FEDERAL COURT OF AUSTRALIA
Sebel Furniture Limited v Acoustic & Felts Pty Limited [2009] FCA 6
TRADE MARKS – alleged infringement of shape trade mark in a plastic chair by rival trader – whether rival trader used the shape of the registered trade mark as a trade mark – meaning of use as a trade mark – whether goods themselves can constitute a trade mark – whether the trade mark must have a separate identity from that of the goods – whether the features of the shape travel beyond the functional and technical requirements inherent in the goods – whether the rival trader’s chair is deceptively similar to the applicant’s chair – no prima facie case of trade mark infringement – balance of convenience and justice against the grant of an injunction – interlocutory injunction refused.
TRADE PRACTICES – misleading and deceptive conduct – s 52 of the Trade Practices Act – whether the promotion and supply of a one piece moulded plastic chair by a rival trader is likely to deceive potential purchasers into believing the rival trader’s product was put out by or associated with the applicant or that the rival trader is itself associated with the applicant – the competing products were sufficiently differentiated – no prima facie case for interlocutory injunction to restrain promotion and supply of the new product – balance of convenience and balance of justice against grant of interlocutory injunction in any event – interlocutory injunction refused.
TRADE PRACTICES – misleading and deceptive conduct – s 52 of the Trade Practices Act – whether statement that the respondent’s one piece moulded plastic chair is the first chair to conform to a UK standard carries with it or implies that it is the only chair which conforms to that standard – statement held to be misleading – interlocutory injunction granted.
COSTS – respondent mostly successful in resisting interlocutory relief – applicant to pay respondent’s costs of interlocutory hearing.
Trade Marks Act 1995 (Cth) (As amended), ss 87, 88, 120(1)
Trade Practices Act 1974 (Cth) (As amended), s 52
Copyright, Designs and Patents Act 1988 (UK)
American Cyanamid Co v Ethicon Ltd [1975] AC 396 cited
Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 followed and applied
Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 followed and applied
Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 followed and applied
Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 followed and applied
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 followed and applied
Global Brand Marketing Inc v YD Pty Limited (2008) 76 IPR 161 applied
Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 followed and applied
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 followed and applied
Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited (2008) 166 FCR 312 cited
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 followed and applied
Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia (No 3) (1998) 195 CLR 1 followed and applied
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 followed and applied
Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 followed and applied
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 followed and applied
Spry, The Principles of Equitable Remedies, 5th edn, 1997 cited
Spry, The Principles of Equitable Remedies, 7th edn, 2007 cited
SEBEL FURNITURE LIMITED (ACN 000 378 996) v ACOUSTIC & FELTS PTY LIMITED (ACN 001 636 004)
NSD 1876 of 2008
FOSTER J
12 JANUARY 2009
SYDNEY
| IN THE FEDERAL COURT OF AUSTRALIA |
|
| NEW SOUTH WALES DISTRICT REGISTRY | NSD 1876 of 2008 |
| SEBEL FURNITURE LIMITED (ACN 000 378 996) Applicant
| |
| AND: | ACOUSTIC & FELTS PTY LIMITED (ACN 001 636 004) Respondent
|
| JUDGE: | |
| DATE OF ORDER: | 12 JANUARY 2009 |
| WHERE MADE: | SYDNEY |
THE COURT NOTES THAT:
1. The applicant by its legal representative undertakes to the Court:
(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 undertaking set out in par 2 below or by the operation of the interlocutory order set out in par 3 below or any continuation (with or without variation) thereof; and
(b) to pay the compensation referred to in (a) to the person there referred to,
2. Upon the applicant giving to the Court the undertaking noted in par 1 above, the respondent by its legal representative undertakes to the Court that, without admissions and up to the conclusion of the final hearing of these proceedings or until further order, it will not whether by itself, its servants, officers or agents, make any representations in the following terms or to the following effect in trade or commerce in Australia in relation to chairs, namely that:
(a) No chair in Australian classrooms has been manufactured to a European Standard;
(b) The Titan chair is the only one-piece polypropylene chair that has attained EN 1729 Part 1 and Part 2 Certification; and
(c) EN 1729 Part 1 supersedes all other standards in Australia for chairs in classrooms.
THE COURT ORDERS THAT:
3. Upon the applicant giving to the Court the undertaking noted in par 1 above, up to the conclusion of the final hearing of these proceedings or until further order, the respondent by itself, its servants, officers and agents, be restrained from representing in trade or commerce in Australia in relation to chairs that:
(a) The Titan chair is the only plastic sidechair available in Australia which currently conforms to UK standards EN 1729 – Parts 1 and 2 (2006); and
(b) The Titan chair is the first 1-piece chair that conforms to UK standards EN 1729 – Parts 1 and 2 (2006).
4. The applicant’s claim for interlocutory relief otherwise be dismissed.
5. The applicant pay the respondent’s costs of and incidental to the interlocutory hearing which took place before the Court on 23 December last.
6. At the expiration of twenty-eight (28) days from the date hereof the exhibits may be returned.
THE COURT DIRECTS THAT:
7. The parties’ legal representatives confer as soon as practicable with a view to preparing a set of directions which the Court can make by consent, such directions being designed to have the proceedings ready for final hearing by no later than the second week of March 2009.
8. The parties’ legal representatives confer as soon as practicable with a view to being able to inform the Court of:
(a) The likely length of the final hearing; and
(b) The dates when the parties and their representatives are available to conduct the final hearing.
9. The proceedings be listed for directions before Foster J on Thursday, 5 February 2009 at 9.30 am at which time it is intended that the proceedings will be fixed for final hearing and that all necessary directions will be made in order to ensure that the proceedings are ready for final hearing within the time frame outlined in par 7 above.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.
| IN THE FEDERAL COURT OF AUSTRALIA |
|
| NEW SOUTH WALES DISTRICT REGISTRY | NSD 1876 of 2008 |
| BETWEEN: | SEBEL FURNITURE LIMITED (ACN 000 378 996) Applicant
|
| AND: | ACOUSTIC & FELTS PTY LIMITED (ACN 001 636 004) Respondent
|
| JUDGE: | FOSTER J |
| DATE: | 12 JANUARY 2009 |
| PLACE: | SYDNEY |
REASONS FOR JUDGMENT
Introduction
1 For just over 60 years, the applicant (Sebel) has carried on business in Australia. For most of that time, that business has included the design, manufacture and supply of chairs moulded from plastic materials. Sebel’s products are also sold overseas. It exports to over 70 countries worldwide.
2 Sebel’s product range is extensive and varied. It produces seating and furniture for restaurants, cafes, stadia, auditoriums, conference venues, schools, colleges, universities, hospitals, aged care facilities and government departments.
3 Sebel is the largest distributor of furniture to educational institutions in Australia. It has developed a specific range of products designed to meet the needs of schools, TAFE colleges and universities. It supplies both government schools and private schools. It has supply contracts with several State governments in Australia.
4 One of the key products supplied by Sebel in its range of furniture specifically designed for the education sector is a sidechair known as the Postura chair. Sebel has supplied Postura chairs since 1996.
5 The respondent trades under the business name “Reed Furniture” (Reed Furniture). It also has other businesses. It acquired the business of Reed Furniture in early January 2006. Reed Furniture has also been in business in Australia for many years. It has traditionally supplied tubular steel chairs and other tubular steel furniture. It has supplied these items to schools, universities, local councils, government departments and churches. Tubular steel chairs are very different in construction, shape and appearance from one piece moulded polypropylene chairs of which the Postura chair is a well-known example.
6 Reed Furniture has recently commenced to import into Australia and to supply and distribute here a moulded plastic chair known as the Titan chair. The Titan chair is intended to be supplied to the same educational market which, for many years, has been supplied with Sebel’s Postura chairs.
7 Thus, Reed Furniture intends to compete directly with Sebel in the market for the supply of chairs and other furniture to the education sector in Australia.
8 Sebel is the Registered Owner of Trade Mark No 1054076 in respect of a shape (Sebel’s trade mark). Sebel’s trade mark is registered in Class 20 in respect of sidechairs moulded from plastics materials. Sidechairs are chairs without arms. The trade mark is subject to the following endorsement, namely:
Provisions of sub-section 41(5) applied.
9 The trade mark was registered with effect from 6 May 2005. The shape in respect of which the above registration subsists is as follows:
10 In the present proceedings, Sebel alleges that the respondent has infringed Sebel’s trade mark by using the shape in respect of which Sebel’s trade mark is registered as a trade mark upon or in relation to the Titan chair. Sebel also alleges that the respondent has engaged in passing off and in conduct which constitutes a contravention of s 52 of the Trade Practices Act 1974 (Cth) (As amended) (the Trade Practices Act)by promoting, offering to supply and supplying the Titan chair.
11 Sebel also alleges that, by reason of certain statements made on its Reed Furniture website and in one of its current Reed Furniture sales brochures, the respondent has represented, and continues to represent, that:
(a) No chair in Australian classrooms has been manufactured to a European Standard (such as EN1729).
(b) The Titan chair is the only on[e]-piece polypropylene chair that has attained EN1729 Part 1 and Part 2 Certification.
(c) The Titan chair is the only chair on offer in Australia which passes EN1729 Part 1 and Part 2 Certification.
(d) EN1729 Part 1 supersedes all other standards in Australia for chairs used in classrooms.
(See par 20 of the Statement of Claim).
12 Sebel contends that each of those representations was false at the time that it was made and that each of those representations will be false if they continue to be made.
13 The application with which I am presently dealing is an application for interlocutory relief in which Sebel seeks the following orders against the respondent:
1. An order that, until further order, the respondent whether by itself, its servants or agents, be restrained from supplying or offering to supply, and from promoting by any means the supply of, the Titan chair.
2. An order that, until further order, the respondent, whether by itself, its servants or agents, be restrained from making each of the following representations in trade or commerce in Australia in relation to chairs:
(a) No chair in Australian classrooms has been manufactured to a European Standard.
(b) The Titan chair is the only one-piece polypropylene chair that has attained EN1729 Part 1 and Part 2 Certification.
(c) EN1729 Part 1 supersedes all other standards in Australia for chairs used in classrooms.
(d) The Titan chair is the first one-piece chair that conforms to EN1729 Parts 1 and 2 in the United Kingdom.
14 The relief sought in sub-par (d) of par 2 was added to Sebel’s application for final relief and to its claim for interlocutory relief at the commencement of the interlocutory hearing. No similar amendment has yet been made to the Statement of Claim. Nothing turns on this at the moment.
15 At the hearing of Sebel’s application for interlocutory relief, the respondent informed me that it was prepared to offer an undertaking in respect of the subject matter of sub pars (a) to (c) of par 2 of the orders sought by Sebel. The respondent had also communicated that offer to Sebel shortly before the commencement of the interlocutory hearing.
16 After that hearing was concluded, the respondent offered an undertaking to the Court that, without admissions and up to the conclusion of the final hearing of the proceedings or until further order, whether by itself, its servants, officers or agents, it will not make any representations in the following terms or to the following effect in trade or commerce in Australia in relation to chairs, namely that:
(a) No chair in Australian classrooms has been manufactured to a European Standard;
(b) The Titan chair is the only one-piece polypropylene chair that has attained EN 1729 Part 1 and Part 2 Certification; and
(c) EN 1729 Part 1 supersedes all other standards in Australia for chairs in classrooms.
17 The precise text of the undertaking which I have set out above varies slightly from the form of undertaking actually offered to the Court by the respondent after the conclusion of the interlocutory hearing. However, in my view, the substance of what was offered and what is recorded in [16] above is the same. In order to ensure that there is no misunderstanding as to the precise terms of the respondent’s undertaking, I intend to seek an undertaking to the Court from the respondent in the terms recorded above when these Reasons for Judgment are delivered.
18 In light of the fact that the respondent has offered an undertaking to the Court in respect of the alleged misrepresentations referred to in sub-pars (a), (b) and (c) of par 2 of Sebel’s claim for interlocutory relief, the only orders which Sebel continues to seek are those claimed in par 1 and in par 2(d) of that claim. The respondent resists the making of either of these orders.
The Relevant Principles (Interlocutory Injunctions)
19 In Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199, a majority of the High Court held that, where an interlocutory injunction is sought (inter alia) in respect of private rights, it is necessary to identify the legal or equitable rights which are to be determined at the trial and in respect of which the final relief is sought. Their Honours who comprised the majority made clear that the final relief sought need not be injunctive in nature. See [8] to [21] (pp 216–220) (per Gleeson CJ); [59] to [61] (pp 231–232) (per Gaudron J); and [86] to [92] (pp 239–242); [98] to [100] (pp 244–246); and [105] (p 248) (per Gummow and Hayne JJ). At [10] (p 216), Gleeson CJ also specifically cited with approval Spry, The Principles of Equitable Remedies, 5th edn, 1997 (pp 446–456).
20 In his Reasons for Judgment, at [13] (p 218), Gleeson CJ expressly approved the following passage from the Reasons for Judgment of Mason ACJ in Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153:
In order to secure such an injunction the plaintiff must show (1) that there is a serious question to be tried or that the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief; (2) that he will suffer irreparable injury for which damages will not be an adequate compensation unless an injunction is granted; and (3) that the balance of convenience favours the granting of an injunction.
21 These remarks of Mason ACJ which were approved by Gleeson CJ echo the observations made by the High Court in Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 at 622–623.
22 In Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 at [65] (pp 81–82), when referring to the well-known passage in Beecham Group Ltd v Bristol Laboratories Pty Ltd 118 CLR 618 at 622–623, Gummow and Hayne JJ said:
By using the phrase “prima facie case”, their Honours did not mean that the plaintiff must show that it is more probable than not that at trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. That this was the sense in which the Court was referring to the notion of a prima facie case is apparent from an observation to that effect made by Kitto J in the course of argument [(1968) 118 CLR 618 at 620]. With reference to the first inquiry, the Court continued, in a statement of central importance for this appeal [(1968) 118 CLR 618 at 622]:
“How strong the probability needs to be depends, no doubt, upon the nature of the rights [the plaintiff] asserts and the practical consequences likely to flow from the order he seeks.”
23 At [70] to [72] (pp 83 and 84), their Honours went on to explain the similarities and differences between the test expounded in Beecham Group Ltd v Bristol Laboratories Pty Ltd 118 CLR 618 and the test articulated in American Cyanamid Co v Ethicon Ltd [1975] AC 396 as follows:
70 When Beecham and American Cyanamid are read with an understanding of the issues for determination and an appreciation of the similarity in outcome, much of the assumed disparity in principle between them loses its force. There is then no objection to the use of the phrase “serious question” if it is understood as conveying the notion that the seriousness of the question, like the strength of the probability referred to in Beecham, depends upon the considerations emphasised in Beecham.
71 However, a difference between this Court in Beecham and the House of Lords in American Cyanamid lies in the apparent statement by Lord Diplock that, provided the court is satisfied that the plaintiff's claim is not frivolous or vexatious, then there will be a serious question to be tried and this will be sufficient. The critical statement by his Lordship is “[t]he court no doubt must be satisfied that the claim is not frivolous or vexatious; in other words, that there is a serious question to be tried” [[1975] AC 396 at 407]. That was followed by a proposition which appears to reverse matters of onus [[1975] AC 396 at 408]:
So unless the material available to the court at the hearing of the application for an interlocutory injunction fails to disclose that the plaintiff has any real prospect of succeeding in his claim for a permanent injunction at the trial, the court should go on to consider whether the balance of convenience lies in favour of granting or refusing the interlocutory relief that is sought.
(Emphasis added.)
Those statements do not accord with the doctrine in this Court as established by Beecham and should not be followed. They obscure the governing consideration that the requisite strength of the probability of ultimate success depends upon the nature of the rights asserted and the practical consequences likely to flow from the interlocutory order sought.
72 The second of these matters, the reference to practical consequences, is illustrated by the particular considerations which arise where the grant or refusal of an interlocutory injunction in effect would dispose of the action finally in favour of whichever party succeeded on that application [See the judgment of McLelland J in Kolback Securities Ltd v Epoch Mining NL (1987) 8 NSWLR 533 at 535-536 and the article by Sofronoff, “Interlocutory Injunctions Having Final Effect”, Australian Law Journal, vol 61 (1987) 341.95]. The first consideration mentioned in Beecham, the nature of the rights asserted by the plaintiff, redirects attention to the present appeal.
24 At [10] to [12] I have summarised Sebel’s claim for final relief. At [13] I have set out the claim for interlocutory relief with which these Reasons deal. Sebel’s application for interlocutory relief is in aid of the private rights to which I have referred in [10] to [12] above.
25 The remaining questions identified by Mason ACJ in Castlemaine Tooheys Ltd v South Australia 161 CLR 148 require Sebel to show that:
(a) it will suffer irreparable injury for which damages will not be adequate compensation unless an injunction is granted; and
(b) the balance of convenience favours the granting of an injunction.
26 The first of these matters involves an assessment by the Court as to whether the claimant would, in all material respects, be in as good a position if he were confined to his damages remedy, as he would be in if an injunction were granted (see the discussion of this aspect in Spry, The Principles of Equitable Remedies, 7th edn, 2007 at pp 383–389; at pp 397–399; and at pp 457–462).
27 The second of these matters requires the Court to exercise a discretion.
28 In exercising that discretion, the Court is required to assess and compare the prejudice and hardship likely to be suffered by the defendant, third persons and the public generally if an injunction is granted, with that which is likely to be suffered by the claimant if no injunction is granted. In determining this question, the Court must make an assessment of the likelihood that the final relief (if granted) will adequately compensate the claimant for the continuing breaches which will have occurred between the date of the interlocutory hearing and the date when final relief might be expected to be granted.
29 In order to address the irreparable injury question, the balance of convenience and the balance of justice in the present case, it is necessary to consider the nature and strength of Sebel’s case and the circumstances in which the respondent decided to compete with Sebel by importing the Titan chair into Australia and by promoting and selling that chair in this country.
30 It is also necessary to consider and evaluate the impact that the grant or refusal of an injunction will have or is likely to have on third persons and the public generally.
31 In Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia (No 3) (1998) 195 CLR 1 at [65] and [66] (pp 41–43), Brennan CJ and McHugh, Gummow, Kirby and Hayne JJ, in a joint judgment, expressly adopted a passage from Spry, The Principles of Equitable Remedies (5th edn, 1997, at pp 402–403), which may be summarised as follows:
(a) In assessing the balance of convenience in an interlocutory injunction application, the interests of the public and third persons are relevant and have more or less weight according to other material circumstances;
(b) Whether those interests tend to favour the grant or the refusal of an injunction in any given case depends upon the circumstances of that case; and
(c) Hardship visited upon third persons or the public generally by the grant of an interlocutory injunction will rarely be decisive.
The Facts
32 I will summarise the relevant facts under the following headings:
· Sebel’s Postura Chair
· The Titan Chair
· Sebel’s Knowledge of the Titan Chair and Alleged Delay in Bringing its Application
· The Sebel Postura Plus Chair
· The Letter of Demand and Reed Furniture’s Response
· The Balance of Convenience
Sebel’s Postura Chair
33 Sebel’s Postura chair was developed by Sebel in the period 1992 to 1995. It was the product of extensive research carried out by Sebel in this period. The main design principles and special features sought to be reflected in Sebel’s range of Postura chairs are illustrated by the following extract from Sebel’s 1999 catalogue for the supply by it to NSW Government departments and other NSW authorities and institutions of education and training furniture under NSW Supply Contract 992/1250:
34 The particular attributes of the Postura chair which Sebel promoted in the above extract as advantageous and also perhaps as differentiating the chair from other like products are contained in the notes set out around the image of the chair in that extract. These notes are themselves directed, one by one, to various parts of the chair. Some of these features arguably may not be dictated by the functional requirements of the chair (for example, the splayed legs; the aperture in the back of the chair; the moulded top of the back of the chair suggesting a more traditional two-piece construction of the back of the chair; the waterfall front edge; the shape that lends itself to safe, secure stacking and the one-piece design). Other features may simply be the result of the functions which the chair is required to perform. These are matters to which I shall return later in these Reasons for Judgment.
35 In the same catalogue, under a photo of school desks, tables and Postura chairs is written the following:
Sebel has undertaken more than 3 years detailed research into the furniture requirements of school children taking into account growth rates, height variations, racial differences, sitting behaviours and the science of ergonomics. The result, a range of furniture which is designed to promote good posture and improved learning – that’s the Sebel difference.
36 The Postura chair figures quite prominently in Sebel’s advertising and promotional literature for educational furniture.
37 The Postura chair was formerly the subject of an Australian Registered Design (Registration No AU 115585 S). That design was first registered on 10 November 1992. It expired on 13 March 2008.
38 As I have already mentioned at [9] above, Sebel’s trade mark was registered with effect from 6 May 2005 before its Registered Design expired.
39 There are nine different models in Sebel’s range of Postura chairs. Each model embodies the same basic design and shape. All models are moulded chairs made from polypropylene. The only difference between models is the width and height of the seat in the chair. Different seat widths and heights are included within the range in order to meet the needs of persons of different heights and sizes. Across the range there are presently eight different colours available. Not all sizes are available in all colours. Half of the colour range comprises bright colours (red, yellow, blue and green).
40 The name Sebel is embossed on the back of each Postura chair, just below the aperture, in raised letters approximately 10 mm in height. This embossing is quite prominent.
41 A sample of a Postura chair with a seat height of 445 mm was tendered in evidence as Exhibit E.
42 I have attached to these Reasons for Judgment as Annexure A a 2002 Product Data Sheet in respect of the Postura chair known as the Postura 265 sidechair. The Postura 265 sidechair is the smallest chair in the Postura chair range. The Data Sheet which I have attached accurately depicts the Postura chair. That Sheet also provides certain pertinent data concerning that particular model of Postura chair. A similar Data Sheet has been produced by Sebel in respect of each model in the range.
43 The evidence shows that Sebel’s Postura chairs are mostly sold to the education sector for use in classrooms, lecture rooms and libraries. Essentially, they are intended to be used as desk chairs by students of all ages, shapes and sizes. They can also be used with tables (such as those larger tables found in some school, university and Municipal libraries).
44 The likely purchasers of this type of chair are officers of government agencies or persons who are given the responsibility for organising the purchase of such chairs on behalf of individual schools (both government and private), universities, colleges, local councils and other institutions and who do so either on a one-off basis or under the umbrella of a general State-wide procurement contract. By and large, those who make such purchasing decisions will have knowledge of Sebel and its Postura range of sidechairs and of any special position which Sebel might enjoy as a preferred or nominated contractor under any relevant government procurement contract. Such persons would generally be expected to be able to recognise Sebel’s Postura chair and to be able to differentiate that chair from other similar products. They would not generally select the desired chair from the floor of a retail store or warehouse. Nor would they make their selection based solely on the chair’s appearance. They would generally know the identity of the supplier of the chair and probably the manufacturer of the chair. They would generally have quite a lot of technical information about the chair – information such as that which appears on Sebel’s Product Data Sheet for the Postura range of chairs.
45 There is no evidence to suggest that members of the public are able to purchase Postura chairs individually or even in small numbers from retailers.
46 The price at which Sebel sells Postura chairs ranges from $17.00 to $39.00. The price at which a particular Postura model is sold depends principally on the size of the chair. The smaller chairs cost less. Price also depends to some extent on the customer’s location and on the quantity of product ordered.
47 Postura chairs were first sold in Australia during the Financial Year ended 30 June 1996. Sebel has manufactured, promoted, marketed, advertised and sold Postura chairs continuously since that time. The evidence shows that the promotion, marketing and advertising of the Postura chair has been extensive and continuous since 1996.
48 Postura chairs are supplied by Sebel directly to end users as well as to resellers and distributors for on-sale to end users.
49 There was tendered before me as a Confidential Exhibit (Exhibit C) a spreadsheet which summarised the gross sales value in dollars and the quantities of Postura chairs sold in all relevant markets for the Financial Years ended 30 June 1999 to 30 June 2008 and also for some part of the 2008–2009 Financial Year. The financial information set out in that spreadsheet is confidential to Sebel. That spreadsheet demonstrates that the sale of the Postura chairs has generated significant revenue for Sebel over many years. The spreadsheet also establishes that sales of the Postura chairs are effected across many markets both in Australia and overseas. It is not necessary for present purposes to set out further details of the amounts or the quantities involved.
50 Sebel has been the nominated contractor under two successive supply contracts with the NSW Government covering the period from 1999 to 30 June 2009. The first of these contracts was exclusive to Sebel. The second has been shared with another supplier, Corporate Express Australia Limited.
51 The current contract (No 048/1250) is due to expire on 30 June 2009 and is to be succeeded by Department of Commerce – NSW Contract No 1006 Workplace Supplies (Contract No 1006). Sebel has submitted a tender for Contract No 1006. Tenders for that contract have now closed. That contract is due to commence on 1 July 2009 and is presumably for a term of some years. The successful tenderer is likely to be selected in January or February 2009, with the identity of that tenderer announced publicly soon thereafter.
52 One of the products included in Sebel’s tender for Contract No 1006 is the Postura chair. It was included in response to the student chair required by the Department of Education and Training in the Request for Tender for Contract No 1006.
The Titan Chair
53 The Titan Chair is a one piece polypropylene classroom chair designed to meet the same education sector market as has been supplied by Sebel with its Postura chairs. There are six models across the range of Titan chairs. There are six colours used in the range. Not all colours are used on all models. The colours used include certain bright colours – red, yellow, blue and green. Those colours are similar to but not the same as the corresponding bright colours used by Sebel on its Postura chairs.
54 The seat heights of the six models of Titan chair differ from most of the corresponding models of the Postura chair. Only two models of the Titan chair have the same seat height as one of the models in the Postura range of chairs. The differences in seat heights as between the equivalent other models are, however, relatively small. They range from 5 mm to 15 mm.
55 There is embossed on the back of the Titan chair, just below the aperture, in raised form, the Titan logo and the word Titan. The word Titan is approximately 45 mm in height and the logo is slightly larger. These are not prominent stampings and are noteasily noticed. This is because the degree to which the letters rise above the surface of the back of the chair is small. To the naked eye, it appears to be less than the embossing of the name of Sebel on the Postura chair.
56 There is also embossed on the Titan chair underneath the seat and at the front of the seat the following:
TITAN
Titan is a trademark of Titan Furniture UK Ltd
www.titanfurniture.co.uk
Titan’s logo appears to the left of the larger and bolder of the references to Titan.
57 I have attached as Annexure B to these Reasons for Judgment page 2 of Reed Furniture’s current Titan chair brochure which accurately depicts the Titan chair.
58 Samples of the Titan chair were tendered in evidence (Exhibit F and Exhibit 3).
59 The Titan chair is manufactured for a United Kingdom corporation called Titan Furniture (UK) Limited (Titan). The product appears to be made in China. It was first supplied in about July 2007. That supply took place in the United Kingdom. Titan chairs have also been supplied in Europe, although no details of the period during which such supplies have been made or the quantities involved were in evidence. Over 100,000 Titan chairs have been supplied in the United Kingdom and Europe over the 18 month period commencing about July 2007.
60 The Titan chair is the subject of a design registration under the Copyright, Designs and Patents Act 1988 (UK). That registration took effect on 30 March 2007.
61 In a Test Report dated 30 May 2007, SGS-CST Co Ltd certified that the Titan chair met certain requirements of the standards known as EN 1729-1:2006 and EN 1729-2:2006. The tests which led to these certifications were carried out in China. The evidence did not address the status or acceptability of these certifications in any of the United Kingdom, Europe or Australia.
62 Subsequently, by two certificates dated 27 March 2008 and 15 April 2008 respectively, a different testing organisation, FIRA International Limited, certified that the Titan chair satisfied the same standards. The tests which supported these certifications were apparently carried out in England.
63 The respondent has very recently entered into a distributorship arrangement with Titan. In early August 2008, the respondent imported 12 Titan chairs for display at an education sector trade show to be held at Caulfield Race Course, Victoria, on 8 and 9 August 2008. Importation of Titan chairs for sale began in earnest in October 2008.
64 The evidence before me as to the number and value of orders already obtained by the respondent in Australia is scant. As at the date of the interlocutory hearing before me, it would appear that a relatively small number of Titan chairs had been ordered by the respondent from Titan, that approximately three-quarters of those had been sold on some basis or another (although not yet supplied) and that some hundreds were due for delivery in December 2008 and January 2009.
65 The respondent submitted a tender for Contract No 1006 for a broad range or products including Titan chairs. That tender was not in evidence before me.
Sebel’s Knowledge of the Titan Chair and Alleged Delay in Bringing its Application
66 Mr Welsh, the General Manager of Sebel, testified as follows:
I first became aware of the subject matter of these proceedings on Tuesday 25 November 2008 when Alan Standen, the applicant’s Australasian Sales and Marketing Manager informed me that:
(a) Reed Furniture was offering for sale and selling a chair that was similar or identical to the applicant’s Postura chair;
(b) The chair being sold by Reed Furniture was being sold for $17.00, significantly less than the price at which the applicant sells its Postura chairs.
67 Mr Standen said that he first became aware that the respondent was intending to supply a chair which was similar to the Postura chair in about late October 2008 when a Mr Batger, the Managing Director of a fellow participant in the relevant part of the furniture industry, telephoned him and told him that fact.
68 Mr Standen said that he then immediately telephoned Mr Holmes, who is the General Manager of Reed Furniture, and asked Mr Holmes whether Reed Furniture did intend to supply such a chair. Mr Holmes confirmed that Reed Furniture did, in fact, intend to supply such a chair. Mr Standen told Mr Holmes that Sebel had subsisting intellectual property rights in the Postura chair and would take legal action to protect those rights should Reed Furniture attempt to sell a similar chair in Australia. Mr Holmes retorted that the respondent had taken legal advice and had been told that it could sell the Titan chair in Australia without infringing Sebel’s intellectual property rights.
69 There are competing versions of this telephone conversation given by Mr Standen, on the one hand, and Mr Holmes, on the other. However, the substance of the conversation as recounted by each of the witnesses was essentially the same. For present purposes, I cannot and need not resolve which version of this conversation is to be preferred.
70 Mr Standen did not see a sample of the Titan chair at this time. He had not seen a sample of that chair at any time before October 2008.
71 Mr Standen also testified that, after the conversation which he had with Mr Holmes in late October 2008, he regularly checked Reed Furniture’s website but did not find any indication on that website that Reed Furniture was in fact selling a chair similar to Sebel’s Postura chair until 24 November 2008. On that day, prompted by a call from one of Sebel’s Melbourne sales representatives, Mr Standen again checked the website and found that there was a brochure available on that website featuring the Titan chair.
72 On 25 November 2008, Mr Standen reported these events to Mr Welsh. On the same day, Mr Standen received an email from Ms Pope, who is a Sebel Account Manager. That email was also sent to Mr Welsh and to other Sebel employees and was in the following terms:
Good Morning Everyone,
While driving home last evening I had a call from my client Wendy Rasmussen from Dynamic Concepts. She was quite upset and asked “Why are Reeds Furniture selling our Posturas for $17.00 when she had been quoted $25.00 from our specials” It took me some time to explain to her that we don’t sell to Reeds at all, and I was sure there was no collaboration with them to sell our products. She was reluctant to believe me saying the chair is exactly the same and she believes it is the Postura chair. I again explained it was not our chair and we don’t sell the Postura to anyone who could in turn could sell it for $17.00. I also said it could only be the inferior product out of China and that Sebel has already stopped it being sold through places such as Office Max. I told her that the quality of that product is not a patch on our Postura and it has not been through the testing that our product has. In the end Wendy did believe me but her parting comment was “I guess I will have to deal with it:” I then rang Shayne to find out if a deal has been done with Reeds and he told me no, not to his knowledge, so I reported the above to Alan.
I have had a look at the web site and the chair is similar however it has a grip hold in the top of the back and the poly seems thinner form [sic] the image and they don’t stack as well.
Kind Regards
Di Pope
Account Manager
Sebel Furniture
73 Reed Furniture suggests that the Titan chair brochure was available on the Reed Furniture website from August 2008. That suggestion is based upon a rather ambiguous statement in the first affidavit sworn by Mr Holmes. I am not persuaded that the brochure was, in fact, available to those who accessed the website from August 2008 onwards. However, for present purposes, it is sufficient to note that there is an issue about this matter with the evidence on the topic tending to favour Sebel’s version.
74 Hard copies of the Titan chair brochure began to be distributed in October 2008. Seven thousand five hundred copies have been produced. Approximately 1,500 have been distributed to potential purchasers of the Titan chair and during the course of promotional activities carried out by the respondent. There was no evidence proving the costs incurred by the respondent in having these brochures printed. The only evidence concerning the cost of producing the electronic version of the brochure tended to suggest that the cost of having that version displayed on the Reed Furniture website was fairly minimal since it was an adaptation of the electronic version of the Titan brochure used in the United Kingdom.
75 The respondent also suggested that Sebel must have known that Reed Furniture intended to market and sell the Titan chair in Australia because:
(a) Samples of the Titan chair were on display at the Reed Furniture stand at the trade show at Caulfield held on 7 and 8 August 2008 for all to see; and
(b) Employers of Sebel attended that show and must have seen the Titan chairs on display at the Reed Furniture stand at that time.
76 Sebel called evidence from Ms Pope, who set up Sebel’s stand at that trade show, and Mr Sargentson, who was the only Sebel employee who attended that trade show. Each testified that he/she did not see the Titan chair at all at that trade show. The respondent will challenge this evidence at the final hearing of these proceedings.
77 The other evidence concerning Sebel’s knowledge came from Mr Rowley, who ordinarily resides in the United Kingdom. In an affidavit sworn by him on 17 December 2008, Mr Rowley testified that, at the end of February 2008, two representatives of Sebel based in the United Kingdom (Messrs McCluskey and Gallagher) inspected samples of the Titan chair which were displayed at the Education Show at NEC Birmingham in Mr Rowley’s presence. This evidence was not contested by Sebel. However, there was no evidence which tended to establish that the knowledge of these two persons should be attributed to Sebel (the present applicant) or that either of these two persons had communicated any particular fact or matter concerning the Titan chair to Sebel.
78 Furthermore, this knowledge on the part of Messrs McCluskey and Gallagher did not provide any basis for anyone to think that Titan chairs would be imported into and supplied in Australia.
The Sebel Postura Plus Chair
79 In 2007, Sebel designed and manufactured a new range of sidechairs moulded from plastic. Sebel called this new range of sidechairs the Postura Plus chair.
80 Sebel’s Postura Plus chairs have been sold since about March 2008. They have been sold primarily in the United Kingdom although some have also been sold in Australia. This new range of Postura chairs was specifically designed in order to enable Sebel to have products available which complied with the new European furniture design standard relating to furniture used in educational institutions in Europe (BS EN1729) which was introduced in November 2006.
81 On 20 March 2008 and on 28 March 2008, FIRA International Limited certified that Sebel’s Postura Plus chair range size marks 3, 4, 5, 6, and 7 met the dimensional requirements of BS EN1729-1 (2006) and the requirements of BS EN1729-2 (2006) respectively.
The Letter of Demand and Reed Furniture’s Response
82 On 28 November 2008, the solicitors for Sebel wrote to Reed Furniture. In its letter, those solicitors raised by way of complaint the substance of all of the matters which are now the subject of complaint in the proceedings.
83 No substantive response to that letter was received prior to the commencement of the proceedings. The proceedings were commenced on 4 December 2008. During submissions I was told that the respondent intends to apply to have Sebel’s trade mark cancelled. Initially, only s 87 of the Trade Marks Act 1995 (Cth) (As amended) (the Trade Marks Act) was the suggested basis for that application. Subsequently, but still during the interlocutory hearing, the respondent notified an intention to rely upon both s 87 and s 88 of the Trade Marks Act in support of the foreshadowed application to have Sebel’s trade mark cancelled. However, no application has yet been made.
The Balance of Convenience
84 Mr Welsh testified that:
(a) Purchasing officers for educational institutions (especially schools) may purchase Titan chairs believing them to be Sebel chairs thus causing Sebel to lose the value of the sales thereby effected;
(b) The sale of Titan chairs in the December 2008–January 2009 period may impact upon Sebel’s capacity to sell other furniture which is commonly sold in association with its Postura chairs such as desks, cupboards and benches;
(c) Sebel’s prospects of securing a successful outcome in the partly completed tender process for Contract No 1006 with the NSW Department of Commerce may be seriously affected by the respondent’s tender in respect of the same contract if the State Control Board (NSW) considers that the respondent’s tender is a compliant tender and if the price at which it has tendered is significantly lower than Sebel’s price; and
(d) In effect, there is a very real prospect that the respondent will be able to gain a substantial foothold in the relevant markets in Australia by wrongfully exploiting Sebel’s reputation and goodwill in its Postura chairs in order to secure sales of its Titan chairs.
85 The respondent called evidence from Mr Holmes, Mr Tankard and Mr Rowley going to the balance of convenience.
86 Mr Holmes testified that:
The impact on Reed of an injunction is likely to be most acute in the pre-Christmas period.
87 Mr Holmes also gave some general and somewhat vague evidence that the grant of an injunction would seriously damage investments undertaken by the respondent and by Titan, that it would damage the goodwill in the Reed Furniture name which the respondent presently enjoys and that an injunction would probably affect Reed Furniture’s capacity to sell additional items of furniture which are usually sold in association with chairs, such as tables and desks.
88 Mr Holmes also asserted that:
… it is likely to be very difficult, if not impossible, for Reed to calculate the damage suffered by it if Sebel obtains an injunction to prevent the sale of Titan Chairs immediately prior to Christmas and prior to its busiest trading period.
89 The expression busiest trading period was a reference to the months of December 2008 and January 2009.
90 Evidence to similar effect was given by Mr Tankard. He also focused on the impact that an injunction might have on his company’s prospects in respect of Contract No 1006. In addition, he suggested that an injunction would be very disruptive to Reed Furniture’s existing customers, although, as was the case with the evidence of Mr Holmes, this material did not rise much above bald assertion.
91 Mr Rowley gave evidence which, I gather, was intended to put the position of Titan before the Court, in effect, as a third party. The evidence was to the effect that the injunction would prevent Titan exploiting Australia as a potential market for its Titan chairs and would perhaps adversely affect Titan’s reputation both in Australia and elsewhere.
The Arguments of the Parties
The Trade Mark Case
92 Senior Counsel for Sebel submitted that Sebel had established that in promoting for sale and in selling the Titan chair the respondent had used and was continuing to use as a trade mark a shape that is deceptively similar to the Sebel trade mark in relation to goods or services in respect of which the Sebel trade mark is registered. He put that the Postura chair was an embodiment of a chair to which Sebel’s trade mark had been applied and that the appearance of Sebel’s Postura chair was quite unique. Senior Counsel relied upon s 120(1) of the Trade Marks Act.
93 It was also submitted on behalf of Sebel that the shape of its Postura chairs had been identified in the minds of prospective purchasers as the shape of a chair that is put out by Sebel.
94 Senior Counsel concentrated his submissions on the concept of “deceptive similarity”. He disavowed any reliance upon the concept embodied in the expression substantially identical which is found in s 120(1) of the Trade Marks Act. In opening, he did not put detailed submissions directed to the question of whether or not the respondent was using Sebel’s trade mark as a trade mark but rather chose to address that matter in more detail in final submissions. In essence, he submitted that the shape found in Sebel’s trade mark transcends the functional requirements of a chair.
95 He submitted that, in the present case, the comparison is not a side by side comparison but one based upon imperfect recollection (Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415). He further submitted that size and colour were irrelevant to the question of trade mark infringement.
96 Counsel for the respondent submitted that Sebel had failed to show that it had a prima facie case or serious question to be tried. Counsel submitted that no prima facie case had been shown because:
(a) The features of Sebel’s trade mark encompass nothing more than functional aspects of a one-piece polypropylene chair;
(b) It is notorious that shape trade marks are difficult to enforce where their features cover functional aspects of design and the impugned use concerns functionality of the respondent’s product;
(c) There are substantial differences between the Titan chair and the Postura chair and these differences lead inevitably to the conclusion that they are not substantially identical; and
(d) In any event, both the circumstances in which the respective chairs are bought and sold (ie price sensitive consumers making informed and often complex purchase decisions), and the manner in which the Titan chair is marketed and supplied (with the Titan trade mark and logo and Reed’s brand), make the suggestion of deceptive similarity very tenuous.
97 Counsel also submitted that the respondent does not use the shape or appearance of the Titan chair as a trade mark. He submitted that the respondent merely sells the Titan chair in that shape and depicts the shape of the chair in its brochure for the purpose of describing or identifying the product which it sells. He submitted that the shape of the Titan chair does not contain features which are additional to the inherent form of the chair. He relied upon the decision of the Full Court of this Court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 as supporting the above propositions.
98 In addition, Counsel for the respondent submitted that Sebel had also failed to demonstrate that the Titan chair was deceptively similar to the Sebel trade mark because:
(a) There was no evidence of confusion on the part of any person, even though the Titan chairs had been sold in the United Kingdom for over 12 months and in Australia for a month or so;
(b) There were many differences between the Titan chair and the Postura chair which would make it inherently unlikely that the two would be confused or that a person would have cause to wonder whether they came from the same source. He pointed to the catalogue of differences between the Postura chair and the Titan chair set out in Mr Holmes’ evidence as well as the labelling on the chair itself;
(c) There was no foundation for any concern that the Titan chairs were being discounted or unfairly sold at a lower price; and
(d) The typical consumer was a purchasing officer within an educational institution who was price conscious and who would pay special attention to the chairs when making his or her purchase decisions and thus would not be confused.
The Passing Off Claims and the Trade Practices Act Claims
99 Senior Counsel for Sebel put the proposition that consumers would likely be confused and misled into thinking that the Titan chair and the Sebel Postura chair came from the same source (Sebel), given that Sebel has a substantial reputation in Australia in respect of its Postura range of chairs.
100 Counsel for the respondent stressed the fact that the Titan chairs were materially different in appearance from the Postura chairs and that the Titan chair clearly bore Titan logos and labelling which made it unlikely that any consumer in the class of those likely to be looking to purchase the chairs would ever be misled.
The Misrepresentation Case
101 In its Titan chair brochure, the respondent stated in a number of places (referring to the Titan chair):
The First 1 Piece Chair That Conforms to EN1729 Parts 1 & 2 In the UK
102 Senior Counsel for Sebel submitted that, in the context in which that statement was made, the respondent represented and was continuing to represent that the Titan chair was the only chair as at October 2008 and afterwards which conformed to those standards and that such a representation was false.
103 Counsel for the respondent contended that no such representation was being made.
104 It was common ground that, if such a representation was being made, then it was false, because Sebel’s Postura Plus chairs had met standards EN 1729 Parts 1 and 2 (2006) from no later than 28 March 2008.
The Balance of Convenience
105 Each party vigorously put detailed arguments in support of its contention that the balance of convenience and the balance of justice in the present case favoured its position. I will not set out these arguments in detail.
106 I shall refer to them as necessary when I come to my consideration of the competing contentions of the parties in the next section of these Reasons for Judgment.
Consideration
The Trade Mark Infringement Case
107 Sebel’s pleaded case for infringement of Sebel’s trade mark may be summarised as follows:
(a) Sebel uses Sebel’s trade mark upon and in relation to its range of Postura chairs;
(b) By reason of its advertising and promotion of the Postura chair and of the many sales of that chair effected by Sebel since 1996, the shape of the Postura chair is seen by Australian consumers as:
… denoting a chair that is designed and/or manufactured by Sebel and supplied by the applicant and its authorised distributors.
(c) The respondent has promoted, offered to supply and supplied the Titan chair in Australia;
(d) In connection with those activities, the respondent has:
… in Australia, used as a trade mark a sign, namely a shape upon or in relation to the Titan chair, that is deceptively similar to [Sebel’s] registered trade mark, in that the trade mark so nearly resembles [Sebel’s] registered trade mark that it is likely to deceive or cause confusion, within the meaning of section 10 of the Trade Marks Act 1995.
The particulars of this allegation refer to the advertising, promotion and sale of the Titan chair by Reed Furniture.
(e) The alleged use of Sebel’s trade mark by the respondent has been without Sebel’s consent;
(f) Accordingly, by the conduct described in sub-par (d) above, the respondent has infringed Sebel’s trade mark.
108 The respondent has foreshadowed (but not yet brought) an application for an order that the Register of Trade Marks kept under s 207 of the Trade Marks Act be rectified by cancelling the registration of Sebel’s trade mark. No basis or grounds said to justify the cancellation of Sebel’s trade mark have been articulated by the respondent either to the Court or to Sebel. The respondent has indicated that it proposes to rely upon the provisions of s 87 of the Trade Marks Act as well as those contained in s 88 of that Act.
109 In short, no case was actually advanced before me in support of the foreshadowed application to have Sebel’s trade mark cancelled.
110 Therefore, for present purposes, in my view, the respondent’s stated intention to seek to have Sebel’s trade mark cancelled is of no significance or weight.
111 The starting point of my consideration of the present application must, therefore, be that:
(a) Sebel is the registered owner of Sebel’s trade mark;
(b) Sebel’s trade mark is valid; and
(c) Sebel’s trade mark consists of a shape kind of sign or shape device and comprises or is represented by the shape depicted in the five perspective views or drawings forming part of the Certificate of Registration of Sebel’s trade mark. These drawings or perspectives are set out in [9] above.
112 As I mentioned at [8] above, the Certificate of Registration of Sebel’s trade mark bears an endorsement which refers to s 41(5) of the Trade Marks Act. That endorsement tells a reader of that Certificate that, when the Registrar of Trade Marks came to examine Sebel’s trade mark for the purpose of determining whether or not it should be registered, the Registrar found that Sebel’s trade mark was to some extent inherently adapted to distinguish Sebel’s plastic moulded sidechairs from sidechairs supplied by other persons but was unable to decide, on that basis alone, that Sebel’s trade mark was so capable of distinguishing Sebel’s plastic moulded sidechairs. For that reason, the Registrar was required to consider and be satisfied of certain other matters before he could register Sebel’s trade mark. If, because of the combined effect of:
(a) the extent to which the trade mark had been inherently adapted to distinguish Sebel’s plastic moulded sidechairs;
(b) the use by Sebel of Sebel’s trade mark; and
(c) any other circumstances
the Registrar was satisfied that Sebel’s trade mark did or would distinguish Sebel’s plastic moulded sidechairs as being those of Sebel then Sebel’s trade mark was to be registered.
113 Because Sebel’s trade mark was registered and because the Certificate of Registration bears the endorsement referred to, it follows that the Registrar must have considered and been satisfied of the matters set out in [112] above.
114 Therefore, I can assume that the Registrar formed the view that Sebel’s trade mark did or would distinguish Sebel’s plastic moulded sidechairs from sidechairs of other persons and I can accord some weight to that opinion of the Registrar. That opinion is, of course, not binding upon the Court.
115 I do not have the benefit of the Registrar’s reasons for his or her decision to register Sebel’s trade mark.
116 Nor do I have the benefit of any expert evidence directed to identifying the particular features of the shape for which registration has been obtained which might:
(a) Justify a conclusion that Sebel’s trade mark was, and is, to some extent inherently adapted to distinguish Sebel’s plastic moulded sidechairs from sidechairs of other persons;
(b) Explain the extent to which Sebel’s trade mark was, and is, so inherently adapted; and
(c) Explain the significance of Sebel’s use and intended use of its trade mark in causing Sebel’s plastic moulded sidechair to be distinguished from sidechairs of other persons.
117 The approach taken by Sebel in the application before me was to prove substantial sales of chairs in its Postura range throughout Australia over some 13 years or so and to rely upon, in a general sense, what can be observed by inspecting a sample of the Postura chair, in order to justify its ultimate submission that the shape for which trade mark protection has been obtained is one which (and I quote from Senior Counsel’s submissions in this regard):
Transcends the functional requirements of a chair.
118 The submission continued:
The functional requirements of a chair are that it have legs and a seat and, perhaps, a back.
…
(A) chair can take a variety of shapes and configurations and in that sense that’s where the trade mark transcends the functional aspect of what is required of a chair.
The shape of the trade mark is … a unique shape which Sebel has promoted and … promoted as being the Postura chair.
…
119 Senior Counsel also submitted that the shape of the Postura chair functions as a badge of origin. He added that the particular shape of the Postura chair is a Sebel signature. The shape of the Postura chair signifies Sebel, so it was submitted, and thus is functioning as a trade mark.
120 No particular features of the drawings or perspectives set out in the Certificate of Registration of Sebel’s trade mark or observable from an inspection of the Postura chair itself were identified by Sebel as being the features which either alone or in some combination lead to the conclusions claimed by Sebel that:
(a) The shape comprising Sebel’s trade mark which is embodied in the Postura range of chairs transcended the functional requirements of a chair; and
(b) When embodied in the Postura range of chairs, the shape comprising Sebel’s trade mark is the use of that trade mark in a trade mark sense, ie by being so embodied, the shape is functioning as a badge of origin which identifies the Postura chair as emanating from Sebel.
121 Senior Counsel for Sebel summed up his client’s contention on this point as follows:
It’s the whole combination which we say has trade mark signification, not just some part of it.
122 Whilst the question of whether Sebel, as at the relevant date for registration purposes, had used or intended to use as a trade mark the shape comprising its trade mark is not directly in issue in the present application, in my judgment, I do need to understand why Sebel’s trade mark is said to transcend the functional requirements of a chair and I also need to understand the reasoning which is said to justify Sebel’s contention that, by embodying the shape comprising Sebel’s trade mark in the Postura chair, Sebel has used its trade mark as a trade mark.
123 An understanding of both of these matters is both relevant and necessary to any sensible consideration of whether Sebel’s trade mark has been used as a trade mark (emphasis added) upon or in relation to the Titan chair as alleged by Sebel.
124 Having regard to the drawings or perspectives comprising Sebel’s trade mark, to the promotional and advertising material in evidence and to the sample Postura chair in evidence (Exhibit E), the following features of Sebel’s trade mark are observable as potentially distinguishing features namely:
(a) The shape is for a one piece sidechair moulded from plastic materials;
(b) The legs are splayed;
(c) The seat has a waterfall sloping towards the front of the seat;
(d) The upper portion of the back is wider than that part of the back below it and curved downwards giving the impression that the back of the chair comprises two pieces joined together rather than being a single moulded object;
(e) The back has in it a built-in aperture immediately under the upper half of the back of the chair which extends across the central part of the back for most of its width; and
(f) The shape permits chairs of like shape easily to be stacked one on top of the other.
125 At the moment, I do not see any other particular attributes or features of the shape which comprises Sebel’s trade mark as features which, either alone or in combination, could conceivably be seen as permitting Sebel’s trade mark to distinguish its plastic moulded sidechairs from other persons’ sidechairs.
126 I do not mean to suggest by what I have said so far that I accept that the features set out in [124] above do, in fact, distinguish Sebel’s Postura chairs from sidechairs of other persons and thus constitute reasons why the shape of that chair operates as a badge of origin which identifies Sebel as the source of the chair. All of these contentions put on behalf of Sebel are to be considered further in these Reasons for Judgment.
127 The case which Sebel puts as constituting infringement of its trade mark by the respondent is founded upon the provisions of s 120(1) of the Trade Marks Act. That subsection is in the following terms:
(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
Note 1:For registered trade mark see section 6.
Note 2:For deceptively similar see section 10.
Note 3:In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
128 Sebel disavows any reliance on the proposition that the trade mark use of which it complains is the use of:
… a sign that is substantially identical with [Sebel’s trade mark].
129 Therefore, in order to prove infringement of its trade mark, Sebel must show that:
(a) The respondent has used as a trade mark;
(b) a sign;
(c) that is deceptively similar to Sebel’s trade mark;
(d) in relation to goods or services in respect of which the trade mark is registered.
130 The respondent contends that Sebel has failed to prove the above elements to the level of proof or satisfaction required in order for it to succeed with that part of its interlocutory application founded upon infringement of Sebel’s trade mark.
131 In s 6 of the Trade Marks Act, sign is defined as follows:
sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
132 For the purposes of that Act, a shape is a sign.
133 In the same section of the Trade Marks Act, the expression use of a trade mark is defined as follows:
use of a trade mark has a meaning affected by subsections 7(1), (2) and (3).
use of a trade mark in relation to goods has the meaning given by subsection 7(4).
Section 7(2) and s 7(3) are not presently relevant.
134 Section 7(4) is in the following terms:
(4) In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second hand goods).
(Original emphasis.)
135 Section 17 defines a trade mark as follows:
What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
136 There is a substantial contest in the present case as to whether or not the promotion, supply and sale of the Titan chairs is the use of a shape as a trade mark and, if so, what that shape actually is. Should the first of these questions be decided in favour of Sebel, the second question must be decided in order to enable the issue of deceptive similarity to be determined.
137 The first question to which I will now turn is: Has the respondent used a shape as a trade mark in its promotion and sale of the Titan chair?
138 In Global Brand Marketing Inc v YD Pty Limited (2008) 76 IPR 161 at [62] to [64] (pp 175–176), Sundberg J set out the principles relevant to the use of a shape as a trade mark as follows:
61 The principles relevant to use of shape as a trade mark are now set out.
(a) A special shape which is the whole or part of goods may serve as a badge of origin. However the shape must have a feature that is “extra” and distinct from the inherent form of the particular goods: Mayne at [67], Remington at [16] and Kenman Kandy at [137].
(b) Non-descriptive features of a shape point towards a finding that such features are used for a trade mark purpose. Where features are striking, trade mark use will more readily be found. For example, features that make goods more arresting of appearance and more attractive may distinguish the goods from those of others: All-Fect at [25].
(c) Descriptive features, like descriptive words, make it more difficult to establish that those features distinguish the product. For example, the word COLA or an ordinary straight walled bottle are descriptive features that would have limited trade mark significance: All-Fect at [25] and Mayne at [61]–[62].
(d) Where the trade mark comprises a shape which involves a substantial functional element in the goods, references to the shape are almost certainly to the nature of the goods themselves rather than use of the shape as a trade mark: Mayne at [63]. For example, evidence that a shape was previously patented will weigh against a finding that the shape serves as a badge of origin: Remington at [12] and Mayne at [69].
(e) If a shape or a feature of a shape is either concocted compared to the inherent form of the shaped goods or incidental to the subject matter of a patent, it is unlikely to be a shape having any functional element. This may point towards the shape being used as a trade mark: Kenman Kandy at [162] and Mayne at [69].
(f) Whether a person has used a shape or a feature of a shape as a trade mark is a matter for the court, and cannot be governed by the absence of evidence on the point: All-Fect at [35].
(g) Context “is all important” and will typically characterise the mark’s use as either trade mark use or not: Remington at [19] and Mayne at [60]–[62].
62 As is apparent from the foregoing propositions, a shape mark case may require consideration of different types of features in determining whether the mark is used as a trade mark for the purposes of the Act. At one end of the spectrum are shapes or features thereof that are purely functional. The features may have derived substantially from a patented product, such as the S-shaped fence dropper, or go to the usefulness of the product: Remington at [3] and [12]. Cases such as Mayne and Remington show that such features point away from trade mark use.
63 At the other end of the spectrum are those features of a mark that are non-descriptive and non-functional. They ordinarily make the shape more arresting of appearance and more attractive, thus providing a means of distinguishing the goods from those of others. All-Fect and Remington show that non-functional features add something extra to the inherent form of the shape. A concocted feature will typically be considered non-functional: Kenman Kandy.
64 Finally, there will be cases, such as the present, that fall between the ends of the spectrum. These cases are not black and white. They involve consideration of whether one set of features supersedes, submerges or overwhelms the other.
139 I agree with his Honour’s helpful articulation of the relevant principles. I will apply those principles in dealing with the application presently before me.
140 Similar observations were made by Greenwood J in Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited (2008) 166 FCR 312 at [60] to [70] (pp 337–340).
141 In Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd 100 FCR 90, a Full Court of this Court had to consider whether the promotion and sale by Remington of Remington’s triple headed electric shaver infringed Philips’ registered trade marks which comprised two-dimensional depictions of three shaving heads in the shape of an equilateral triangle. One of the issues in that case was whether Remington’s activities involved the use of a trade mark as a trade mark in relation to goods. In the circumstances of that case, the Court held that Remington’s promotion and sale of its triple headed electric shaver did not constitute trade mark use.
142 In the course of dealing with these questions, Burchett J (with whom Hill and Branson JJ agreed), said (Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd 100 FCR 90 at [11] and [12] (pp 100–101)):
11 A trade mark is defined in the Trade Marks Act 1995 by s 17 as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. When that definition -- which accords with the basal doctrine of trade mark law: see the passage from the United States Supreme Court decision Estate of P D Beckwith, Inc v Commissioner of Patents (1920) 252 US 538 at 543 which is cited in Johnson & Johnson at 342 -- is required to be applied, regard should be had to a so-called inclusive definition of the word “sign” which is to be found in s 6: the word “includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”. Insofar as it is the use of a trade mark in relation to goods with which the Act is concerned, regard must be had also to s 7(4), by which it is provided:
“In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)."
The nature of the primary right conferred by the registration of a trade mark is stated in quite summary terms in s 20(1):
“If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.”
It will be observed that this subsection follows the practice, to which Kitto J alluded in Shell Co of Australia Ltd, of omitting to specify that the exclusive right of use is a right to use as a trade mark; however, having regard to the legislative history and the unvarying course of authority, the right must be understood to be so limited. In any case, and somewhat inconsistently, Parliament did decide to specify the nature of the use involved when it came to deal with the subject of infringement. Section 120 provides:
“(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
(2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
.” (Emphasis added in subs (1) and in the opening part of subs (2).)
12 In my opinion, merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a “use” of the mark “upon, or in physical or other relation to, the goods” within s 7(4), or to “use” it “in relation to the goods” within s 20(1). “Use” and “use”, in those contexts, convey the idea of employing the mark, (first) as something that can be “upon” or serve in a “relation” to the goods, (and secondly) so as to fulfil a purpose, being the purpose of conveying information about their commercial origin. The mark is added, as something distinct from the goods. It may be closely bound up with the goods, as when it is written upon them, or stamped into them, or moulded onto them (see Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107, or, in the case of a liquid, it may be sold in a container so formed as to constitute at once both container and mark. But in none of these cases is the mark devoid of a separate identity from that of the goods. The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as the trade mark. The reason is plain: it is to be assumed that goods in the market are useful, and if they are useful, other traders may legitimately wish to produce similar goods (unless, of course, there are, for the time being, subsisting patent, design or other rights to prevent them from doing so), and it follows that a mark consisting of nothing more than the goods themselves could not distinguish their commercial origin, which is the function of a mark: Johnson & Johnson at 342 and 348-349. As Jacob J said of a “picture mark” in Philips Electronics NV v Remington Consumer Products at 292:
“A picture of an article is equivalent to a description of it -- both convey information. If the picture is simply of an artefact which traders might legitimately wish to manufacture then to my mind it is just like the common word for it and, like the word for it, incapable of distinguishing.”
Even if such a mark achieves registration, that does not make the manufacture and sale of similar artefacts into a use of the mark as a trade mark; cf the remarks, quoted above, of Sargant LJ in Edward Young & Co Ld v Grierson Oldham & Co Ld at 579 about the effect of the registration of the word “port” in sloping capitals, remarks which seem to me to apply a fortiori.
143 His Honour continued at [14] to [17] as follows:
14 Certainly, before the enactment of the 1995 Act, Australian courts accepted the law expounded by Windeyer J in Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks (1967) 116 CLR 628 at 639-640:
“A trade mark is defined in the Act as ‘a mark used or proposed to be used in relation to goods’ for the purposes stated. This definition assumes, it seems to me, that the mark is something distinct from the goods in relation to which it is used or to be used. It assumes that the goods can be conceived as something apart from the mark and that the mark is not of the essence of the goods. The goods are assumed to have an existence independently of the mark. As SargantLJ put it, in stating the difference between a design and a trade mark, ‘A trade mark is something which is extra, which is added to the goods for the purpose of denoting the origin of the goods’: Charles Goodall & Son Ltd v John Waddington Ltd (1924) 41 RPC 658 at p 668. And Lord Lindley, then Lindley LJ, said in In re James's Trade-Mark (1886) 33 Ch D 392 at 395, ‘We must be careful to avoid confusion of ideas. A mark must be something distinct from the thing marked. A thing cannot be a mark of itself ...’. This does not mean that today a trade mark must be a mark to be physically applied to the goods. It may now be a mark to be used in other ways in relation to goods. A thing can always be described and distinguished in appearance by any visible characteristic which it has, its shape, colour or any mark which it bears. But the test is not -- Can the goods be described or depicted without reference to their markings? As I see it, a mark for the purposes of the Act must be capable of being described and depicted as something apart from the goods to which it is to be applied, or in relation to which it is to be used. This view is supported by the provisions of s 107 of the Act. It accords too with the various things included in the definition of ‘mark’. That list is not expressed as exhaustive but it is certainly illustrative. I do not think that a mere description of goods simply by shape, size or colour can be a trade mark in respect of those goods.”
The same view was expressed by Lord Templeman, speaking for a unanimous House of Lords (Lords Keith of Kinkel, Brandon of Oakbrook, Templeman, Griffiths and Oliver of Aylmerton), in Re Coca-Cola Co (1986) 6 IPR 275, a decision under the Trade Marks Act 1938 (UK). His Lordship said (at 277):
“In my opinion the Act of 1938 was not intended to confer on the manufacturer of a container or on the manufacturer of an article a statutory monopoly on the ground that the manufacturer has in the eyes of the public established a connection between the shape of the container or article and the manufacturer. A rival manufacturer must be free to sell any container or article of similar shape provided the container or article is labelled or packaged in a manner which avoids confusion as to the origin of the goods in the container or the origin of the article ...
The word ‘mark’ both in its normal meaning and in its statutory definition is apt only to describe something which distinguishes goods rather than the goods themselves.”
The earlier decision of the House of Lords in Smith Kline & French Laboratories Ltd v Sterling-Winthrop Group Ltd [1976] RPC 511 was distinguished by Lord Templeman (at 278) as a case which “only related to the colour of goods and has no application to the goods themselves or to a container for goods”.
15 The trial judge discussed (at 558-560) the question whether the 1995 Act has changed all that. It is unnecessary to repeat the various conflicting indications of legislative intention detailed in that discussion. I think it is important to note, as his Honour does (at 560), that the legislative background leaves a clear impression the inclusion of the word “shape” in the definition of “sign” was not understood to involve the effecting of a radical change in trade mark law. It seems to me that this is the reason there is so little assistance to be gained from ministerial statements or explanations. The amendment was simply not seen as important. Nor was the deletion of the provision made by s 39 of the repealed Trade Marks Act 1994 (Cth). No change being contemplated to the nature of trade mark use, it followed that neither a shape “possessed, because of their nature, by the goods” nor a shape “that the goods must have if a particular technical result is to be obtained” (the categories of shape identified in s 39) could distinguish the goods of one trade source from the similar goods of another; and therefore such a shape could not function as a trade mark. Indeed, it is hard to imagine how such a shape of the goods themselves could be used, or be intended to be used, for the purpose set out in s 17 -- its use would inevitably be nothing other than part of the use of the commodity itself. Section 39 was omitted from the Trade Marks Act 1995 because it was unnecessary.
16 It does not follow that a shape can never be registered as a trade mark if it is the shape of the whole or a part of the relevant goods, so long as the goods remain distinct from the mark. Some special shape of a container for a liquid may, subject to the matters already discussed, be used as a trade mark, just as the shape of a medallion attached to goods might be so used. A shape may be applied, as has been said, in relation to goods, perhaps by moulding or impressing, so that it becomes a feature of their shape, though it may be irrelevant to their function. Just as a special word may be coined, a special shape may be created as a badge of origin. But that is not to say that the 1995 Act has invalidated what Windeyer J said in Smith Kline. The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded. For they are cases where the shape that is a mark is “extra”, added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J’s words, “an existence independently of the mark” which is imposed upon them.
17 The conclusion of this discussion is not that the addition of the word “shape” to the statutory definition calls for some new principle, or that a “shape” mark is somehow different in nature from other marks, but that a mark remains something “extra” added to distinguish the products of one trader from those of another, a function which plainly cannot be performed by a mark consisting of either a word or a shape other traders may legitimately wish to use. That proposition has commonly been stated in connection with marks that seek to appropriate the actual name of the product or an apt description of it; but the principle equally applies in the case of a shape or picture representing the very form and appearance in which another trader might legitimately wish to make the product. In Unilever Ltd’s (Striped Toothpaste No 2) Trade Marks [1987] RPC 13, Hoffmann J (as Lord Hoffmann then was) dismissed an appeal against a refusal of registration of device marks containing representations of red and white striped toothpaste. His Lordship said (at 19-20):
“There are many cases which speak of the extreme difficulty which faces a trader who produces a new article to which he attaches a descriptive name in proving that the name has acquired a secondary meaning denoting an article made by him. As Lord Davey said in the Cellular Clothing Company Ltd v Maxton & Murray [1899] AC 326 at 344:
‘ ... the evidence of persons who come forward and say that the name in question suggests to their minds and is associated by them with the plaintiff's goods alone is of a very slender character, for the simple reason that the plaintiff was the only maker of the goods during the time that his monopoly lasted, and therefore there was nothing to compare with it ... ’
There is in my view a similar obstacle in the path of a trader who has enjoyed a de facto monopoly of a product with a relatively simple feature chosen not as a badge of origin but on the ground that it was likely to appeal to the public. The fact that members of the public now associate that feature with his product tells one nothing about what they would think if a product with a similar feature came upon the market. It seems to me that if Colgate or any other manufacturer produced a new brand of red and white striped toothpaste in a get-up which was not otherwise confusing, the public would have little difficulty in distinguishing the new brand from SIGNAL. There may be a few children who want SIGNAL, ask for ‘the red and white striped toothpaste’, are given the new brand without realising that it exists and do not discover the mistake till they have taken it home. But these are likely to be very few and I think represent the kind of confusion which is bound to occur whenever an existing monopoly is broken. I do not think that it is a possibility which would deter an honest trader from marketing red and white toothpaste if he thought it would be attractive to his customers.
In my judgment, red and white stripes are a feature of toothpaste which other traders may legitimately desire to use ...
It follows that the marks in suit are not in my view ‘adapted to distinguish’ the goods of Unilever within the meaning of s 9 [of the Trade Marks Act 1938 (UK)] and they do not qualify for registration in part A.
The nature of the marks is such that I see no prospect of there being a time when it would not be legitimate for other traders to wish to use them and I therefore do not regard them as ‘capable of distinguishing’ the goods for the purposes of section 10. Accordingly they do not qualify for registration in part B either.”
Although this decision was concerned with whether the mark was registrable under the English legislation then in force, it is obvious that the reasoning I have quoted is relevant to the question of trade mark use which arises in the present case. It may also explain the purpose of the disclaimer, although the effectiveness of that is another matter. Compare the remarks of Aldous LJ in UK Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 at 817-818.
144 The reasons of the Court in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd 100 FCR 90 make clear that:
(a) Very often, the concept of use as a trade mark in relation to goods involves the physical application of the trade mark to the goods (eg by stamping or embossing thereon the manufacturer’s name or logo) in order to state the origin of the goods for all to see. However, goods may be distinguished by other visible characteristics which they have (eg their shape or colour);
(b) This concept of use as a trade mark usually involves the particular trade mark having an identity which is separate from the goods themselves;
(c) Generally speaking, this notion of use does not include simply using the goods themselves as a trade mark because a mark consisting of nothing more than the goods themselves could not distinguish the commercial origin of those goods;
(d) A shape which is dictated by the nature of the goods or by the need to achieve some particular technical result or functional outcome cannot operate as a trade mark.
In order to function as a trade mark, the shape must be something which is extra or which is added to the inherent form of the particular goods as something distinct which can denote origin. A shape cannot function as a trade mark if it is something that other traders may legitimately wish to use either because it is inherent to the particular goods (ie it is of their nature) or because it provides some technical or functional benefit to the goods.
145 As I understand Sebel’s case, there are features of the shape of the Titan chair which are said by Sebel to constitute the use of that shape as a trade mark in relation to goods (namely, sidechairs moulded from plastic materials). Just exactly what those features are and how that use is said to arise were matters which were not made clear by Sebel at the hearing and are not at all clear to me now.
146 As the evidence presently stands, it seems to me that:
(a) The alleged shape trade mark said to have been used by the respondent as a trade mark in relation to the Titan chair is not something which is distinct from the Titan chair but is rather of the essence of that chair;
(b) The shape embodied in the Titan chair does not contain one or more features which are extra or additional to those which comprise or involve the functional elements of the Titan chair;
(c) The shape is devoid of a separate identity from that of the Titan chair itself; and
(d) The concept of using a trade mark in relation to goods does not include simply using the goods themselves as a trade mark. In the present case, the respondent is, at most, using or intending to use the Titan chair itself as the trade mark.
147 For these reasons, I am inclined to think that Sebel has failed to prove, even to a prima facie level, that the respondent has used a shape as a trade mark in relation to goods of the relevant class by reason of its promotion and sale of the Titan chair.
148 However, I am very conscious that I am presently dealing with an interlocutory application. For this reason, I am prepared to assume for the time being (without deciding) that Sebel has proven these matters to the requisite level.
149 What, then, is the shape that has been used in this fashion?
150 One can observe the following in relation to the shape embodied in the Titan chair:
(a) It comprises a one-piece moulded chair;
(b) The edges of the back and seat of the chair are generally rounded;
(c) The seat of the chair is more or less flat;
(d) There is a built-in aperture in the back of the chair which is located in the centre of that back (looked at laterally) and quite near the top of that back (looked at vertically) extending for about half of the total width of the back of the chair. That aperture gives the impression of being a grip for lifting the chair;
(e) The legs are splayed; and
(f) The shape allows for the easy stacking of a number of chairs in the same shape.
151 In light of those general observations, I now turn to consider the question of deceptive similarity.
152 What must be compared is the allegedly infringing mark and the registered trade mark.
153 In the present case, given the way in which the trade marks are said to have been used, it is sensible to conduct that comparison by comparing the embodiment of Sebel’s trade mark, the Postura chair, with the embodiment of the respondent’s allegedly infringing trade mark, the Titan chair. I stress that I am taking this approach in order to conduct a comparison of the two shape trade marks and not to compare the two types of chair.
154 The relevant principles are gathered together by French J (as he then was) (with whom Tamberlin J agreed) in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [49] and [50] (pp 382–383) as follows:
49 The question of fact for the Court on an appeal from the Registrar in a case of alleged deceptive similarity between marks was posed by the High Court in Australian Woollen Mills Ltd v F S Walton & Co Ltd at 658: “whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.” The reference to “restrained” reflects the fact that unlike this case the Australian Woollen Mills Ltd case was an appeal in an infringement action. The judgment of the likelihood of deception or confusion is a very practical one and what has long been accepted as the proper approach to making that judgment was set out in Australian Woollen Mills Ltd. It requires assessment of the effect of the challenged mark upon the minds of potential customers. Impression or recollection taken away from the point at which the challenged mark is observed will be the basis of any belief about a connection between the new and the old marks. The effect of spoken description must be considered. What confusion or deception may be expected is to be based upon the behaviour of ordinary people. As potential buyers of goods they are not to be credited with high perception or habitual caution. Exceptional carelessness or stupidity may be disregarded. The question ultimately is not susceptible of much discussion (at 659):
“It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.”
50 In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd at 594-595, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362:
“the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
155 The mere possibility of confusion is not enough. As Kitto J said in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595:
It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough--for there must be a real, tangible danger of its occurring (Reckitt & Colman (Australia) Ltd. v. Boden [3], at pp. 94, 95; Sym Choon & Co. Ltd. v. Gordon Choons Nuts Ltd. [4], at p. 79)--it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (iii) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: Jafferjee v. Scarlett [5], at p. 120).
156 In the present case, the comparison is not a side-by-side comparison but one based upon imperfect recollection (Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 109 CLR 407 at 415; see also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658).
157 The impression produced in the mind of potential customers which is carried away must be that the challenged trade mark is the same as the registered trade mark.
158 Mr Holmes, on behalf of the respondent, undertook a comparison between the Postura chair and the Titan chair based upon observations which he made. He then produced a catalogue of observable differences between the two chairs in order to negate any question of deceptive similarity between Sebel’s trade mark and Reed Furniture’s so-called trade mark. Some of these differences are, in my view, barely noticeable. In any event, as Sebel submitted, the approach reflected in Mr Holmes’ comparison is not the correct approach to the issue of deceptive similarity.
159 It seems to me, however, that there are obvious differences between the Postura chair and the Titan chair which may be listed as follows:
(a) The Titan chair has more rounded edges leaving one with the impression of a heavier-looking, bulkier chair than the Postura chair which has sharper, more clearly defined edges and a more elegant less bulky appearance;
(b) The upper portion of the back of the Titan chair appears less well-defined and less suggestive of being a separate piece than does the upper portion of the Postura chair. This impression is no doubt partly due to the location of the aperture in the back of each chair. It is also probably contributed to by the curved bottom edge of the top portion of the back of the Postura chair which stands in contradistinction to the straighter less interrupted lines of the top portion of the back of the Titan chair.
(c) The apertures in the back of each chair are quite different in size, shape and location. These apertures are a prominent feature of both chairs to which the eye is inevitably drawn. Because of the differences between them, the whole of the back of the chair presents quite differently in each case. These features are likely to create a firm and lasting impression in the mind of potential customers and, to my mind provide a critical point of difference in impression even allowing for imperfect recollection;
(d) The seat of the Postura chair slopes slightly towards the front whereas the seat of the Titan chair seems not to do so and appears to be somewhat flatter. To my observation, this difference also contributes to the impression that the Postura chair is a finer, more elegant chair than the heavier looking more bulky Titan chair; and
(e) The Titan chair does not stack easily on top of or under the Postura chair.
160 In my judgment, having regard to the above factors, and on the assumption that the Postura chair is the embodiment of Sebel’s trade mark, as the evidence stands at the moment, Sebel has failed to make out a prima facie case that the shape of the Titan chair as embodied in the Titan chair is deceptively similar to Sebel’s trade mark. That conclusion is reinforced when regard is had to other matters such as the circumstances in which the chairs will be purchased and sold and the character of the likely purchasers (as to which see especially [43] to [45] above. The chairs are likely to be purchased in bulk by reasonably well-informed purchasing officers. The market which the respondent will be targeting with the Titan chair is the same education sector to which Sebel sells its Postura chair. Potential purchasers are very likely to be well-informed about the two competing products and the differences between them. In my judgment, there is no real likelihood of confusion in the minds of potential purchasers.
161 In expressing these views for the purposes of the present application, I have not ignored Ms Pope’s email of 25 November 2008. However, a one-off example of what may have been actual confusion on the part of a potential purchaser does not, of itself, establish deceptive similarity. In any event, the basis for Ms Rasmussen’s comments was not apparent from the email nor was it otherwise established in the evidence.
162 In my judgment, the respondent has probably not used a shape as a trade mark in relation to goods of the relevant class by promoting, advertising, distributing and selling the Titan chair. Further, I am of the opinion that, even if the respondent’s activities do constitute the use of a shape as a trade mark in relation to goods, Sebel has failed to establish that it has a prima facie case or a serious question to be tried that the shape so used is deceptively similar to Sebel’s trade mark.
The Passing Off Claims
163 Sebel pleads its passing off case in pars 14, 15, 16, 26 and 27 of the Statement of Claim.
164 These claims fall into two broad categories, namely that by using the shape embodied in the Titan chair and by promoting, offering to supply and supplying Titan chairs, the respondent has led and will lead a substantial number of persons in Australia to believe that:
(a) The Titan chair is one of the Postura chairs or a variant of the Postura chair or is a chair put out by Sebel or a chair that is supplied with Sebel’s consent or approval or under some commercial arrangement involving Sebel; and/or
(b) The respondent is an authorised supplier of Postura chairs or a variant thereof or has some trade association with Sebel.
165 The tort of passing off is notoriously difficult to define. A Full Court of this Court in Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 explained the history, meaning and current relevance of the tort. At 355.8–356.2, Gummow J said:
In Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 at 406, Lord Oliver of Aylmerton formulated the essential elements in a passing-off action without referring specifically to earlier authority. Now, Nourse LJ (in Consorzio del Prosciutto di Parma v Marks and Spencer plc [1991] RPC 351 at 368-369) has said that the formulations by Lord Diplock and Lord Fraser had not in his experience given the same degree of assistance in analysis and decision as “the classical trinity” of (1) reputation (2) misrepresentation and (3) damage. Nourse LJ regards what was said in the Borden case (supra) as signalling a “welcome return to the classical approach”.
It is neither necessary nor appropriate for us to comment upon these vicissitudes of the recent English case law. But it is to be observed that the law of passing off contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form. However, “the classical trinity” does serve to emphasise three core concepts in this area of the law. This appeal is concerned with all of them, namely, the geographical requirements for a sufficient reputation, the nature of the interests damaged, and the significance of fraud in the making of the misrepresentation.
166 More recently, in Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181, another Full Court of this Court said (at [34] to [37]):
34 In order to succeed in a passing off action, an applicant must establish, as one element of tort existing as at the date when the conduct commenced, that the applicant had the requisite reputation in the name or goods in the jurisdiction of the respondent and that there is a likelihood of deception among consumers or potential consumers resulting from the respondent’s actions. An applicant must prove that there are, within the relevant jurisdiction, a substantial number of persons who were aware of the applicant’s name or product and are possible consumers. It is necessary to show in a practical and business sense a sufficient reputation in the forum and this requires an evaluation of the size and distribution of the population of prospective consumers likely to be affected: see ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 342, 343, 346 (per Lockhart J), and 380 (per French J).
35 The tort of passing off is designed to protect the property and goodwill of a business. It is only available where an applicant can show goodwill or reputation in relation to the name or get-up of his or her goods or services because they have become distinctive of his goods or services in a particular market. An applicant will succeed where he or she can show that a potential customer is likely to be misled into believing that the respondents’ goods are goods of the applicant or are somehow associated with the applicant: see Cadbury-Schweppes Pty Limited v Pub Squash Co Pty Limited (1980) 32 ALR 387 at 393.
36 In Conagra 33 FCR at 381, in relation to a claim under the TPA, French J referred to the expression “a not insignificant number” of persons who would be potential customers as being an appropriate criterion. His Honour went on to observe that if the similarity complained of is “commercially irrelevant”, having regard to the number of people who know of that similarity, then the name or get-up is not misleading or deceptive.
37 In considering the question of reputation, although s 52 of the TPA makes no reference to “reputation”, decisions under that provision have referred to the need to prove a “significant” or “substantial” proportion of persons within the relevant market who would be likely to be misled: see 10th Cantanae Pty Ltd v Shoshana Pty Limited (1987) 79 ALR 299 at 301; National Exchange Pty Ltd v Australian Securities & Investments Commission (2004) 61 IPR 420 at 440; cf .au Domain Administration Ltd v Domain Names Australia Pty Limited (2004) 207 ALR 521 at 529-530.
167 There is evidence before me suggesting that the Postura chair is identified with Sebel – that Sebel is the source or origin of the product.
168 However, I am not satisfied that Sebel has made out a prima facie case that, by promoting, offering to supply and supplying the Titan chair, the respondent has represented or led or is likely to lead a substantial number of persons in Australia to believe that the Titan chair has the alleged association with either the Postura chair or with Sebel itself or that the respondent has the alleged association with Sebel.
169 I have already held that Sebel has failed to establish a prima facie case of deceptive similarity for the purposes of its trade mark infringement case.
170 Sebel accepts that a similar comparison to that undertaken in respect of the question of deceptive similarity for the purposes of s 120(1) of the Trade Marks Act is required to be undertaken in order to come to a view about deception in the context of the tort of passing off. Sebel quite rightly submitted that the comparison to be undertaken for passing off is a comparison between the two objects with which I am presently concerned, namely, the Postura chair and the Titan chair.
171 I refer to and rely upon what I have already said about deceptive similarity in [151] to [161] above.
172 In addition, I note that the embossing on the Titan chair makes reasonably clear that it is a product of Titan (a UK corporation). The embossing on the Postura chair makes clear that it is a Sebel product.
173 There is no suggestion that Sebel and Titan are associated in any relevant way.
174 The Titan furniture brochure, it is true, deploys bright colours similar to those found on some of the chairs in the Postura range of chairs. However, that brochure is only found in electronic form on the Reed Furniture website. It is also distributed in paper form but only by Reed Furniture representatives. I am not persuaded that any member of the class of potential customers is likely to be led to believe by the form or method of distribution of the Titan furniture brochure that either the respondent (or Reed Furniture) or the Titan chair has the alleged associations with Sebel.
175 In my judgment, when one weighs up the appearance and shape of the Titan chair with that of the Postura chair; the distinguishing markings which appear on each product; the level of knowledge on the part of potential purchasers about the two products and of the identity and experience of each of Sebel and Reed Furniture; and the market into which the products are to be sold, it is not likely that any deception along the lines of that pleaded by Sebel has occurred or will occur in the future by reason of the respondent’s introduction of the Titan chair into the Australian market.
176 The mere fact that one trader may have copied the product of another is not sufficient for passing off.
177 As Gibbs CJ said in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 199–200:
Speaking generally, 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 product 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.
178 Mason J (at 210–211) and Brennan J (at 224–226) expressed similar views.
179 The same reasoning would apply to passing off.
180 These passages were cited and followed in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd 100 FCR 90 (at [37] to [47] (pp 114–116), especially at [40] (pp 114–115).
181 For these reasons, I am of the view that Sebel has failed to establish a prima facie case of passing off.
The Trade Practices Act Claims
182 There are two groups of Trade Practices Act claims.
183 The first relies upon the allegations and contentions which Sebel makes in respect of passing off (see par 19 of the Statement of Claim). Sebel contends that those allegations and contentions lead to the conclusion that the respondent has been guilty of misleading and deceptive conduct or conduct that is likely to mislead and deceive in contravention of s 52 of the Trade Practices Act.
184 In my judgment, that case has the same difficulties as beset Sebel’s case based upon the tort of passing off. It must suffer the same fate.
185 The second group of Trade Practices Act claims comprises Sebel’s case based upon misrepresentations said to have been made in the Reed Furniture version of the Titan brochure in both its electronic and paper form. The conduct complained of is said to be continuing.
186 As I have already mentioned at [15] to [18] above, the respondent has offered an undertaking in respect of most of the matters about which Sebel complains in this part of its case. One aspect remains. This is the matter adverted to in [101] to [104] above.
187 It seems to me that Sebel has an arguable case that, in the context in which it is being made, a representation to the following effect in respect of the Titan chair:
The First 1 Piece Chair That Conforms to EN1729 Parts 1 & 2 In the UK
carries with it, or as part of it, a further representation to the effect that, at the time the above statement is made, the Titan chair is the only chair available in Australia which meets the standards referred to. I am of this opinion because:
(a) The statement is made in the present tense although the subject matter of it is a once and for all historical fact that the Titan chair was the first chair to conform to the requisite standards. The use of the present tense is not apt if all that is being conveyed is that one historical fact;
(b) The statement is probably only of relevance if it carries with it some presently unique attribute relevant to a potential purchaser’s decision to purchase. The fact that the chair was the first to meet the standards referred to is of little or no significance if, at the time the hypothetical purchasing decision is to be made, other chairs also meet that standard. The suggestion being impliedly carried into the present time is the notion that it is the only chair which conforms to those standards;
(c) Compliance with relevant standards is likely to be a matter of considerable importance to potential purchasers of chairs of the type under consideration here. Safety, good ergonomic design, and strength of the chairs are all factors which will influence the purchasers.
188 In my judgment, Sebel’s case on this point has reached the level of a prima facie case. Subject to my consideration of the remaining questions (balance of convenience and balance of justice), I think that it is entitled to an injunction restraining the respondent from making statements which suggest that the Titan chair is the only chair available in Australia which conforms to the UK standard EN 1729 Parts 1 and 2 (2006).
The Balance of Convenience and the Balance of Justice
189 Because I have held that Sebel has failed to establish a prima facie case for relief in terms of par 1 of its claim for interlocutory relief, it is not necessary for me to consider the balance of convenience and the balance of justice in respect of that claim. However, it is desirable that I briefly express my views on these matters.
190 Sebel submitted that the respondent’s conduct involves the infringement of a monopoly property right which was undertaken by the respondent with its “eyes wide open”. That is to say, the respondent was aware of Sebel’s trade mark, took advice as to whether or not the supply of the Titan chair in Australia would infringe that trade mark or any other of Sebel’s intellectual property rights and decided to go ahead with its plans to import and sell the Titan chair and run the gauntlet. It did so in the face of warnings from Sebel. Sebel also submitted that Sebel was the established supplier of this type of chair in the relevant market or markets in Australia whilst the respondent was embarking upon “new trade”.
191 In my view, all of these matters are to be considered in light of the strength of Sebel’s claim for relief directed at stopping the sale of the Titan chair in Australia.
192 Even if I am wrong about the first part of the present enquiry (the question of whether or not Sebel has made out a prima facie case), I am of the opinion that the case which it seeks to put in support of that claim for relief is weak – sufficiently weak to neutralise the submissions on balance of convenience made by Sebel to which I have referred in [190] above.
193 In my judgment, the most significant matter to be weighed in the balance in this part of the case is the parties’ respective ambitions in respect of Contract No 1006.
194 The other matters relied upon by the parties rise no higher than general assertions of harm which do not advance either position much in the present case. Furthermore, I do not place much weight upon the evidence led in this context directed to the impact which the granting of an injunction would have on the UK Titan company. Similarly, I am not persuaded that Sebel has been guilty of laches or delay which should deprive it of any remedy to which it might otherwise be entitled.
195 Sebel seeks an injunction in order to shut out the respondent from Contract No 1006. An interlocutory injunction in the terms of par 1 of Sebel’s claim for interlocutory relief, if granted at the present time, would almost certainly deprive the respondent of any chance of being selected to supply a Titan-type chair to the NSW Government and would probably do so for many years to come.
196 On the other hand, if no injunction is granted, the advantages and disadvantages of the two brands of chair can be explained and fought over in the marketplace. It is highly unlikely that those employees of NSW Department of Commerce who have the responsibility of purchasing this type of chair on behalf of the NSW Government for its departments, institutions and authorities will not already know that the Titan chair has been introduced to compete with the Postura chair and that each brand of chair comes from a different source.
197 In my view, if I had found that Sebel had a prima facie case for an injunction in the terms of par 1 of its claim for interlocutory relief, the balance of convenience and the balance of justice favour the refusal of such an injunction.
198 An injunction restraining the supply of the Titan chair would probably also affect the respondent’s prospects of supplying as well as its capacity to supply other furniture under Contract No 1006.
199 The granting of an injunction in those terms would also be likely to affect the respondent’s prospects of supplying other furniture under arrangements which it has or hopes to have with other potential purchasers.
200 Sebel’s claim for relief in relation to the specific misrepresentation about which it complains is in a different category.
201 In my judgment, the balance of convenience and the balance of justice favour the grant of an injunction restraining the making of any statement by the respondent which suggests that the Titan chair is the only plastic sidechair available in Australia which currently conforms to UK standards EN 1729 Parts 1 and 2 (2006).
202 A statement to that effect is a false statement because Sebel’s Postura Plus sidechair meets the requirements of those standards and has done so since late March 2008.
203 The only issue that seems to me to be involved here is whether the granting of an injunction would cause the respondent significant financial hardship – so significant that it should tip the balance against the grant of an injunction when weighed against the likely benefits to Sebel if an injunction is granted.
204 The cost to the respondent of altering the Titan chair brochure is not likely to be great. The likely harm to Sebel if no injunction is granted may be significant.
205 In those circumstances, I propose to grant an interlocutory injunction dealing with this aspect of Sebel’s case.
Conclusions
The Claim for Interlocutory Relief
(a) Sebel has failed to make out a prima facie case for relief which would restrain the promotion, offering to supply or supply of the Titan chair in Australia.
(b) For that reason, its claim for an interlocutory injunction restraining the respondent from engaging in such activities in respect of the Titan chair is refused.
(c) If I am wrong in conclusions (a) and (b), I am of the view that the balance of convenience and the balance of justice in any event favour the refusal of an interlocutory injunction restraining the respondent from promoting, offering to supply or supplying the Titan chair in Australia.
(d) Sebel has made out a prima facie case for an interlocutory injunction restraining the respondent from representing in trade or commerce in Australia in relation to chairs that:
(i) The Titan chair is the only plastic sidechair available in Australia which currently conforms to UK standards EN 1729 – Parts 1 and 2 (2006); or
(ii) The Titan chair is the first 1-piece chair that conforms to UK standards EN 1729 – Parts 1 and 2 (2006).
(e) The balance of convenience and justice favours the grant of such an injunction; and
(f) There will be an interlocutory injunction to the effect of the injunction referred to in sub-par (d) above.
Costs
206 Sebel has had some limited success in its claim for interlocutory relief. However, it has failed to obtain the injunction to which most of the evidence was directed and to which the parties devoted most of their time and attention at the hearing and in preparation for the hearing.
207 In those circumstances, I think that Sebel should pay the respondent’s costs of and incidental to the interlocutory hearing which took place before me on 23 December last and I so order.
Final Hearing
208 The Court can accommodate a final hearing of these proceedings at some date convenient to the parties in March or April 2009. I direct that the parties confer with a view to preparing a set of directions which the Court can make by consent, such directions being designed to have the proceedings ready for final hearing by no later than the second week of March 2009. I also direct that the parties’ legal representatives confer with a view to being able to inform the Court as soon as practicable of:
(a) The likely length of the final hearing; and
(b) The dates when the parties and their representatives are available to conduct the final hearing.
209 I further direct that the proceedings be listed before me for directions on Thursday, 5 February 2009 at 9.30 am at which time I intend to fix the proceedings for final hearing and to make all necessary directions to ensure that the proceedings are ready for final hearing within the time frame outlined above.
| I certify that the preceding two hundred and nine (209) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Foster. |
Associate:
Dated: 12 January 2009
| Counsel for the Applicant: | Mr DM Yates SC, Ms ST Chrysanthou |
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| Solicitor for the Applicant: | Hazan Hollander Solicitors |
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| Counsel for the Respondent: | Mr JM Hennessy |
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| Solicitor for the Respondent: | Gilbert + Tobin |
| Date of Hearing: | 23 December 2008 |
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| Date of Judgment: | 12 January 2009 |
ANNEXURE A
ANNEXURE B
