Symbion Pharmacy Services Pty Ltd v Idameneo

The Respondent be permanently restrained, whether by itself or through its subsidiaries from using the Respondent's Mark.
Subject to any further order of the court, the operation of the previous order be stayed: (a) if the Respondent does not, by 3 June 2011, appeal or seek leave to appeal from the making of that order, until 13 November 2011; (b) if the Respondent does, by 3 June 2011, appeal or seek leave to appeal from the making of that order, until the expiration of the sixth month after the determination of the appeal or the dismissal of the application for leave, as the case requires.
At or before the expiration of the stay under the previous order, the Respondent: (a) remove and destroy all signage, corporate stationery, flyers, posters, leaflets, brochures and any other promotional, advertising and marketing materials (whether in hard copy or electronic format) and garments which bear the Respondent's Mark and which are in the possession, power, custody or control of the Respondent or its subsidiaries; and (b) file and serve an affidavit verifying the removal and destruction of the items referred to in (a) and annexing: (i) a list of the locations at which signage has been removed; (ii) a list of each type of article destroyed pursuant to (a).

REASONS FOR JUDGMENT 1 On 20 April 2011, I published my reasons for judgment in this proceeding: Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited [2011] FCA 389. On 13 May 2011, the parties made submissions as to the form of orders required by those reasons, and as to costs. On that day, I made orders in disposition of those submissions and, for the most part, nothing further needs to be said about the matter. There was, however, one respect in which I reserved my reasons, and that relates to the terms of the permanent injunction to which the applicant was, on any view, entitled. 2 It was argued on behalf of the respondent that the restraint should be confined to the use of the mark which I set out in para 7 of my reasons of 20 April 2011. Such a restraint would reflect, it was said, the court's determination of the controversy which lay at the base of the applicant's proceeding. The applicant, by contrast, proposed that the restraint should extend also to "using any trade mark, device, brand or logo which is similar to or capable of being confused with" the applicant's device mark as set out in para 9 of my reasons of 20 April 2011. When the matter came before me for final orders on 13 May 2011, I was required to determine which of these forms of permanent injunction should be adopted. 3 It will be noted that the additional words proposed by the applicant reflect the terminology of the contractual restraint which formed the basis of the applicant's success in the proceeding: see para 19 of my reasons of 20 April 2011. For the court to express a restraint in those terms would beg the question which lay at the base of the proceeding, and would do no more than add the potential outcome of contempt of court proceedings to the applicant's existing remedies for breach of contract: see Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563, 574-575. Neither would such an injunction appropriately reflect the judicial determination of the controversy which led to the proceeding. Neither the existence nor the validity of the contract was put in issue by the respondent. Subject to issues of construction and the other matters with which I dealt in paras 31-47 of my reasons of 20 April 2011, the respondent accepted that it was subject to a prohibition upon using any mark which was similar to or capable of being confused with the applicant's mark. The very question which required judicial determination was whether the respondent's mark fell within that description. 4 It was submitted on behalf of the applicant, however, that in intellectual property and analogous areas, the usual form of injunction was not limited to the particular conduct which had been proved at trial. In the area of trade marks, I was referred to Blanco White and Jacob, Kerly's Law of Trade Marks and Trade Names, 12th Ed, 1986, at p 319: "The usual form of injunction simply restrains infringement of the mark concerned, referring to it by number." In the area of patents, I was referred to Coflexip SA v Stolt Comex Seaway MS Ltd [2001] RPC 9 at [12]-[19], in which Aldous LJ set out what his Lordship described as "the reasons why injunctions in patents actions are usually granted in the form which prevents the defendant from infringing the patent". Coflexip was referred to by Heerey J in Welcome Real-Time SA v Catuity Inc (No 2) [2001] FCA 785, which was in turn referred to by Branson J (with the assent of Lindgren and Finkelstein JJ) in Universal Music Australia Pty Ltd v Sharman Network Ltd (2006) 150 FCR 110, 120-121. 5 My attention was also drawn to a number of decided cases in which orders had, apparently, been expressed in the more sweeping terms for which the applicant contends. However, in none of them, so far as I could see, was specific attention given to the question whether, in a breach of contract case, the court was required (in the sense that any failure to do so would amount to a departure from some relevant principle) to express a permanent injunction in terms which mirrored those of the corresponding contractual restraint, even to the extent of going beyond anything that had been controversial in, or had been decided in, the proceeding concerned. I accept, of course, that there will often be cases where, as a matter of discretion, the court would accord to an applicant a form of relief which travelled beyond the particular matters decided in the case, but I am quite unpersuaded that a court's failure to do so would in every case be regarded as departure from principle. 6 A judgment which is sometimes mentioned in the authorities is that of the High Court in Turner v General Motors (Australia) Pty Ltd (1929) 42 CLR 352. That was a passing off case, in which Harvey CJ in Eq had granted an injunction which included the words "and from using any name calculated to lead persons to believe that the said business or businesses or any business of the defendant was or were identical or connected with the business of the plaintiff …." The appropriateness of those words was not in issue in the High Court, so the judgment does not provide much assistance to the applicant in the present case. However, the facts of Turner stand in conspicuous contrast with those of the present case. In Turner, the defendant fraudulently adopted a name very closely resembling that of the plaintiff, when it became aware that the plaintiff, then a wellknown American corporation, proposed to commence trading in Australia under its own name. As revealed in my reasons of 20 April 2011, however, the almost contemporaneous adoption by the applicant and the respondent of similar marks in the present case could only be described as an unfortunate coincidence. 7 There is nothing in the facts - or in the dynamics - of the present case which would provide any basis for the suspicion that, if it were precluded from using its present mark, the respondent would devise some artful similarity of the applicant's mark, or would "sail close to the wind" as it is occasionally said. If the orders which I made on 13 May 2011 stand, the respondent will be obliged to rebrand its business, its sites and its stationery. Nothing suggested by the applicant, and nothing which otherwise occurs to me, would give reason to suspect that the respondent would have the slightest interest in adopting a new logo or image which was confusingly similar to the applicant's mark. If, contrary to this expectation, the respondent were to do so, it is true that the applicant would be obliged to bring fresh proceedings, but I have little doubt but that the court would not then be readily forgiving of the respondent for failing to keep a sufficient distance between its own new mark and that by reference to which the applicant succeeded in this proceeding. 8 For the above reasons, I expressed the permanent injunction in terms which were limited to the respondent's mark. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jessup.

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