Lexmark International, Inc. v Boomerang Imaging Supplies Pty Ltd [2001] FCA 833

Lexmark International, Inc. v Boomerang Imaging Supplies Pty Ltd [2001] FCA 833

Both the print tests and the weighing of cartridges were experiments within Order 58 Rule 31. The print tests were repeatable and no sufficient reason was shown at this stage to admit them without compliance with the rule. The weighing procedures appeared impractical to repeat because toner would be consumed, so leave would be given for evidence of the weighing results if the respondents were given an opportunity to examine and test the weighing device and particulars of the precise weighing procedure. Future cartridge experiments should be particularised in advance and conducted in the presence of the respondents' representatives if requested.

Jurisdiction
Australia
Judgment Date
23 May 2001
Procedural Posture
Practice and Procedure in Proceedings Alleging Passing Off, Trade Mark Infringement and Contravention of S 52 of the Trade Practices Act 1974 Concerning Toner Cartridges / Interlocutory Determination Concerning Objection to Affidavit Evidence and Directions Under Order 58 Rule 31 of the Federal Court Rules
Outcome
Directions made; costs of the day ordered to be costs of the proceeding.
Legal Topics
['experimental Proof' 'admissibility of Evidence' 'print Tests' 'weighing of Cartridges' 'order 58 Rule 31 of the Federal Court Rules' 'opinion Evidence']
['practice and Procedure' 'evidence' 'trade Marks' 'trade Practices'] ['experimental Proof' 'admissibility of Evidence' 'print Tests' 'weighing of Cartridges' 'order 58 Rule 31 of the Federal Court Rules' 'opinion Evidence']

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Procedural Posture

Practice and Procedure in Proceedings Alleging Passing Off, Trade Mark Infringement and Contravention of S 52 of the Trade Practices Act 1974 Concerning Toner Cartridges / Interlocutory Determination Concerning Objection to Affidavit Evidence and Directions Under Order 58 Rule 31 of the Federal Court Rules

Legal Issues

  1. 1 ['Whether print tests performed on toner cartridges constituted experiments or experimental proof within Order 58 Rule 31 of the Federal Court Rules.' 'Whether weighing toner cartridges constituted experiments or experimental proof within Order 58 Rule 31 of the Federal Court Rules.' 'Whether leave should be granted under Order 58 Rule 31(2) to admit evidence derived from the print tests and weighing procedures despite non-compliance with the rule.' 'What directions should be made for any future cartridge testing experiments.']

Ratio Decidendi

Both the print tests and the weighing of cartridges were experiments within Order 58 Rule 31. The print tests were repeatable and no sufficient reason was shown at this stage to admit them without compliance with the rule. The weighing procedures appeared impractical to repeat because toner would be consumed, so leave would be given for evidence of the weighing results if the respondents were given an opportunity to examine and test the weighing device and particulars of the precise weighing procedure. Future cartridge experiments should be particularised in advance and conducted in the presence of the respondents' representatives if requested.

Court Disposition

Directions made; costs of the day ordered to be costs of the proceeding.

Orders

  • ['The applicants serve on the respondents, no later than five days before the date on which it is proposed, particulars of any experiment, by way of testing cartridges, together with particulars of the facts that the applicants assert, will be established by those tests.' 'Any such test carried out pursuant to Order...