Bosstop Australia Pty Ltd v Wekara, Marjatta & Ors [1996] QSC 160

,. 1- C/f[/f7J W' State Sc 1b//6D Reporting Bureau TRANSCRIPT OF PROCEEDINGS Copyright in this transcript is vested in the Crown. Copies thereof must not be made or sold without the written authority of the Director, State Reporting Bureau. SUPREME COURT OF QUEENSLAND CHAMBERS BYRNE J No 5534 of 1996 BOSSTOP AUSTRALIA PTY LTD (ACN 054 929 494) and MARK VELI KALEV WEKARA and TUULA MARJATTA and OPTIGOLF INTERNATIONAL (HOLDINGS) PTY LTD (ACN 067 967060) and JAAKKO HAKKARAINEN and TAMMY LAM BRISBANE REVISED COPIES ISSUED State Reporting Bureau Date o2 I I 'i? I C:, First Plaintiff Second Plaintiffs First Defendant Second Defendant Third Defendant JUDGMENT This judgment ls to be copied for the purpose o·r rasec:rch :.:mt:;, prlvat only. It is not to br~ resold or used for republicatlon in any other vvay permission. -lllt Fl11t1r, Tltc Law Courts, Gt'Ol'!!C S(rccl, Brish:111c. 0 ..moo Td,·nl11111l''. ({)7\ .U..!7 ..!1(,ll ,~-,v• 11171 11J7 c;,;p -- 1 of 5 -- 080896 T1/JJD1 M/T 968/96 (Byrne J) HIS HONOUR: This is an application for an interlocutory 1 · injunction. The plaintiffs claim to have intellectual property and other interests in technology associated with golf simulation products and to have rights to exploit the name Optigolf in Australia. The application is premised upon the existence of a threat on the part of one or more of the 10 respondents to seek to trade in Australia in similar products under the name Optigolf. Plainly, if they do that, there is a substantial risk of public confusion of the kind which would give rise to a 20 seriously arguable case of contravention of section 52 of the Trade Practices Act 197 4 either by the plaintiffs or by the defendants. One or other side, but not both, has the right to the technology and to use the name. JO The question is what should be done pending trial. At the moment, there is evidence to indicate that the respondents have been seeking to subvert the applicants' exploitation of the business connection with Optigolf by making representations to customers of the applicants that they are 4 u acting illegally. Such conduct is plainly calculated to cause economic injury of a nature for which damages will be difficult to assess and may therefore not be an adequate remedy. The respondents indicated a willingness to undertake not to make representations to members of the public to the effect that the applicants have no right or permission to sell Optigolf products in Australia and in other nominated countries. 2 JUDGMENT 50 -- 2 of 5 -- 080896 T1/JJD1 M/T 968/96 (Byrne J) They also indicated a willingness to undertake not to represent to members of the public that they, the defendants, have a right, authority, or permission, to sell Optigolf products in Australia. The proposal was that those undertakings would be given on a short term basis, at least until a mediation could be held between the parties. 10 Plainly, the case is a proper one for all efforts to be made for its commercial resolution through mediation. If the parties choose to subject themselves to the delays, frustrations and uncertainties of litigation, indications are that they will come to regret it. expense, all the However that may be, the question now is as to the nature of any interlocutory injunctive relief which should be granted beyond the undertakings with which the defendants have expressed a willingness to offer. The other orders sought are to restrain the respondents pending trial, from trading in Australia, under the name of Optigolf International Holdings Proprietary Limited, in respect of computerised golf simulators and related products. There is an arguable threat to behave in this fashion. An undertaking was sought by the plaintiffs' solicitors from the defendants' solicitors that the respondents not behave in that fashion, which was not given. That seems to justify an inference that the respondents will, unless restrained, trade in Australia under the name of Optigolf International Holdings Proprietary Limited in respect of computerised golf simulators and related products. 3 JUDGMENT 20 30 4IJ 50 !lll -- 3 of 5 -- 080896 T1/JJD1 M/T 968/96 (Byrne J) There should therefore be an interlocutory injunction restraining such conduct. An interlocutory injunction is also sought to restrain trading in golf simulator and related products, described as Optigolf products in Australia. Here too, the existence of a threat to behave in this fashion can be inferred from the absence of an appropriate undertaking not to do so. Obviously, there is a serious risk of confusion in the public mind if Optigolf products are sold by people on both sides of the record. There should therefore be an injunction, restraining the respondents, pending trial, from trading in golf simulator and related products under the name Optigolf in Australia. rt was suggested that there is no serious question to be tried. Reliance was substantially placed upon a draft agreement brought into existence in 1995 by solicitors acting for the applicants. The recitals in that document are cert~inly consistent with the respondents' stance that by 1995 the applicants had no claim to the technology in Optigolf products, or to the use of the name Optigolf in Australia. The matter is therefore not one on which the plaintiffs are bound to succeed at a trial. Indeed, their case in relation to having rights in Optigolf names and products may not be itrong. Nonetheless, there are documents which make their claims arguable, and there is conduct on the part of the respondents which may implicitly involve a recognition of the existence of such rights as the 4 JUDGMENT 10 20 30 4(J 50 1,-,11 -- 4 of 5 -- 080896 T1/JJD1 M/T 968/96 (Byrne J) applicants assert. These are letters brought into existence by the second defendant in mid-May, 1993 and later in that year. They refer to interests in the applicants in respect of the name Optigolf and in Optigolf products. I need say no more than that there is a serious question to be tried concerning the rights of the parties in relation to Optigolf technology and the name. Damages would not be an adequate remedy. There should be interlocutory injunctive relief of the kind indicated. At one stage the respondents were willing to consent to an order for mediation on terms. So the order that I shall make with respect to mediation will not be by consent. However, it will follow the terms of the arrangements that the parties arrived at in the, ultimately disappointed, expectation that they would be able to resolve agreement on other matters. HIS HONOUR: The costs of and incidental to the application will be reserved. 5 JUDGMENT 10 20 30 ..\IJ 50 h11 -- 5 of 5 --