in Johnson v Mortgage Processing Centre & Ors [2003] FMCA 483 at [29]. I am satisfied that in this case the Applicant is entitled to the information sought so that they can make contact with all persons dealing with the Respondent’s products and take appropriate action against them.
Accordingly I make orders in terms sought by the Applicant.
I certify that the preceding twenty-seven (27) paragraphs are a true copy of the reasons for judgment of Connolly FM
Associate: Nadia Morales
Date: 16 December 2005
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