Wilson, A.J. v Hollywood Toys (Australia) P/L

[1993] FCA 875

8+,-93

JUDGMENT No. ...,.,.,....,,.,m, mmmmm.m.m...

IN THE FEDERAL COURT OF AUSTRALIA	)
Y	R	T	S	-	) No. VG326 of 1993
GENERAL DIVISION	1

BETWEEN:  ALLEN JOHN WILSON and JOY
PATRICIA WILSON

Applicants , . ,

AND:  HOLLYWOOD TOYS f AUSTRALIA1

PTY LTD (ACN 005 131 6801 ROBERT JAMES DOWDELL. JOHN

FRANCIS TAAFF . KEITH I

BURDETT FINDLAY, REGINALD DOUGLAS ORR and PERRY JOHN ISAAC	.	.
,	,

Respondents ' ;

CORAM:	Jenkinson J.	-
PLACE :	Melbourne

W:  19 November, 1993

REASONS FOR JUDGMENT

Application for interlocutory inj

It is convenient to say something first about the attack on the validity of the design based upon prior publication and, in that connection, to seek to identify some of the principal features of shape, configuration, pattern or ornamentation applicable to an article made in accordance with the design. It seems to me that for present purposes the principal features to which attention should be directed are the balloon or bloomer-shaped pants, rising from the level of the back of the representation of the horse, the braces	lower parts of the pants and the boots. The suggested prior	attached to the pants and the false legs represented by the
lower parts of the pants and the boots. The suggested prior publication, a cartoon drawing, lacks all but one of those four features : there are no pants, there are no braces, there are no false legs, but there is a flat silhouette of a distinctive cavalry boot, not in any respect like the actual boot of the deslgn. It seems to me that there is no genuine case of invalidity, no real issue to be tried in relation to invalidity on the evidence before me, and accordingly I go on to consider the question of infringement.
It will be, I think, apparent from what I have already said that what we have been, for convenience, calling Aussie Brumby Mark 1 is, in my opinion, an infringement of the design. It exhiblts all of those features to which I have referred and it otherwise corresponds to the other principal features of the design. The differences are very minor, and not differences that attract the eye, in my judgment. So far as what we have been calling Aussie Brumby Mark 2, the case is more difficult. There is lacking the false legs and the
boots. tried in respect of infringement by the Mark 2 Aussie Brumby. I consider that there is a serious question to be I think that the applicant has made out a prima facie case.
On the other hand, it is, I think, true to say that if one applies the test that was suggested by Lockhart J. speaking for the Full Court in Dart Industries v. Decor Cor~oration 15 IPR 403 at 409, there is a serious question as to whether the variation froin the original design may not take the Aussie Brumby Mark 2 out of the realm of infringement. This topic was, as Mr. Kewley pointed out, discussed also by King J. in the case to which reference has been made, but I think that a fuller statement is to be found at page 409 in the judgment of Lockhart J. His conclusion was:

"Small differences between the registered design and prior art will generally lead to a finding of no infringement if they are equally small differences between the registered design and the alleged infringing article. On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement."

Really, the worthwhile evidence of prior art in this case, on this interlocutory application, and I do not say this in any critical way, is not extensive. It might be said that it is unnecessary that it should be extensive because one carries, within the framework of what may be known judicially, a notion of various toys that have long been in existence to enable a person in play to pretend that he or she is riding a horse. But really the only worthwhile, for present purposes, example	of what one might call prior art is the same cartoon as I	discussed in relation to invalidity. It is a real question as
to whether or not the registered design does exhibit large or only very small differences from prior art, and in the state of the evidence before me I think that all I can usefully say is that there is a real question to be tried about that.
So far as the balance of convenience is concerned, there would, but for one circumstance, seem to be no good reason why the injunction should not be refused and an order made or an undertaking received for the keeping of accounts. The one circumstance is the evidence of the applicants that, once either Aussie Brumby gets on to the market in this State (in this city, I suppose, principally, in Australia perhaps), if it gains acceptance by consumers, it is going to be, so it is said by Mr. Wilson, very difficult for anybody else, and in particular very difficult'for the applicants, to break into that market to take, as it were, a share of that market. Now, the difficulty about that evidence is that I do not think it sufficiently appears that, if this is a field where expert evidence is appropriate or permissible, Mr. Wilson is qualified as an expert. It may well be that technically the evidence is inadmissible and I should not pay regard to it. On the other hand, it was not objected to, and the content of the evidence is such as to accord, in my view, with what a person without any understanding of the toy market might be expected to think, just as a matter of common sense. And, if
what Mr. Wilson has said is correct, of course the same conclusion would have to be drawn if the respondents were unable to sell over the next six months or so and the
applicants were free to do so. If the product gains acceptance among consumers, the applicants may be expected to get into a position in the market from which the respondents would have great difficulty in dislodging them, and either way, as I think is pointed out in evidence, the difficulties of estimating damage or taking an account of profits would be probably very great. In those circumstances I think that the
appropriate order to make is, if each applicant offers an undertaking that until judgment or further order he or she
will not sell any article to which the registered design has been applied, an order restraining sale by the respondents of an article in the form either of Aussie 1 or Aussie 2 until trial. If that undertaking is not offered by each applicant then I will refuse an interlocutory injunctive order in respect of Aussie Brumby a ark 2 and make an order for the keeping of an account.
I think the proper order is that the applicants' costs of the application for interlocutory relief be the applicants' costs in the proceeding.
There will be an order that each of the respondents Hollywood Toys Australia Proprietary Limited, Robert James Dovrdell and John Francis Taaff be restrained until judgment in the proceeding or further order from selling or offering for
W3 to the affidavit of Allen John Wilson, sworn 5 August 1993, sale any article the- design of which is the design of exhibit or any fraudulent or obvious imitation of the said design.
There will be an order that each of the said respondents keep, and on the court's order disclose, an account of each importation and each sale of an article, the design of which
is the design of exhibit W13 to the affidavit of Allen John Wilson sworn 18 November 1993, including in respect of each importation a copy of each document furnished by that respondent to the Customs Department or received by that respondent from the Customs Department in relation to that importation, and including in respect of each sale the price, the date of the contract for the sale, and the date of delivery of the article to the buyer, and the cost to that respondent of the article.
And then an order in the same terms as that one, except that it will be witli respect to the design of Aussie I1 which is really only satisfactorily disclosed by a document which is not yet in evidence. Mr. Bristow handed it up to me, and it included these three sets of photographs. The documents to which they were attached was a copy of an assignment. I will make that set of documents exhibit 1 in the application for interlocutory relief. And then the order will be that each said respondent keep, and on the court's order disclose, an account of each importation and each sale of any article the design of which is the design disclosed in exhibit 1 in the application for interlocutory relief or any
respect of each importation, and then follow the same words as fraudulent or obvious imitation of that design, including in in the earlier one.
Notion for security for damages which may be ordered to be paid by the applicantsi in accordance with their undertakings.
I am not at all sure, but that may just be forgetfulness or ignorance, that the law does countenance an application of this kind. But assuming that it does, and assuming that the principles apply which obtain in applications for security for costs, I refuse the motion on the ground that the quantum of the possible damages has not been shown at all. If you guess at it, it looks as though it might be in the order of something under $5,000 and the evidence does not persuade me that there is any need to secure the payment of that amount by these applicants, there being insufficient evidence to raise an inference that they would be unable to meet an order in pursuance of the undertaking. Therefore the motion is dismissed.
Order that the motion on the part of the first and third respondents, of which notice is dated 29 September 1993, be dismissed.
There will be an order that the applicant's costs of the sald motion be paid by the first and third named
respondents. I certify that this and the 6

preceding pages are a true copy of the Reasons for Judgment of the Honourable Mr. Justice Jenkinson.

c,-

& Associate

Dated: 19 November, 1993

Counsel for the Applicants	Mr. J. Kewley
Counsel for the 1st and 3rd	Mr. A. Bristow
Respondents
Counsel for the 4th, 5th and	Mr. C. Jordan
6th Respondents
Solicitors for the Applicants	Messrs. Peter Eggleston and Associates
Solicitors for the 1st and 3rd	Messrs. Frederick Owen
Respondents	and Associates Pty.

Solicitors for the 4th, 5th and	:	Messrs. Davies Ryan De
6th Respondents	Boos
Dates of Hearing	18 and 19 November,

JUDGES' CHAMBERS,

FEDERAL COURT OF AUSTRALIA,

450 LITTLE BOURKE STREET,

MELBOURNE 3000

1 December, 1993

Ms. Jan Costello,
Principal Registry,
Federal Court of Australia,
Level 16,
Law Courts Building,

Queens Square,

SYDNEY. N.S.W. 2000.

Dear Ms. Costello,

Re: Com~uterised Leaal Information Retrieval System

I enclose the following word processing disk (judgment included) for inclusion in the data base of Federal Court Judgments.

1.   Allen John Wilson and Anor. v. Hollywood Toys (Australia) Pty. Ltd. & Ors. - VG326 of 1993 - Single Judge - Jenkinson J. - Canberra - 19 November, 1993.

Please return the disk when finished with for further use.

Yours faithfully,

L f5-J.Ax

Lois Bendall
Secretary to Mr. Justice Jenkinson