Martin & Pleasance Pty Ltd v A Nelson & Co Ltd  FCAFC 80 (4 May 2021)
Unsuccessful appeal by Martin & Pleasance and other related companies from the judgement of Flick J granting an injunction restraining them from marketing, promoting and/or supplying their “RestQ” range of complementary medicines.
A Nelson & Co Ltd and its related company, Bach Flower Remedies Ltd (the respondents) had, since late 1993, sold in Australia a range of homeopathic complementary medicines under various Rescue trade marks including Rescue Remedy, Rescue Sleep, Rescue Pastilles and Rescue Plus. These products were ‘flower remedies’ originally developed in the 1920s by Dr Edward Bach. Bach Flower Remedies Ltd owns various Australian trade mark registrations containing or consisting of the word RESCUE, the earliest dating from September 1966. The appellants were the Australian distributor of these products which were sold to consumers through various retail channels including pharmacies and supermarkets.
In October 2020, the respondents notified the appellants that the distribution agreement would be terminated. On 15 February 2021 the appellants launched their own range of products made using methods associated with Dr Bach. These products carried the RestQ branding with the product range comprising RestQ Sleep Formula, RestQ Calm Formula and RestQ Focus Formula.
Examples of the packaging for the respective sleep products are shown below:
The respondents commenced proceedings on 2 March 2021 and, on 17 March 2021, the primary judge granted an injunction restraining the appellants from marketing, promoting and/or supplying their “RestQ” range of complementary medicines. The primary judge found that the respondents had made out a prima facie case of passing off and misleading or deceptive conduct, and the balance of convenience favoured the respondents.
Flick J discussed principles relevant to trade mark infringement, passing off and misleading or deceptive conduct under the Australian Consumer Law. In the context of infringement and passing off, his Honour also noted it may be open to draw an adverse inference where a trader borrows aspects of the get up of another product.
Flick J did not grant interlocutory relief based on a prima facie case of trade mark infringement because the appellants relied on the s122(1)(b) good faith defence which necessarily has a bearing on whether there was a serious question to be tried. His Honour considered it prudent to rely on the other causes of action.
Flick J assessed the similarities and differences between the presentation of the respective products and concluded, at paragraph 45, that the respondents had established a substantial goodwill in their RESCUE products and that the get up of the appellants’ RestQ products is so sufficiently similar as to cause in the mind of the consumer real confusion or the likelihood of real confusion as to whether they are the goods of the respondents. His Honour considered there was a serious question to be tried as to whether the appellants were passing off their own products as those of the respondents and a serious question to be tried as to whether, in the manner in which the appellants presented their goods for consumption, that the appellants have engaged in conduct which (at least) creates a misleading and deceptive representation that its goods are those of the respondents or are affiliated with the respondents. His Honour did not rely an any adverse inference or presumption from the apparent borrowing of a number of aspects of the respondents products.
On the balance of convenience aspect, Flick J weighed factors involving the relative harm to the parties, the public interest and impact upon third parties, and considered the facts fell in favour of the respondents and damages would not adequately address the interests of the respondents.
On the prima facie case aspect, the aural similarity between the names “Rescue” and “RestQ” clearly informed the primary judge’s findings on passing off and misleading or deceptive conduct. Further, the respective products contained similar descriptions and referred to Dr Bach. The Full Court found no error by the primary judge.
On the balance of convenience aspect, the appellants argued the primary judge did not properly weigh the harm to them, third parties and the public interest from granting the interlocutory injunction against the harm to the respondents if no interlocutory injunction were granted. However, the Full Court was satisfied the primary judge’s reasons, albeit brief given the urgency of the matter, indicated that he performed the necessary weighing or balancing function. The appellants complaints were really directed to the conclusion reached by the primary judge rather than any errors of principle.
The appellants also contended that the primary judge did not properly assess the strength of the prima facie case, and did not recognise that the strength of the prima facie case and the balance of convenience are related concepts. However, the Full Court rejected that contention. The reasons provided indicated the primary judge implicitly concluded that the respondents’ prima facie case was “sufficiently strong” or “relatively strong” in all of the circumstances, such as to justify the conclusion that the balance of convenience favoured the grant of the interlocutory injunction.
The Full Court also rejected the appellants’ contention that the primary judge misidentified the relevant status quo for assessing the balance of convenience. It was clear the primary judge correctly considered the relevant status quo was the state of affairs before the appellants entered the market with their products. The primary judge correctly noted that where there is a prima facie case, a very recent entry into the market by way of the very conduct complained of will not make the circumstances after that entry the relevant status quo.
The appellant also contended the primary judge failed to consider various other matters, but those contentions were quickly rejected.