|Focus:||Boyd v Wild Hibiscus Flower Company Pty Ltd (No. 2)  FCA 74|
|Services:||Commercial, Intellectual Property & Technology|
The Federal Court has emphatically refused an application for urgent interlocutory injunctive and ancillary relief in relation to the use of trade marks for an exotic citrus fruit known as a finger lime.
The first applicant is the registered owner of Australian trade mark registrations for the word limeburst in respect of "fresh fruit" in class 31 and a combination trade mark incorporating the stylised words fingerlimes limeburst citrus caviar and an image of a finger lime for "citrus fruit" in class 31 (the Limeburst Trade Marks).
The respondents sell a product labelled "Freshburst Citrus Caviar" made from preserved finger limes to grocery retailers, delicatessens, supermarkets and directly to consumers. The Freshburst product is intended to be used as an additive to alcoholic drinks, as part of a vinaigrette or mayonnaise, an additive to hot dishes or as a garnish for food such as oysters or sushi.
The applicants sought to argue that the respondents' use of "Freshburst" or "FreshBurst" in conjunction with "Citrus Caviar" or "Citrus Caviar fingerlimes" constituted trade mark infringement of the Limeburst Trade Marks and misleading and deceptive conduct, or conduct likely to mislead or deceive in contravention of s18 of the Australian Consumer Law and the common law tort of passing off by reason of the applicants' substantial reputation in Australia in relation to fresh fruit or citrus fruit.
For their part, the respondents argued that use of "Freshburst" or "FreshBurst" in conjunction with "Citrus Caviar" or "Citrus Caviar fingerlimes" was neither substantially identical nor deceptively similar to the Limeburst Trade Marks. Evidence was adduced demonstrating that the words citrus caviar are used descriptively in respect of finger limes to describe the physical appearance of the contents of the finger lime when cut.
In order to succeed, the applicants needed to show that FRESHBURST is substantially identical or deceptively similar to LIMEBURST. As aptly noted by Foster J: "... I have great difficulty in accepting that proposition. The words are quite different; although the word 'burst' is common to both. The word 'burst' describes the sensation felt by the consumer when biting into or tasting the pulp of the finger lime.Each of the words 'lime', 'fresh' and 'burst' are words commonly used in the English language. Applying the appropriate test, that is to say, having looked at 'limeburst' and having an imperfect but impressionistic recollection of it when one comes to look at 'Freshburst', does one recall 'limeburst'? I think not".
In considering whether to grant an interlocutory injunction, Foster J relied on the traditional principles most recently expounded by the Full Federal Court in Samsung Electronics Co Limited v Apple Inc  FCAFC 156. Namely, in order to secure an interlocutory injunction, the applicant must show that:
- there is a serious question to be tried or that there is a prima facie case in the sense that the applicant would be entitled to relief
- the applicant will suffer irreparable injury for which damages would not be an adequate remedy, and
- the balance of convenience favours the granting of an injunction.
The court was not persuaded that the applicants' established a prima facie case or that there was a serious question to be tried. In addition, the court held that applicants' reputation in FRESHBURST subsisted in respect of the sale of finger lime fruit under the 'limeburst' banner and therefore the respondents' promotion and sale of preserved finger limes under the 'Freshburst' name did not constitute passing off or misleading or deceptive conduct.
In considering the balance of convenience and justice, the court noted that the applicants had knowledge of the respondents' conduct since October 2011 but no application for relief was made until 5 January 2012. This delay was not explained, and in the intervening period, the respondents had taken steps to market and distribute their product and "were entitled to assume that the applicants were not going to proceed".
The remaining reasons that tipped the scales against the granting of interlocutory relief were that the applicants did not adduce any evidence and made no submissions in relation to the question of irreparable harm and in the opinion of the court, failed to adequately address the prejudice the respondents were likely to suffer if injunctions were granted.
In refusing the application for interlocutory relief and ordering the applicants to pay costs, Foster J made plain that the interlocutory application "should not have been brought" as the case was at best weak.
The finger limes decision is a timely reminder that all the relevant principles need to be considered before seeking interlocutory relief for trade mark infringement and the related causes of action of misleading and deceptive conduct and passing off. An applicant must have a prima facie case or serious question to be tried: without this essential pre-requisite, the court will refuse the interlocutory relief being sought.
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