Derrimut Health & Fitness Pty Ltd v Revival 24:7 Gym Pty Ltd [2019] FCA 1988

(22 November 2019)

Practice and procedure – mandatory interlocutory injunction – no evidence of quantifiable loss – little inconvenience to respondent

Derrimut has for some time owned and operated 13 gymnasia across Victoria and South Australia.  Revival 24:7 planned to open a gymnasium in Bendigo in November 2019.  Derrimut had uploaded to its Facebook page five photographs of the interior of some of its gymnasia.  It held written assignments of the copyright from the photographers.

One of the photographs showed drinks bearing the registered trade mark “UPS Ultimate Performance Supplements”.  The owner of that trade mark had licensed Derrimut to use it.

Revival 24:7 used those photographs in its marketing material, without approval of Derrimut or the owner of the trade mark.

Derrimut’s solicitors, by letter dated 18 October 2019, demanded removal of the photographs.  On 15 November Revival 24:7 stated that the photographs would be removed sometime during the following week.  But, by the time of the hearing on 22 November, this had not been done and Revival 24:7 did not appear.

Anderson J applied the standard test: an applicant must establish (i) that there is a serious question to be tried and (ii) that the balance of convenience favours a grant: Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57 at [19], [65]-[72].

There could be little doubt, as his Honour found, that there was a serious question to be tried as to copyright infringement, trade mark infringement, misleading or deceptive conduct and passing off.

As to balance of convenience, the word is used in this context in a rather specialised technical sense.  The “current sense” according to the Shorter Oxford is “Personally suitable; favourable to one’s comfort or ease; commodious”.  This suggests a rather low level of satisfaction, as for example “Would it be convenient to have a meal before the film?”  As has been suggested, the real test is one of comparative injustice: the plaintiff gets the injunction but loses at trial compared with the defendant resisting the injunction but the plaintiff winning at trial.  For an example of the comparative injustice concept in action, see our note of Safe Storage Systems here.

Anderson J noted at [37] that there was no evidence of quantifiable damage but cited a number of authorities to the effect that this was not necessarily fatal.

His Honour considered a mandatory injunction for removal was appropriate because if the Court subsequently held that the injunction was unwarranted, the photographs could be readily restored.  Also, although not explicitly mentioned by his Honour, the initial removal would be very simple.

His Honour accepted at [17] that “(m)erely characterising an interlocutory order as ‘mandatory’ should not invite a different approach” (quoting Edelman J in Ocean Dynamics Charter Pty Ltd v Hamilton Island Enterprises Limited [2015] FCA 460 at [33]).

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