Englishtown Sportswear Ltd and Another v. Climax Ltd

CACV000075/1981

Copyright - interlocutory injunctions - article similar to plaintiffs' goods found in defendant's office - defendant alleged it to be a "sample by reference" and that no infringement had taken or would take place - triable issue whether these allegations true - injunctions granted.

Discovery - no evidence that there had been dealings in infringing goods - discovery had been rightly refused.

Dates of hearing: 16th and 17th November, 1981

R.G. Kotewall (Johnson, Stokes & Master) for Appellants.

A. Rogers (Wilkinson and Grist) for Respondent.

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Coram: Huggins, V.-P., Yang, J.A. and Bewley, J.

Dates of hearing: 16th and 17th November, 1981

Date of Judgment: 17th November 1981.

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JUDGMENT

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Sir Alan Huggins, V.-P. :

1. The Plaintiffs took out a writ for injunctions, damages and discovery in relation to alleged passing-off and infringement of copyright. The Plaintiffs are manufacturers of jeans, which they market under the registered trademark "Sergio Valente".

2. There was then a Summons for interlocutory injunctions and discovery. In a very brief judgment the Judge in Chambers dismissed this application on the ground that there was no evidence or no sufficient evidence that the Defendant exposed infringing goods or offered them for sale.

3. The Plaintiffs had employed a private investigator. He went to the Defendant's premises. There he saw amongst some samples of jeans on the floor one pair which he thought supported the Plaintiffs' complaints. He was told that the Defendant held "only samples for reference purposes" and that it would take two or three weeks for samples to be provided to the investigator. Mr. Vaswani, an employee of the Defendant, said that by that was meant that the articles in the premises were merely to indicate generally the style, cut and quality of jeans which could be supplied and that these jeans were not true samples. Although this particular pair did not bear the name "Sergio Valente", it did bear a device which the Plaintiffs used, namely, a "cow-head" device with the initials "S.V.". The stitching on the pockets was also similar to a design which the Plaintiffs claim they had adopted. During his last visit the investigator was allowed to take a photograph of two pairs of jeans including the pair which is now relied upon.

4. An alleged fact upon which the Plaintiffs place some stress is that in March 1980 the Defendant sought unsuccessfully to register the mark "Sergio Valente", and it is suggested that this indicated a desire to take advantage of the Plaintiffs' reputation. It is however clear that there is no evidence that the Defendant did in fact use the name "Sergio Valente".

5. The Defendant does not deny the Plaintiffs' proprietory rights in the trademark and designs but merely that it has done anything which would justify the granting of injunctions against it. Counsel relies on Britain v Kennedy (1902) 19 T.L.R. 122. There the defendant produced as a sample a model of a bust, that model being similar to one in which the plaintiffs held the copyright. Mr. Justice Wright held that this was merely an invitation to place orders for busts in accordance with the sample and that there was no offer or exposure for sale. The Plaintiffs seek to distinguish that case. They say that there the matter had come to trial, whereas we have only an application for an interlocutory injunction. They relied on a passage in Laddie, Prescott & Victoria's "The Modern Law of Copyright" 392 (11.13) which suggests that Britain v Kennedy was a border-line case "and that in similar circumstances now a copyright owner would succeed at least in an application for a quia timet injunction". It seems to me that there is some force in that contention and that there is at least a serious question to be tried. At the trial the Judge would have to decide whether the Defendant put forward the pair of jeans as a true sample, or as it alleges, as a sample for reference purposes. On the affidavits as a whole it is possible that the Court might find that it was a true sample.

6. What of the balance of convenience? Here no difficulty arises, for clearly the balance is in favour of granting the injunctions. However, it is suggested that damages are a sufficient remedy. What the Plaintiffs contend is that, if the Defendant is allowed to continue supplying these jeans, they will have no control over the quality and might suffer unquantifiable damage through loss of goodwill, even though the loss from the competition might be sufficiently quantifiable. In that regard there is support for their contention in Slick Brands (clothing) Limited v Jollybird Limited 1975 F.S.R. 470, 475, where it is said,

"....but there is a possible loss of goodwill, which is not easily quantifiable, for which it would not be altogether easy to compensate them."

I think that the Plaintiffs' contention is right.

7. Accordingly I would grant injunctions, although limited to the one pocket-stitching-design which is now relied upon and to enjoining passing off goods with the cow-head S.V. device shown in the photograph taken by the investigator.

8. As for discovery, the Defendant contends that no order should be made unless the person or persons to be named are shown to be wrong-doers. Here it is said the suppliers and customers of the Defendant are not shown to be wrong-doers. Reliance is therefore placed on Roberts v Jump Knitwear Limited 1981 F.S.R. 527. The Plaintiffs seek to persuade us that there have been previous dealings in similar jeans and they rely upon the absence from the Defendant's affidavits of clear denials of such dealings. In my view it is not permissible to infer positive evidence of dealings from such negatives. Therefore the only transaction which I think is material is that with the investigator. There is no evidence that the Defendant placed any order for goods to be supplied to the investigator. Accordingly, there is nobody whose name and address can properly be required.

9. The result is that I would allow the appeal to the extent that the Plaintiffs should, subject to the usual undertaking as to damages, have their injunctions but not discovery. I propose that the Plaintiffs should have the costs of this appeal limited to one day's hearing, the rest of costs of the appeal and the costs below to be costs in the cause.

Yang, J.A. :

10. I agree that the appeal should be allowed to the extent indicated.

Bewley, J. :

11. I agree and have nothing to add.

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(Note: By consent the costs of both parties were ordered to be costs in the cause.)

Representation:

R.G. Kotewall (Johnson, Stokes & Master) for Appellants.

A. Rogers (Wilkinson and Grist) for Respondent.