FEDERAL COURT OF AUSTRALIA

Sporte’ Leisure Pty Ltd v Paul’s International Pty Ltd [2009] FCA 445

SPORTE' LEISURE PTY LTD, GREAT WHITE SHARK ENTERPRISES LLC and LIFESTYLE BRANDS HOLDINGS LLC v PAUL'S INTERNATIONAL PTY LTD and PW TRADING PTY LTD

NSD 335 of 2009

PERRAM J

23 APRIL 2009

SYDNEY

THE COURT ORDERS THAT:

1.                  The application to set aside orders 3 and 4 made 21 April 2009 be dismissed.

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.

REASONS FOR JUDGMENT

1                     This matter came before me on Tuesday 21 April 2009 in the duty list.  At that time I made ex parte orders restraining the respondents, inter alia, from manufacturing, importing, distributing or selling any clothing under the name “Greg Norman” without the licence of the applicants.  I also ordered Mr Paul Dwyer, a director of the first respondent, to swear or affirm within three days an affidavit setting out the names of all persons involved in the manufacture of the garments and to obtain copies of all documents evidencing that information.

2                     The matter was returned before me on Thursday 23 April 2009.  At that time the injunctions were continued by consent.  The respondents however contested the appropriateness of the order relating to the affidavit.  It was accepted by the respondents that there was, in the requisite sense, a prima facie case.

3                     Orders of the kind made find their origin in Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133.  They have previously been made in this Court: see Authors Workshop v Bileru Pty Ltd (1989) 88 ALR 211 at 214-215 per Lockhart J; Hinchliff v Abu-Dabat (1998) 41 IPR 400 at 401 per Cooper J.

4                     It is clear from those authorities that such an affidavit should not be ordered where there is evidence that there is a real and appreciable risk of criminal proceedings being taken against the respondents.  This is because the requiring of such an affidavit might imperil the respondents’ right to avoid self-incrimination. 

5                     There was no evidence placed before me of any such risk in the present proceeding.  Accordingly, there was no reason to set aside the orders.  It is for that reason that on 23 April 2009 I declined to set aside orders 3 and 4 of the orders I made on 21 April 2009.

Associate:

Dated:         7 May 2009