FEDERAL COURT OF AUSTRALIA

Schutz DSL (Australia) Pty Ltd (ACN 009 069 907) v VIP Plastic Packaging Pty Ltd (ACN 095 313 705) (No 2) [2009] FCA 1137

Schutz DSL (Australia) Pty Ltd (ACN 009 069 907) v VIP Plastic Packaging Pty Ltd (ACN 095 313 705) [2009] FCA 1049

SCHUTZ DSL (AUSTRALIA) PTY LTD (ACN 009 069 907), SCHUTZ GMBH & CO KGAA and PROTECHNA S.A. v VIP PLASTIC PACKAGING PTY LTD (ACN 095 313 705) and VIP STEEL PACKAGING PTY LTD (ACN 095 314 195)

WAD 136 of 2009

MCKERRACHER J

6 OCTOBER 2009

PERTH

THE COURT ORDERS THAT:

Upon the applicants’ giving the usual undertaking as to damages and a further undertaking not to correspond with any third party disclosed as a result of order 1 of these orders until the parties have agreed or the Court has made an order in relation to the form of any correspondence or communication with such third parties,

1.                  Within 7 days of these orders, the respondents by their proper officer file and serve an affidavit specifying the names, addresses, telephone numbers and email addresses of those of its customers to whom they have sold Composite Intermediate Bulk Containers suitable for use in the transport of dangerous goods manufactured by the first or second applicants, or their agents or licensees, which contain inner plastic containers manufactured by persons other than the first or second applicants (DG IBCs).

2.                  The applicants’ application for an interlocutory injunction restraining the respondents from exploiting Cross-Bottled IBCs be dismissed on the basis of the respondents’ undertaking that the respondents, whether by themselves, their officers, servants, agents or otherwise:

(a)        will refrain from selling, offering for sale or distributing in the course of trade Cross-Bottled IBCs designated as being suitable for the transport of dangerous goods; and

(b)        will affix to each label plate of the cage of any Cross-Bottled IBC that is sold, offered for sale or distributed in the course of trade by them a heat resistant label in the form and dimensions of the example annexed hereto and marked ‘A’ and to remove therefrom any marking affixed by the applicants signifying that the Cross-Bottled IBC is certified for use in the transport of dangerous goods.

until trial or further order of the Court.

3.                  The applicants give security for the undertaking as to damages dated 7 August 2009.

4.                  Until further order of the Court or until otherwise agreed by the parties the security for the undertaking as to damages:

(a)        be in the sum of $250,000; and

(b)        be by way of payment into the St George Bank Limited account numbered 553090296 to be operated by the signature of a partner of the solicitors for the applicants. 

5.                  The respondents have liberty to apply to increase the security offered pursuant to order 4 above upon 7 days’ written notice or on such shorter period as the Court may allow.

6.                  The applicants have liberty to apply on 7 days’ written notice or such shorter period as the Court may allow to:

(a)        vary the form of the heat resistant label the subject of these orders; or

(b)        vary the manner in which the respondents must affix any such label. 

7.                  The applicants file and serve any amended application together with a statement of claim on or before 14 October 2009.

8.                  The respondents file and serve their defence and any cross-claim on or before 4 November 2009.

9.                  The applicants file and serve any reply and their defence to any cross-claim on or before 16 November 2009.

10.              The matter be listed for directions at 9.30 am on 18 November 2009.

11.              The parties have general liberty to apply on 7 days’ written notice, or within any shorter period permitted by the Court.

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.

Appendix ‘A’

REASONS FOR JUDGMENT

1                                             On 17 September 2009, I made the following orders in this matter:

1.         The parties are to draw up orders reflecting these reasons within ten days. 

2.         The motion to transfer the proceeding be dismissed. 

3.         Costs be in the cause. 

2                                             Orders 2 and 3 will not be repeated.  These reasons are required because the parties have been unable to agree as to the precise form of orders flowing from the earlier judgment (Schutz DSL (Australia) Pty Ltd (ACN 009 069 907) v VIP Plastic Packaging Pty Ltd (ACN 095 313 705) [2009] FCA 1049).  The extent to which there is disagreement is quite limited. 

THE NORWICH PHARMACAL ORDERS

3                                             The Norwich Pharmacal Order is to be in the terms proposed by the applicants (Schutz) in the ‘Alternative Minute of Proposed Orders for Interlocutory Injunction’ which was before me at the hearing of the application for interlocutory relief.  The only modification to the minute is to incorporate the full meaning of the defined term ‘DG IBCs’.  That was the order sought by Schutz at the hearing and was, after argument, the subject of consent by the respondents (VIP).  VIP did not call any evidence or make any submissions in relation to a broader order that would extend beyond identification of only those customers of VIP Packaging that had been supplied DG IBCs as suitable for the use and the transport of dangerous goods, that is, DG IBCs.  Accordingly, in those circumstances, order 1 will be confined to DG IBCs.

4                                             Initially, in relation to order 1, VIP proposed to Schutz that orders be drafted to take into account the content of my reasons (at [82]) in which I had left it to the parties to attempt to agree the terms of any orders as to the nature of the communication which might be made between Schutz and those clients of VIP to whom DG IBCs had been sold. 

5                                             This is no longer necessary in light of the undertaking proffered by Schutz which has been accepted by VIP that Schutz will not correspond with any third parties disclosed pursuant to order 1 of the draft orders until the parties have agreed or the Court has made an order in relation to the form of that correspondence.  I have included that with the substantive order in order 1. 

6                                             There has been a debate as to whether the undertaking proffered by VIP (to refrain from selling DG IBCs and to label other cross-bottled IBCs) at the hearing as discussed in my original reasons should be included within the orders.  As a matter of consistency and for completeness, it appears to me appropriate to include the VIP undertaking.  I note again, for completeness, that the undertaking is given entirely without any admission.  I also note that the undertaking not to sell DG IBCs has been binding on VIP since the date it was given on 27 August 2009.  I also note and have included lest there be any doubt, a liberty to apply order in favour of Schutz in the event that variations to the labelling is to be sought.  The extent of notice for such an application will, (as with any liberty to apply under these orders), depend on the urgency. 

SECURITY AS TO THE UNDERTAKING AS TO DAMAGES

7                                             The parties are agreed as to the terms of the orders for security as to the undertaking for damages.  The wording reflects the wording which appeared in the alternative minute supplied by Schutz at the hearing. 

PROCEDURAL ORDERS

8                                             As to the procedural orders, the proceeding has already been running for some time for an urgent matter but on the other hand is not without legal and technical complexity.  In considering both these matters I have determined something of a compromise in relation to the procedural orders to be made.  I will order that:

1.                  The applicants file and serve any amended application together with a statement of claim on or before 14 October 2009.

2.                  The respondents file and serve their defence and any cross-claim on or before 4 November 2009.

3.                  The applicants file and serve any reply and their defence to any cross-claim on or before 16 November 2009.

4.                  The matter be listed for directions at 9.30 am on 18 November 2009.

9                                             I also propose making a liberty to apply order which will take into account urgent circumstances in an appropriate situation but otherwise I would expect that liberty to apply on 7 days’ written notice should suffice.  The order for liberty to apply will be that:

5.                  The parties have liberty to apply on 7 days’ written notice or such shorter period as may be allowed by the Court.  The latter alternative is intended to permit only an urgent application should the circumstances so require.

10                                          As I have previously indicated, no further order is required to deal with the dismissal of the transfer application or the costs disposition consequent upon any of the matters raised at the hearing. 

11                                          The following orders will be made:

Upon the applicants’ giving the usual undertaking as to damages and a further undertaking not to correspond with any third party disclosed as a result of order 1 of these orders until the parties have agreed or the Court has made an order in relation to the form of any correspondence or communication with such third parties,

1.                  Within 7 days of these orders, the respondents by their proper officer file and serve an affidavit specifying the names, addresses, telephone numbers and email addresses of those of its customers to whom they have sold Composite Intermediate Bulk Containers suitable for use in the transport of dangerous goods manufactured by the first or second applicants, or their agents or licensees, which contain inner plastic containers manufactured by persons other than the first or second applicants (DG IBCs).

2.                  The applicants’ application for an interlocutory injunction restraining the respondents from exploiting Cross-Bottled IBCs be dismissed on the basis of the respondents’ undertaking that the respondents, whether by themselves, their officers, servants, agents or otherwise:

(a)        will refrain from selling, offering for sale or distributing in the course of trade Cross-Bottled IBCs designated as being suitable for the transport of dangerous goods; and

(b)        will affix to each label plate of the cage of any Cross-Bottled IBC that is sold, offered for sale or distributed in the course of trade by them a heat resistant label in the form and dimensions of the example annexed hereto and marked ‘A’ and to remove therefrom any marking affixed by the applicants signifying that the Cross-Bottled IBC is certified for use in the transport of dangerous goods.

until trial or further order of the Court.

3.                  The applicants give security for the undertaking as to damages dated 7 August 2009.

4.                  Until further order of the Court or until otherwise agreed by the parties the security for the undertaking as to damages:

(a)        be in the sum of $250,000; and

(b)        be by way of payment into the St George Bank Limited account numbered 553090296 to be operated by the signature of a partner of the solicitors for the applicants. 

5.                  The respondents have liberty to apply to increase the security offered pursuant to order 4 above upon 7 days’ written notice or on such shorter period as the Court may allow.

6.                  The applicants have liberty to apply on 7 days’ written notice or such shorter period as the Court may allow to:

(a)        vary the form of the heat resistant label the subject of these orders; or

(b)        vary the manner in which the respondents must affix any such label. 

7.                  The applicants file and serve any amended application together with a statement of claim on or before 14 October 2009.

8.                  The respondents file and serve their defence and any cross-claim on or before 4 November 2009.

9.                  The applicants file and serve any reply and their defence to any cross-claim on or before 16 November 2009.

10.              The matter be listed for directions at 9.30 am on 18 November 2009.

11.              The parties have general liberty to apply on 7 days’ written notice, or within any shorter period permitted by the Court.

Associate: 

Dated:         6 October 2009