Martin & Pleasance Pty Ltd v A Nelson & Co Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 04 May 2021
• Neutral Citation: [2021] FCAFC 80
• Date: 04 May 2021
• Court: Full Federal Court (Australia)

Federal Court of Australia

Martin & Pleasance Pty Ltd v A Nelson & Co Ltd [2021] FCAFC 80

Appeal from:	A Nelson & Co Limited v Martin & Pleasance Pty Ltd (No 2) [2021] FCA 24228
File number:	NSD 237 of 2021
Judgment of:	JAGOT, YATES AND JACKSON JJ
Date of judgment:	4 May 2021
Date of publication of reasons:	27 May 2021
Catchwords:	PRACTICE AND PROCEDURE – application for leave to appeal from an interlocutory judgment of a single judge of the Court – where primary judge granted an interlocutory injunction in proceedings alleging trade mark infringement, passing off and contravention of ss 18 and 29 of the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)) – leave to appeal granted and appeal dismissed
Legislation:	Competition and Consumer Act 2010 (Cth), Schedule 2 (Australian Consumer Law) s 18 Trade Marks Act 1995 (Cth) s 122 Therapeutic Goods Regulations 1990 (Cth) Therapeutic Goods Advertising Code (No 2) 2018 (Cth) s 23
Cases cited:	Boyd v Wild Hibiscus Flower Company Pty Ltd (No 2) [2012] FCA 74 Campbell v Sutherland[2020] FCA 765 Garden Cottage Foods Ltd v Milk Marketing Board[1984] AC 130 House v The King(1936) 55 CLR 499 Samsung Electronics Co. Limited v Apple Inc.[2011] FCAFC 156; (2011) 217 FCR 238 S&I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd [1998] FCA 1463; (1998) 88 FCR 354 Silktone Pty Ltd v Devreal Capital Pty Ltd (1990) 21 NSWLR 317 Sportsbet Pty Ltd v Crownbet Pty Ltd [2018] FCA 1045
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	84
Date of hearing:	4 May 2021
Counsel for the Appellants:	Mr MJ Darke SC with Mr DB Larish
Solicitor for the Appellants:	Corrs Chambers Westgarth
Counsel for the Respondents:	Mr N Murray SC with Ms A Campbell
Solicitor for the Respondents:	Gilbert + Tobin

ORDERS

		NSD 237 of 2021
BETWEEN:	MARTIN & PLEASANCE PTY LTD (ACN 006 935 888) First Appellant ; ALOE VERA INDUSTRIES PTY LTD (ACN 063 710 832) Second Appellant ; MARTIN & PLEASANCE WHOLESALE PTY LTD Third Appellant
AND:	A NELSON & CO LTD First Respondent ; BACH FLOWER REMEDIES LTD Second Respondent

order made by:	JAGOT, YATES AND JACKSON JJ
DATE OF ORDER:	4 MAY 2021

THE COURT ORDERS THAT:

1. Leave to appeal be granted.

2. The appeal be dismissed.

3. The appellants pay the respondents’ costs of and in connection with the leave application and the appeal as agreed or taxed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1. These reasons concern an application for leave to appeal and consequential appeal concerning alleged passing off, misleading or deceptive conduct and trade mark infringement. The appellants (and applicants) are Martin & Pleasance Pty Ltd and related companies, and the respondents are A Nelson & Co Ltd and related companies.

2. On 17 March 2021, the primary judge granted an injunction which restrained the appellants from marketing, promoting and/or supplying their “RestQ” range of complementary medicines. On 4 May 2021, we heard the application for leave to appeal and full argument on the appeal. At the end of the hearing we made orders granting leave to appeal and dismissing the appeal. These are our reasons for those orders.

Background

3. The respondents are a group of companies based in the United Kingdom. For many years they have manufactured a “Rescue” range of complementary medicines (the “Rescue” products). For over 30 years, the appellants acted as the distributor of those products in Australia. The “Rescue” products were sold to consumers through a range of retail channels including pharmacists and supermarkets.

4. The products were marketed as “flower remedies” which had been devised in the 1920s and 1930s by a medical doctor called Edward Bach who had particular research interests in homeopathy. They were: oral drops for the relief of stress called “Rescue Remedy”; oral drops and an oral spray for the relief of sleeplessness called “Rescue Sleep” and “Rescue Sleep Spray”; several varieties of “Rescue Pastilles” for stress relief; and “Rescue Plus” lozenges for “clarity and composure”. It was common ground that the respondents had built up a substantial goodwill and reputation in Australia in relation to the products. One respondent company is the owner of Australian registered trade marks “Rescue” and “Rescue Sleep” in the relevant category of goods.

5. In October 2020, the respondents gave notice to the appellants that the distribution agreement for the “Rescue” products would be terminated. The appellants planned to launch their own range of products made using methods associated with Dr Bach. Those products were launched to the market on 15 February 2021. They were: oral drops and an oral spray for sleeplessness marketed as “RestQ Sleep Formula”; oral drops, an oral spray and pastilles marketed as “RestQ Calm Formula”; and an oral spray known as “RestQ Focus Formula” (the “RestQ” products). It is convenient to illustrate the similarities and differences in the respective get ups by reproducing side by side pictures of the products with the closest correspondence, namely the sleep products.

Respondents’ Sleep Products Appellants’ Sleep Products

6. The respondents commenced proceedings against the appellants on 2 March 2021. The statement of claim alleged infringement of the registered trade marks, passing off, and conduct in breach of ss 18 and 29 of the Australian Consumer Law (ACL). The originating application sought interlocutory relief restraining the appellants from offering, marketing, promoting and/or supplying products or participating in any of those activities using the words “RestQ” or “Bach” or using the packaging depicted in the statement of claim (from which the above picture of the appellants’ sleep products is taken). The interlocutory relief also sought orders requiring the deactivation of a website, and Facebook and Instagram accounts, used to market the “RestQ” products.

The primary judgment

7. The primary judge heard the application for interlocutory relief on 10 March 2021 and, as has been indicated, substantially granted it one week later. His Honour found that the respondents had made out a prima facie case of passing off and misleading or deceptive conduct. He declined to base his decision on trade mark infringement because the appellants had raised a defence to that under s 122(1)(b) of the Trade Marks Act 1995 (Cth), known as the good faith defence, and determining the strength or weakness of that defence might lead to an inquiry into the good faith or lack thereof of the appellants’ Managing Director, Richard Holyman. Since the application could be disposed of on other grounds, it was not necessary to consider that issue at the interlocutory stage.

8. On the...