FEDERAL COURT OF AUSTRALIA

Simplot Australia Pty Limited v McCain Foods (Aust) Pty Ltd [2001] FCA 518

SIMPLOT AUSTRALIA PTY LIMITED ACN 070 579 609

-v-  McCAIN FOODS (AUST) PTY LTD (ACN 000 629 587)

V299 of 2001

RYAN J

MELBOURNE

4 MAY 2001

THE COURT ORDERS:

1.         THAT the application for an interlocutory injunction be refused.

2.         THAT the parties to bring in, at 10.15 am on 14 May 2001, minutes of the orders which each of them proposes as appropriate to embody directions for a speedy trial and for the keeping of records of sales of McCain’s Hash Brown Triangles.

3.         THAT the costs of both parties of and incidental to the motion for interlocutory relief be costs in the cause.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     By notice of motion dated 24 April 2001, the applicant, Simplot Australia Pty Limited (“Birds Eye”) seeks the following interlocutory relief against the respondent McCain Foods (Aust) Pty Ltd (“McCain”):

“An injunction restraining the Respondent until the trial of the proceeding or further order, whether by itself, its directors, officers, servants or agents or otherwise from manufacturing, supplying, selling or offering for sale or supplying or promoting any hash brown product in the packaging referred to in paragraph 10 of the statement of claim;”

2                     The packaging referred to in par 10 of the statement of claim is a polythene envelope bearing on its face one larger and one smaller representation of the McCain trade mark, being the name “McCain” in white cursive script on an oblong black background surrounded by a yellow border.  The largest legend on the front of the wrapping is the word “triangles” in lower case black lettering surmounted by the words “Hash Brown” in a smaller different script, also in black.  The three words just described are displayed against a yellow background and below them and slightly to their left there is quite prominently displayed in white lettering against a purple background the legend “750g NET”.  In the bottom front of the envelope is a red disk about the size of a 10 cent coin, bearing the words in white uppercase fonts “OVEN HEAT”, accompanied by a stylised representation of yellow flames.  Surrounding the written material are pictorial depictions in various sizes of golden-brown triangles, apparently of cooked potatoes.  The uniform background of the whole envelope has been variously described but can be designated, not inaccurately, as cherry-coloured. 

3                     On the reverse of the envelope appear two small reproductions of each of the insignia “Hash Brown triangles” and the “750g NET” “flag” described above.  There are also two smaller reproductions of the McCain trade mark, one of which appears as the word “McCain” in the legend “Deliciously crisp & Golden McCain Has Brown Triangles are made from real potato.”  The remaining text on the reverse of the envelope is in white, save for two gold sub-headings and comprises a table of “Nutritional Information”, cooking instructions, a note of the ingredients, directions for refrigerated storage, the statement “PRODUCT OF AUSTRALIA” and addresses for the Australian and New Zealand distributors of the product.

4                     Birds Eye contends that McCain’s marketing of its “Hash Brown triangles” in the packaging just described is misleading and deceptive in contravention of ss 52 and 53 of the Trade Practices Act 1974 (“the Act”) and further or alternatively constitutes the tort of passing off.  Those consequences are said to flow from the fact that Birds Eye has, since September 2000, manufactured and marketed its own “Hash Brown Triangles” also in a polythene envelope, somewhat smaller than the McCain version.  The Birds Eye wrapping has on its front, in the middle towards the top, the Birds Eye trade mark consisting of the words “BIRDS EYE” in red uppercase lettering on a white background in the form of a stylised representation of a bird with wings spread.  The bird in turn, is mounted on a royal blue oblong base with a white frame and indented or “scalloped” lower edge.  Below the trade mark in large royal blue block letters are the words “HASH”, each letter of which is descending in size so that the letter “A” is replaced by a representation of golden-brown hash potatoes in the form of a roughly isosceles triangle, and the word “BROWNS”, each letter of which is in ascending size.  The legend “HASH BROWNS”  has been reproduced on a yellow background and has been given a “three dimensional” blocking effect by picking out the whole in a lighter, lavender, shade of blue.  Below and slightly to the left of that legend in much smaller script are the words “Crunchy Triangles” and in still smaller black text is the expression “660g NET”.  Clustered around the text in what is represented by a convention of white streaks as a “jet-propelled” motion, are depictions of golden-brown hash brown triangles, including that which forms the “A” in the legend “HASH BROWNS” described above.

5                     The uniform background colour of the Birds Eye envelope has variously been described as “pillar-box” or “fire-truck” red and could, again without undue inaccuracy, be called “scarlet” or “cardinal”. 

6                     On the reverse of the Birds Eye envelope are three small reproductions of the Birds Eye trade mark and two smaller versions of the “HASH BROWNS” legend described above.  Three panels of black text on a yellow background contain respectively “Nutrition Information”, instructions for preparation by various heating methods and an encomium of the “big Australian grown potatoes” used by Birds Eye “to make their perfect Hash Browns”.  Ingredients, refrigerated storage instructions, the applicant’s address and a telephone number to which complaints may be addressed are noted in small white text in the lower right corner of the reverse side of the envelope.  At the top centre of that side, in fairly prominent gold text is this promotional narrative;

“Craig walked in, starving.  He needed something tasty, quick.  In a jiffy, the Birds Eye* Hash Browns were out of the oven and being hoed into.  Once he started on the golden crunchy triangle snacks he couldn’t stop.  With a mouth full of shredded potato delight, the only thing he could get out was ....

...YUM!”

7                     Birds Eye has adduced evidence from a marketing consultant, Mr Beaton, who has expressed the opinion that;

“It is important to recognise that consumers buy brands rather than the products per se.  A brand comprises a combination of elements in the mind of the consumer which may include the physical properties of the product, the brand name, brand symbols and designs or logos, colour, personalities associated with the brand, and brand packaging.  These elements conjure up certain thoughts and feelings on the part of consumers that can become strongly associated with the brand.  The gestalt or overall image of a brand as it relates to consumers includes not only these physical elements, brand name and packaging, but also associations with the brand and branding devices used to create associations, especially its advertising.  Consumers develop an image in their mind of the brand, made up of a combination of these elements.  It is this overall image to which the consumer relates and what they look for when in the supermarket.”

8                     Mr Beaton has also expressed the view that consumers of supermarket items like hash brown potatoes are “looking for the product (or more accurately the product get-up) that most closely resembles the brand image they associate with the brand they seek.”  As well, Mr Beaton propounded a theory about the making and effect of television commercials promoting consumer goods like frozen hash browns.  He then drew a distinction between a “unifying brand name” under which goods within a product category are sold, eg Birds Eye, which Mr Beaton calls “the family brand”.  He next suggested that “Individual products within the range are referred to as sub-brands (eg, Hash Brown Triangles)” and in the same context drew this conclusion;

“In my experience, it is not unusual for sub-brand names to be more important in terms of consumer recognition of a particular product that than the family brand name or corporate brand name.  For example, the chocolate bar brands CRUNCHIE, VIOLET CRUMBLE and PEPPERMINT CRISP are sub-brands where, in my opinion, the sub-brand is significantly more dominant than either their family brands or corporate brands.  Indeed, many loyal consumers of these brands would not be able to recall with certainty the correct family brand name or corporate brand name for each of these brands, despite these names being marked on the packaging.”

9                     Mr Beaton next analysed Birds Eye’s television commercial (“TVC”) promoting its Hash Brown Triangles and suggested that it has the effect of “strongly reinforcing the sub-brand Hash Brown Triangles rather than the family brand, Birds Eye”.  From that premise, he concluded that many consumers “prompted by the Applicant’s TVC and seeking out the Hash Brown Triangles brand, are very likely to come across the Respondent’s Hash Brown Triangles in the freezer section of their local supermarket” and “are likely to recognise the Respondent’s product as one and the same as the brand they are seeking.”  Mr Beaton also attributed similar thought processes to consumers who had previously purchased Birds Eye’s product without having seen its TVC.  He contended;

“The brand image, as I have said in the paragraphs above, centres around the name Hash Brown Triangles.  The same image is portrayed in the Respondent’s product.  So again consumers who see the Respondent’s product are likely to recognise it (incorrectly) as the product they have previously purchased.  Again the absence of any major differentiating element such as an obviously different sub-brand name or a radically different colour scheme or a radically different package shape or fabric or different pricing structure means that for many of these consumers they would have few if any signals that this product was not the one they previously purchased and meant to purchase again.

What might make a different would be if such consumers were presented with the Respondent’s product immediately side-by-side with the Applicant’s product.  This might prompt some buyers to question which of the two is the brand they seek.  At this stage, some consumers may realise they are dealing with two separate products from two separate family brands.  Yet, for many of these consumers, without further information about the brand they seek, they would become confused as to the similarities between the two products and may still chose the Respondent’s Hash Brown Triangles in the belief that they are the Applicant’s Hash Brown Triangles.  Yet other consumers may only see the Respondent’s product and not the Applicant’s product.”

10                  There is evidence from Ms Robb, Birds Eye’s Group Marketing Manager, that Birds Eye spent $255,000 in producing in September 2000 its thirty second TVC for Hash Brown Triangles which has been screened every week night in November and December 2000 at a cost of $1.751 million.  The promotion was so successful that screening was discontinued to allow production to catch up with demand.  Screening was resumed on 15 April 2001 and an expensive schedule of future screening has been arranged.  Ms Robb has further deposed;

“I believe that McCain has been able to emphasises the word ‘Triangle’ in its packaging for hash brown triangles due to the fact that our Bermuda Triangles commercial has educated the consumer to understand that here is a new hash brown product on the market which is in a triangular shape.  The emphasis by McCain on the word ‘triangles’ on their packaging causes me to believe that consumers will purchase McCain’s hash brown triangle when they intend to purchase the product in the Bermuda Triangles commercial.

Based on my experience, a consumer making a quick purchase decision does not concentrate on the particular shade of colour of a product but between colours.  As our Hash Brown Triangles and the McCain Hash Brown Triangles have packaging of a similar colour I consider that many consumers are likely to confuse the two, especially when other aspects of McCain’s packaging are considered.”

11                  The evidence of Ms Robb directed to the balance of convenience included these passages;

“If we had to cancel the promotion of our Hash Brown Triangles again the consumer awareness of the product and actual sales would drop.  We planned this television advertising schedule as we considered it to be the most efficient strategy for retaining a high level of consumer awareness over our initial 12 month launch.  The Bermuda Triangles commercial is shown in concentrated blocks so as to maintain consumer awareness over the complete launch period.  Each block of advertising builds on the previous block and the advertising we undertook in November and December 2000.  The first 12 months after a product’s launch is critical for establishing consumer adoption.  If McCain’s Hash Brown Triangles remains on the market I consider that any further advertising for our product would advertise McCain’s Hash Brown Triangles as well as our own product.

.......

If an injunction were not to be granted, Simplot would have to choose between conducting no further television advertising until the final hearing in this proceeding or producing an entirely new television commercial.  Before we could run a new television commercial, the commercial would have to be produced.  I consider that it would be impossible to change or amend the Bermuda Triangles commercial and we would have to reshoot a completely new commercial which would have to be developed from scratch.  This in itself would take several months and the budget for such a new commercial would be very similar to that of our previous commercials, namely $255,000.

Simplot increased its recommended retail price for our Hash Brown Triangles on 2 April 2001 from $2.19 to $2.29 on the assumption that our advertising would start on Easter Sunday and our campaign would continue as planned.  The recommended retail price is the price that we suggest a retailer sells our product.  I considered that the screening of our Bermuda Triangles commercial would effectively support the increased price of our product.  However, if our Hash Brown Triangles were not supported by our scheduled advertising I consider that sales would reduce as consumers would be less prepared to pay this price premium.  I consider that it would be ineffective for us to reduce our recommended retail price if we cancelled our advertising campaign for our Hash Brown Triangles as retailers usually fail to pass on such a reduction to consumers and retain the original price thereby retaining the extra profit.

I am concerned that if an injunction is not granted Simplot will also suffer loss of the benefit of the investment in the advertising already made and consumer attraction already established.

I consider that we will also lose sales from other frozen potato products in that a consumer who has tried and is satisfied with McCain’s Hash Brown Triangles, may well decide to try other products within the ‘family brand’.  In this regard, Simplot could lose sales across a broad range of its potato products.

It is quite possible that we may not produce new advertising because some sales would still go to McCain.  Without such support, sales of our Hash Brown Triangles would very likely reduce and this could even lead to deletion of our product from supermarkets in the medium term.  We would have to put our efforts into creating a new product with its associated costs and time.”

12                  The evidence also discloses that McCain, in August 1999, completed the construction of a new processing plant which incorporated a special forming machine for the manufacture of triangular shaped product.  McCain had previously imported from Canada Hash Brown Wedges which were triangular in shape.  That product was distributed through McCain’s food services division to hotels, canteens and similar customers.  After the successful launch of a product called “Shredded Hash Browns” which has been extensively advertised, McCain decided, in September 2000, after learning of the launch of Birds Eye’s Hash Brown Crunchy Triangles, to go into production for the retail market of its own Hash Brown Triangles. 

13                  According to McCain’s Vice-President of Marketing for Asia-Pacific, Mr Boyle, the design, concept and background colour for the packaging of the new product were agreed on early in November 2000 and the final form of the package was determined before Christmas of that year.  It was intended that the packaging should be consistent with that for other products in the McCain specialty potato range, “Potato Nuggets” and “Shredded Hash Browns”.  Mr Boyle believed that examples of the packaging of Birds Eye Hash Brown Triangles came to the notice of McCain in mid to late October 2000, but he rejects the suggestion that the McCain packaging was designed to appear similar to that for the Birds Eye product, or was designed to benefit from the Birds Eye TVC, which, he points out, did not go to air until the design of the McCain packaging was well-advanced.

Is there a serious question to be tried?

14                  It has been contended on behalf of Birds Eye that the present case can be assimilated to Reckitt & Colman Ltd v Borden Inc (1990) 17 IPR 1.  In that case, the respondents, Reckitt & Colman Ltd, had for many years marketed preserved lemon juice in a plastic “squeeze” container in the shape of a lemon, adapted to contain 55ml of juice.  On one side of the container was embossed the word “Jif”, which was not picked out in a different colour from the yellow body of the whole container.  The appellant, Borden, entered the UK market in 1975 selling bottled lemon juice under the name “ReaLemon”.  After a period of competition between the appellants and the respondents, Borden devised a 75ml plastic squeeze container, also in the shape of a lemon.  The Mark I version of that container differed from the Jif lemon in that it had a green, instead of a yellow, cap, and had a yellow leaf-shaped neck label on which the name “ReaLemon” appeared in prominent green print.  At first instance, it was held that the proposed sale of lemon juice in any of the versions of the “ReaLemon” container would constitute an actionable passing off.  Accordingly, a permanent injunction was granted restraining Borden from selling lemon juice in packaging corresponding to the Mark I, Mark II or Mark III versions, or in any container so nearly resembling the respondent’s “Jif” container as to be likely to deceive, without making it clear to the ultimate purchaser that it was not of the respondents’ manufacture.  The matter went on appeal to the House of Lords and, in the course of his speech, Lord Oliver of Aylmerton, at p 7, identified as follows the elements which a plaintiff in an action for passing off has to prove;

“These are three in number.  First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying get-up (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”

15                  Although it is clear that Birds Eye has established a good will or reputation attached to prepared foods by association with the trade mark, “Birds Eye”, I entertain considerable doubt that any such goodwill or reputation has been attached to the trade description “Hash Brown Triangles” or to the individual packaging, excluding the trade mark, under which Birds Eye has offered goods of that trade description to the public. 

16                  Part of the problems confronted by Birds Eye may be attributable to its concentration on increasing or creating a market for what Mr Beaton has called the “sub-brand” Hash Brown Triangles.  As Stephen J said in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216, at 229;

“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.  In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a  plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will  render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. [(1946) 63 R.P.C. 39, at p.42], per Lord Simonds).  As his Lordship said [(1946) 63 R.P.C., at p.43], the possibility of blunders by members of the public will always be present when namesconsist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing occupationwhich the words describe.

If this be so in the case of passing off actions the case of s.52(1), concerned only with the interests of third parties, is a fortiori.  To allow this section of the Trade Practices Act to be used as an instrument for the creation of any monopoly in descriptive names would be to mock the manifest intent of the legislation. Given that a name is no more than merely descriptive of a particular type of business, its use by others who carry on that same type of business does not deceive or mislead as to the nature of the business described.”

17                  In the present case, Birds eye has chosen, no doubt for what appear to it to be good commercial reasons, to concentrate its promotional efforts on the general descriptive words “Hash Brown Crunchy Triangles” without distinctively linking them to “Birds Eye”, or any other device or get up in which it has established a reputation or goodwill.  In those circumstances, as Stephen J indicated in the passage just quoted, the application of the same descriptive words, or some of them, to the like products of another trader, will not ordinarily mislead the public.

18                  I am also doubtful whether McCain, by offering its Hash Brown Triangles in their present get-up has been guilty of a misrepresentation leading, or likely to lead, the public to belief that McCain’s Hash Brown Triangles are the goods of Birds Eye.  For one thing, the McCain trade mark is displayed no less prominently on its packaging than the Birds Eye mark is displayed on the get-up of its “Hash Browns”.  Moreover, Mr Macaw QC who appeared with Mr Collinson for Birds Eye, did not seriously suggest that to be the deception which his client feared.  The suggestion was, rather, that consumers who had seen the “Bermuda Triangle” TCV would be led, or likely to be led, when they saw them in a supermarket to think that the McCain’s Hash Brown Triangles were the ones which they had seen portrayed in the TCV.  That falls short of the misrepresentation, required by Lord Oliver, to the effect that the McCain goods were the goods of Birds Eye.  However, it was pointed out by Lord Jauncey of Tullichettle in the same case, at p 18;

“However, it is not essential to the success of a passing off action that the defendant should misrepresent his goods as those of the plaintiff. It is sufficient that he misrepresents his goods in such a way that it is a reasonably foreseeable consequence of the misrepresentation that the plaintiff's business or goodwill will be damaged. Thus a misrepresentation by B that his inferior goods are of a superior quality, which is that of A's goods, whereby people buy B's goods instead of A's, is actionable.”

19                  An important distinction between this case and the “Jif” litigation is exposed by this passage from the speech of Lord Oliver at p 8;

“Your Lordships have been able, as was Walton J and as were the judges of the Court of Appeal, to see the appellants' and the respondents' products and, indeed, a number of other not wholly dissimilar products, including the Lazy Lemon and the Supercook, side by side so as to make a direct comparison. I confess that it came as something of a surprise to me, as indeed I believe it did to others of your Lordships, that a housewife presented with a display of these products in close juxtaposition would be likely to pick up at least the Mark II or Mark III versions of the appellants' product in the belief that what she was buying was the respondents' Jif lemon juice. But it has to be borne in mind that, as the evidence at the trial established, the primary retail outlets for these products are supermarkets. They are not displayed in the supermarket in the way in which they have been shown to your Lordships. In the ordinary way, supermarkets do not carry a selection of different brands of preserved lemon juice, but would be likely to stock only one brand plus possibly one other sold under their own brand name or get-up, so that the goods are not ordinarily offered for sale in the artificial conditions in which they have been displayed in the court room or in the Committee Room of your Lordships' House, and the purchasing member of the public is reliant upon his own perception or recollection, unassisted by the opportunity of side-by-side comparison.”

20                  In the present case, by contrast, the evidence indicates that, in those supermarkets where McCain Hash Brown Triangles are presently offered for sale, they are displayed in refrigerated cabinets side by side with, or in very close proximity to, their Birds Eye counterparts.  In addition, the fact that the net weights of the two products are different, resulting in different sized packaging and differential recommended retail prices, provides a further reason why a prospective purchaser might make more than a fleeting comparison of the two products and discern what is obvious, at least to me, that the McCain Hash Brown Triangles are not represented to be the goods of Birds Eye.

21                  Similar considerations suggest that Birds Eye face correspondingly grave difficulties at trial in establishing the elements of a contravention of s 52 or s 53(a) of the Act.  I find it difficult to perceive, on the present state of the evidence, even an arguable case that McCain has contravened s 53(c) or (d) of the Act. 

22                  The difficulties which I have indicated as confronting Birds Eye are only those which have suggested themselves to me after a necessarily impressionistic conspectus of the evidence as it stands and a cursory review of the salient case law.  They should not be regarded as exhaustive.  However, in spite of them, I have concluded, not without hesitation, that Birds Eye has made out an arguable question to be tried in the sense used in the authorities governing the grant or refusal of interlocutory injunctions. 

23                  I have reached that conclusion because perceptions of the similarities and differences between the get-ups of the rival products are very much a matter of impression on which reasonable minds, drawing on different experiences and habits of observation, may reasonably differ.  Because the McCain product has been on the market for an appreciable time there will be an opportunity at trial to adduce survey evidence of public reaction to it in normal marketing conditions rather than the artificial circumstances remarked on by Lord Oliver in Reckitt & Colman Ltd v Borden Inc (supra) at p 8.  Birds Eye will also be able to endeavour to establish by cross-examination of the relevant McCain witnesses that they intentionally adopted the get-up described above to appropriate to the McCain product some of the goodwill attached to the Birds Eye goods as a result of the TVC.  For the effect of establishing an intention of that kind, see eg the authorities collected by Goldberg J in Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (1999) 44 IPR 281, at 365.

Balance of convenience.

24                  If an interlocutory injunction were granted in something like the terms sought, McCain would be forced to withdraw existing stocks of its Hash Brown Triangles from retail outlets and would lose the value of stocks of its present packaging.  The lead time required to develop alternative packaging would give Birds Eye a significant competitive edge, the value of which would be difficult to quantify for the purpose of enforcing Birds Eye’s undertaking as to damages.  Similar observations apply to the fact that the withdrawal of the existing get-up would also deny to McCain’s Hash Brown Triangles the “spin-off” benefits of advertising McCain’s cognate products, “Shredded Hash Browns” and “Potato Nuggets”.  As well, the introduction of alternative packaging would probably result in the present packaging being jettisoned, even if McCain were ultimately to succeed at trial.  The cost to McCain of loss of “shelf-space” in supermarkets as a result of the temporary withdrawal of one of its three specialty potato products, would also be significant and difficult to quantify for the purpose of enforcing Birds Eye’s undertaking as to damages.

25                  Similar factors are to be weighed in considering the inconvenience to Birds Eye of the presumptively unlawful presence in the marketplace until trial of McCain’s Hash Brown Triangles.  The lost growth in sales generated by the TVC which would be “siphoned off” to the McCain product would be difficult to quantify in the assessment of pecuniary damages.  If, as Ms Robb has suggested, Birds Eye prefers to suspend screening of the TVC until trial, the consequential losses flowing from the adoption of that strategy would also be substantial and difficult to quantify.

26                  However, having given the matter as much attention as I could in the time available, I have concluded that the balance of convenience favours the refusal of interlocutory relief.  I am reinforced in that conclusion by the reservations indicated above as to Birds Eye’s prospects of success at trial.  As Woodward J observed in Bullock v Furnishing Trades Society of Australasia (1995) 5 FCR 464, at 472;

“.... when it becomes necessary to consider the balance of convenience, it is, I believe, quite proper to continue to bear in mind the apparent strength of the applicants’ case;  the two legs of the test need not be considered in isolation from each other.  Thus an apparently strong claim may lead a court more readily to grant an injunction when the balance of convenience is fairly even.  A more doubtful claim (which nevertheless raises “a serious question to be tried”) may still attract interlocutory relief if there is a marked balance of convenience in favour of it.  This view received support from the High Court in Beecham’s case [Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618] at [p 622].”

27                  Another factor which has influenced me to exercise the Court’s discretion in the way just indicated, is the difficulty, without the benefit of full evidence and argument, of framing an injunction which will indicate with precision the aspects of the McCain’s packaging which have prima facie implicated it in passing off or a contravention of the Act.  There has also weighed with me the consideration that difficulties in quantifying the damages which Birds Eye will presumptively sustain between now and trial can be mitigated by an account of profits which will be facilitated by a detailed record of sales of its Hash Brown Triangles which I propose to order McCain to keep.  Finally, in this context, I have been mindful that the damage Birds Eye claims it expects to suffer can be minimised by directions for an expedited trial, which I shall give.

Conclusion.

28                  For the reasons which I have endeavoured to explain, the application for an interlocutory injunction is refused.  I shall direct the parties to bring in, at 10.15 am on 14 May 2001, minutes of the orders which each of them proposes as appropriate to embody the directions foreshadowed above for a speedy trial and for the keeping of records of sales of McCain’s Hash Brown Triangles.  The costs of both parties of and incidental to the motion for interlocutory relief will be costs in the cause.

Associate:

Dated:              4 May 2001