Vieright Pty Ltd v Myer Stores Pty Ltd

[1992] FCA 1092

JUDGMENT No. 6~%?,~.o.,,~ IZ,P.;L~

IN THE FEDERAL COURT OF AUSTRALIB)

NEW SOUTH WALES DISTRICT REGISTRY)	NO NG 678 of 1992
GENERAL DIVISION	1
0

BETWEEN: VIERIGHT PTY LIMITED

AND:	MYER STORES LIMITED
Applicant
Respondent

FEDERAL COURT

OF AUSTRALIA

2 6 ] A N 2003

LIBRARY

SHORT MINUTE OF ORDERS

1.   The applicant has leave to amend the motion dated 11 December to substitute the amended schedule which I have initialled and attached to the original motion.

2.    I order the respondent to discover documents and other

materials showing the intentions of the respondent in the near future to market clothing under the FIRST label. Those documents should be discovered by appropriate verifying affidavit by not later than Tuesday 19 January

1993.

3.   I note the undertaking of the respondent given to the Court this morning and recorded on the transcript, namely, that it will not prior to Friday 5 February 1993 introduce into its stores for sale women's clothing under the trade mark or label FIRST. I note also that the respondent states that it has for some years used the trade mark FIRST ISSUE on clothing in its stores and a'$@ proposes to continue to do so.

later than 4 pm on Tuesday 19 January.

1. The rest of the amended motion of the applicant together with the respondent's motion for security are adjourned to the hearing commencing on 1 February 1993.

5.    Costs of the motions are reserved.

1. As to the preparation of the matter for hearing, I make the following orders and directions:

i) The applicant will file and serve its remaining affidavits by not later than 4 pm on Friday 8 January 1993.

ii) The respondent will file and serve the affidavits of
its own staff on which it wishes to rely by not

iii) The applicant will file and serve its evidence in reply to that material of the respondent by not later than 4 pm on Monday 25 January.

iv) The respondent will file and serve its remaining evidence by way of expert evidence and affidavits from non-Myer staff by not later than 4 pm on Thursday 28 January.

v)   The applicant will file and serve any evidence in reply by the commencement of the trial.

vi) The applicant will file and serve a statement of relevant facts, a chronology and the outline of its argument by not later than 4 pm on Friday 29 January.

vii) The respondent will file and serve any alternate statement of facts and chronology, and the outline of its argument by the commencement of the trial on

1 February.

NOTE:	Settlement and entry of orders are dealt with in Order 36 of the Federal Court Rules.
Einfeld J  Sydney

23 December 1992

IN THE FEDERAL COURT OF AUSTRATJIA)

NEW SOUTH WALES DISTRICT REGISTRY)	NO NG 678 of 1992
GENERAL DIVISION	1

BETWEEN: VIERIGHT PTY LIMITED

Applicant

AND: MYER STORES LIMITED

Respondent

EX TEMPORE JUDGMENT

EINPELD J SYDNEY 23 DECEMBER 1992

The applicant moves for further and better discovery under a notice of motion dated 11 December. After argument on Friday 18 December the applicant has commendably reduced the area of additional discovery sought effectively down to one disputed item from an original list of eight and then three. I give the applicant leave to amend the notice of motion to substitute the amended schedule which I have initialled and attached to the original notice of motion.

described in the amended schedule as "design of clothing sold

The matter remaining in dispute in this regard is what is

or proposed to be sold by the respondent under the FIRST label". The basic facts of the matter for present truncated purposes are that the applicant markets women's clothing under the FIRST label. The respondent markets men's clothing under that label but the applicant points in earlier discovery to a market, which it says the respondent itself has identified, of men's clothing being attractive or appealing to women for their own use. In other words the applicant wishes to argue that in fact some of the men's clothing is geared specifically to a female market for female use, not merely for females to purchase for their male partners or friends.

It is effectively impossible in an interlocutory application for me to determine whether this argument of the applicant will succeed. In fact, it seems likely to be the central or one of the central matters in the trial which has been urgently fixed for an expedited hearing in the first week in February. I think that the heading or category which the applicant has identified in paragraph 1 of the amended schedule is still too broad or at any rate seeks material which is so unlikely to be relevant that I should not grant the order sought in the form in which it has been requested.

I can see the point that the applicant raises, that the respondent may be designing its men's clothing in some way to

be appealing to a female market but so far as the present range of goods of the respondent is concerned, I think there

is no need for discovery because the items of clothing will already be in the respondent's stores and can be identified by evidence that the applicant can easily obtain. I think also that designs of future intended sales of the respondent under the FIRST label are so unlikely to be relevant that I should not order that they be discovered but the respondent should discover documenfs and other materials showing its intentions in the near future to market clothing under the FIRST label.

In effect this trial is fixed for the very next day of the court's ordinary sittings despite the separation of it by the holiday period from today. There is therefore no time to analyse with any degree of precision what might or might not be available of this general nature which could be appropriately discovered. The case is commercially urgent. As I mentioned in discussion with counsel, the expedition of the case has been ordered on the basis that there will be five days hearing. It seems that the case will not be an easy one and that there will be a considerable volume of evidence. It is very desirable that at least enough of the case be completed in five days to enable the trial judge at least to be in a position to provide for interlocutory relief if more time is needed and an early resumption of the hearing is not possible. I shall therefore make an order for discovery to the effect stated in order to maximise the effectiveness of the order for expedition but the discovery is without

documents are or are not relevant, as the case may be, to the prejudice to the rights of either party to assert that such issues raised at the trial.

I have deliberately framed the order for further discovery broader rather than narrower to try to avoid the situation that part-way through the hearing an order for discovery has to be made to enable the applicant to present its case fully including to cross-examine the respondent's witnesses. I say again that I make no comment at all as to whether any of this additional discovered material could be relevant to the case.

Those documents should be discovered by appropriate verifying affidavit by not later than Tuesday 19 January.

The rest of the applicant's motion has apparently been disposed of by agreement or does not need to be pressed at this time so I shall adjourn that motion together with the respondent's motion for security to the hearing commencing on 1 February. Costs of the notices of motion are reserved.

I note the undertaking of the respondent given to the Court this morning and recorded on the transcript, namely, that it will not prior to Friday 5 February 1993 introduce into its stores for sale in relation to women's clothing the trade mark FIRST. I note also that the respondent by way of sensible clarification states that it has for some years used the trade mark FIRST ISSUE in relation to clothing and proposes to

continue to use it.

As to the preparation of the matter for hearing I make the following orders and directions:

1.	The applicant will file and serve its remaining affidavits by not later than 4 pm on Friday 8 January
2.	The respondent will file and serve the affidavits on which it wishes to rely from its own staff by not later than 4 pm on Tuesday 19 January.
3.	The applicant will file and serve its evidence in reply to that material of the respondent by not later than 4 pm on Monday 25 January.
4.	The respondent will file and serve its remaining evidence by way of expert material and affidavits from non-Myer staff by not later than 4 pm on Thursday 28 January.
5.	The applicant will file and serve any evidence in reply by the commencement of the trial.
6.	The applicant will file and serve a statement of relevant

facts and chronology/ and the outline of its argument by

I

not later than 4 pm on Friday 29 January.

7. The respondent will file. and serve any alternate

statement of facts and chronology and the outline of its

argument by the commencement of the trial on 1 February.

1 certify that this and the
precedi1.q pages are a true COPY of the

Reasons for Judgment herein of his Honour

Justice Einfeld

Associat

Dated:  I (qq3