Case: Benmax v Austin Motor Coy Ltd (1953) 70 RPC 284
Outcome: followed
In Benmax v Austin Motor Coy Ltd (1953) 70 RPC 284 at 295-296, Evershed MR (Jenkins and Morris LLJJ concurring) said: 'There remains, however, the question whether the Defendants are right in suggesting that, if they are otherwise within the section (which for the purposes of the argument henceforth I will assume), they are entitled as of right to a declaration and an injunction. Now, it is quite true that the terms of the second subsection appear to be obligatory "the plaintiff shall be entitled to the following relief". But it would be startling if these words really were obligatory. The remedy of an injunction is one that has always been regarded as essentially a matter for discretion. Indeed, Sec.45 of the Judicature Act itself states that the power of the Court to grant an injunction is limited by this consideration, that the Court should grant an injunction when it considers it just or convenient. If the Defendants are right, in a case of this kind, the Court would be bound to grant an injunction though the Court considered it, as I should consider it in this case, both unjust and inconvenient. Moreover, it has never been the practice of the Court to grant injunctions which are on the face of them futile or meaningless. What would be the point of granting an injunction to restrain the plaintiff from threatening to bring an infringement action in respect of Letters Patent when by the same order the Court had revoked the Letters Patent, save perhaps to cast some doubt upon whether it really had been revoked? This section has emerged in the 1949 Act after considerable amendments in previous Acts. One of the problems which the section had earlier presented was solved by the removal from the present section of the former proviso that it had no application when an action for infringement was brought within a reasonable time after the alleged threat. I can see a sensible ground for removing that limitation. In Sec.36 of the 1932 Act there was also this difference: after an opening passage which corresponds closely to the wording of the present Subsec.(1): "Where any person, by circulars, advertisements, etc, threatens any person" the old subsection continued: - "any person aggrieved thereby may bring an action against him and may obtain a declaration" to the effect that such threats were justifiable and an injunction and may recover damages "for such". Then Subsec.(2) read: "The Defendant in any such action as aforesaid may apply, by way of counterclaim in the action, for any relief to which he would be entitled 'in a separate action in respect of any infringement' ." It has been assumed, as I have already said, that this section is available as a matter of counterclaim, though at first sight I would incline to think, as I think the learned Judge thought, that it only contemplates actions to restrain threats as distinct from counter-claims in infringement actions; but I think the use of the phrase "the plaintiff shall be 'entitled' " is explained in some degree by the passage I have just read from Subsec (2) of the Act of 1936. An instance was cited by Mr Whitford under the old Bankruptcy Act, namely, the case of In re Lord Furlough ([1895] 1 QB 724), where in this Court it was said that the word "shall", though it appears obligatory, is not always to be treated as more than directory. There is this further point: from Subsec.(1) it is plain that a person aggrieved may not seek more than one or other of the remedies set out in Subsec.(2); yet, so far as I can see, if the Defendants are correct, once the action has been brought and the party who has made the threats has failed to justify, the Court is bound to grant all the relief, regardless of what the plaintiff may ask for. That cannot be right, and indeed I go further and say that I cannot believe that Parliament intended in regard to the grant of an injunction to make it obligatory in any sense for a Court, and particularly a Court of Equity, to grant an injunction. Unless the words are clear and beyond any possible doubt, I, for one, should absolutely decline to be so bound. In spite of the formula "the plaintiff shall be entitled", which in its context may not be quite happy, I am unable to construe and do not construe this section as compelling the Court, given the premises, to grant all or indeed any of the relief set out in Subs.(2). In my judgment the phrase "the plaintiff shall be 'entitled' " cannot mean more than this that the plaintiff shall be entitled prima facie .' 37 Curiously, this case seems not to have been cited in Steinhardt . The reference to prima facie entitlement may suggest that there is little difference in the approach adopted by the Court of Appeal and that adopted by Fullagar J where his Honour referred to a 'strong affirmative reason why I should not' grant an injunction. However I doubt whether the cases can be reconciled on that basis. In each case the court appears to have been of the view that upon the considerations usually relevant to the grant of injunctive relief, such relief ought not to have been granted. Yet in Benmax the injunctive relief was declined whilst in Steinhardt , it was granted. I find the reasoning in Benmax to be persuasive. If I may say so, with respect, the reservation that Fullagar J had about his own conclusion would suggest that had his Honour's attention been drawn to Benmax , the outcome would have been different. 38 The matter has been further complicated by decisions of two members of this Court. In Townsend Controls Pty Ltd v Gilead (1989) 16 IPR 469 at 474-475, von Doussa J considered the availability of injunctive relief pursuant to s 121 of the 1952 Act. His Honour concluded that, in default of defence, a declaration or injunctive relief could not be granted 'without prior inquiry into the merits' . His Honour then observed (at 475): 'I consider the remedies of injunction and declaration should be treated as discretionary in the sense in which injunctions and declarations generally are discretionary in equity: See Benmax v Austin Motor Coy Ltd ... . Such relief should not be granted by consent or in default of appearance or appearance at trial unless it is established to the satisfaction of the court that is proper to do so.' 40 I would not readily depart from a view of a member of the High Court expressed at first instance, particularly a view expressed by Fullagar J. However his Honour would undoubtedly have given very considerable weight to the decision of the Court of Appeal in Benmax , had he been referred to it. That decision has, in effect, been followed by von Doussa and Crennan JJ, the decision of Crennan J being under the current legislation. I would normally follow the decision of another member of this Court unless satisfied that it was wrong. Far from being satisfied that her Honour's decision was wrong, I consider that it was correct. In those circumstances I conclude that the availability of declaratory and injunctive relief pursuant to s 128 is discretionary. 41 The applicant is entitled to be vindicated in having brought these proceedings, but the declaration will serve that purpose. I conclude that it is unlikely that there will be any further unjustifiable threats from the respondent. This view is based upon the passage of time since the threats were made and the apparent care with which any such threats were avoided in the second letter. I decline to exercise my discretion in favour of granting an injunction. 42 I will hear submissions as to costs. I certify that the preceding forty-two (42) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett. Associate: Dated: 30 August 2007 Counsel for the Applicant: Mr DJS Jackson QC Mr JM Horton Solicitor for the Applicant: Clayton Utz Counsel for the Respondent: Mr R Macaw QC Mr D Logan Solicitor for the Respondent: Davies Collison Cave Lawyers Date of Hearing: 26 June 2007 Date of Judgment: 30 August 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1364.html