Alulite Pty Ltd v Harris Scarfe Ltd & Ors [1984] FCA 248

, ae FURTHER DISTRIBUTION UNNECESSARY JUDGMENT No 24K | St

IN THE FEDERAL COURT OF AUSTRALIA )

) SOUTH AUSTRALIA DISTRICT REGISTRY )

GENERAL DIVISION )

S.A. No. G.

BETWEEN :

ALULITE PTY. LIMITED

Applicant

HARRIS SCARFE LIMITED, HARRY'S HOME CENTRE trading as HARRY'S HARDWARE

2 AUGUST, 1984 KEELY J.

EX TEMPORE REASONS FOR JUDGMENT

1. REVISED FROM TRANSCRIPT

IN _ THE FEDERAL COURT OF AUSTRALIA

) ) SOUTH AUSTRALIA DISTRICT REGISTRY ) S.A. No. G. 26 of 1984 ) GENERAL DIVISION )

ALULITE PTY. LIMITED

Applicant

AND :

HARRIS SCARFE LIMITED, HARRY'S HOME CENTRE trading as HARRY'S HARDWARE

Respondents

2 AUGUST, 1984 KEELY J.

EX TEMPORE REASONS FOR JUDGMENT

The applicant yesterday sought leave to amend the application by adding an additional claim for interlocutory

relief in the following terms

"(c) An injunction pursuant to section 80 of the Trade Practices Act, restraining the respondents,

whether by themselves, their servants or agents, from engaging in any conduct constituting a contravention of section 52 of that Act."

2. That application was opposed but I have decided that leave should be granted to so amend the application, although the form of the injunction would require consideration if the Court decided that an interlocutory injunction should be

granted.

It should perhaps be added that leave was granted

yesterday to the applicant by consent to amend the

application by deleting the words "second respondent" wherever occurring, and substituting the words "the respondents". The appropriate amendments to the original

application are to be made by the applicant's solicitors, and leave is granted to the applicant to make consequential

amendments to the application by reason of the amendment (see paragraph (c) in the form in which leave has just been

granted this morning and compare 1t with paragraph 4 of the

original application).

I do not consider that any useful purpose would be served by reserving my decision on the application for interlocutory injunctions. Having read all of the material filed before the hearing commenced, and having heard yesterday afternoon the respective cases for both the applicant and the respondents, I reconsidered the whole matter overnight, and of course I have heard Mr. Johnson's

reply this morning and raised certain matters with him.

The application for an interlocutory injunction

restraining the respondents from infringing the applicant's

3. alleged trade mark was not pursued in this hearing. I have reached the conclusion that the application for interlocutory injunctions restraining the respondents from engaging in

conduct in contravention of section 52 of the Trade Practices

Act, and restraining the respondents from passing off their

business and goods and services must be dismissed.

Some of the matters pointing to that conclusion were put to the applicant yesterday. It is not necessary to give elaborate reasons. There was mo dispute hetween the parties as to the relevant principles which are set out by

Mr. Justice Fisher in Cue Designs Pty. Limited v Playboy

Enterprises Pty. Limited and others (1982) 45 ALR 535, and

the cases thee cited by his Honour at 536 and 537.

It is not necessary to refer to all of the

criticisms made by the respondents' counsel as to the inadequacy of the evidentiary material upon which the

application is based, including the paucity of the material

as to the applicant's "substantial reputation and goodwill",

a matter to which Mr. Johnson has just referred this morning.

The applicant's affidavits include reference to events in December 1983 and April 1984 and to "a display at the Expo in May" of 1984. However, the respondent's material revealed that its solicitors by letter dated 12 June, 1984, written without prejudice in response to earlier correspondence from the applicant, agreed to a request by the

applicant "to cease using the word 'Alutile' in connection

4. with the sale, supply and installation of aluminium doors and

windows."

The applicant has contended that the respondents have not adhered to the intention expressed in the solicitor's letter of 12 June, 1984. That contention leads to a consideration of paragraph 10 of the affidavit of Mr. La

Vincente, sworn 30 July, 1984, which was in the following

terms :

"10. As recently as Friday, 27th day of July 1984,

I visited the premises referred to in paragraph 9 herein (ie the respondents' premises). In what appears to be a small display area to the right of

the door of the said office complex, there isa display of aluminium windows. There are also photographs of some homes, which photographs appear

to be emphasizing the roofs of those homes. There was also a sign on the floor with the word 'Alutile' appearing on it."

It will be noted that there are four separate statements in

that paragraph, and that there 1s nothing said expressly as to where the "sign on the floor with the word 'Alutile'

appearing on it" was in relation to the display of aluminium

windows.

5. Mr. Johnson on behalf of the applicant has urged the Court to read an implication into paragraph 10 to the effect that the sign was closely associated with the

aluminium windows on display, but I am not prepared to do so.

In so deciding I have had regard to the facts that : (1) an answering affidavit by Mr. Hollingsworth, sworn and

filed by the respondents on 31 July, 1984, referred

specifically to paragraph 10 of Mr. La Vincente's affidavit, and (2) a further affidavit was sworn and filed on behalf of the applicant yesterday, 1 August, 1984, which referred to

some matters dealt with in Mr. Hollingsworth's affidavit

sworn 31 July, 1984.

However, the applicant did not file any affidavit elaborating upon the statements in paragraph 10 of Mr. La Vincente's affidavit of 30 July as to "a sign on the floor with the word 'Alutile' appearing on it". That omission must be considered in the light of the general tenor of the statement in Mr. Hollingsworth's affidavit, namely that the sign appeared in a context of roofing tiles. Mr. Hollingsworth's affidvit also stated expressly that the word

"Alutile" in the sign was followed by the words "number 1 in

S.A. The Great Australian Roof".

6. Having considered all of the evidence, the applicant has failed to satisfy me that, if the evidence

remains in the present state, the applicant has "a fair

chance of success" at the trial, that is success in obtaining an injunction either restraining conduct by the respondents

in contravention of section 52 of the Trade Practices Act, or

restraining them from passing off their business or goods or

services of the applicant, or in one of the other ways set

out in paragraph 5 of the application.

The applicant's material also fails to satisfy me that the inconvenience or injury which the applicant would be likely to suffer, if an injunction were refused, outweighs the injury or inconvenience which the respondents would

suffer if an injunction were granted.

Accordingly, the application for interlocutory injunctions must be refused. That refusal 1s of course based

upon the present evidence; the evidence at the trial may well

be guite different.

Mr. Gray yesterday asked for costs. I have decided

to reserve the question of costs on the application for interlocutory injunctions for consideration by the trial judge in due course when the whole picture will presumably be

before him.

The formal orders of the Court are :

7.

i. The application for interlocutory

injunctions 1s dismissed.

2. The costs of the application are

reserved.

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