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How urgent is it? Injunctions and trade mark infringement
A recent Federal Court decision has highlighted the importance of trade mark owners taking prompt action when faced with infringement or potential infringement.
In Snack Foods Ltd v Premier 1st Pty Ltd  FCA 135, the Court refused to grant an interlocutory injunction, criticising the applicants’ decision to engage “in a lengthy dialogue” with the respondent rather than taking immediate and urgent action.
Consistent with their name, the Snack Foods companies manufacture and distribute a range of snack food. In 2011, they registered the trade mark POPPED CORNERS in relation to a popped corn snack food product. The product was due to launch in March 2013.
In September 2012, Snack Foods learnt that Premier 1st was intending to import from the USA for sale in Australia a snack food product called POPCORNERS. Premier 1st had secured orders for the product from Woolworths.
Snack Foods’ lawyers sent a letter of demand to Premier 1st asserting that the importation and sale of POPCORNERS would amount to trade mark infringement and seeking an urgent undertaking from Premier 1st not to do so. Premier 1st’s lawyers countered that the POPPED CORNERS trade mark was susceptible to cancellation.
Over the next month, the parties’ lawyers exchanged a series of letters advancing their clients’ respective positions and seeking a resolution to the matter. Finally, in early November 2012, Snack Foods issued proceedings in the Federal Court seeking interlocutory and final injunctions, an order for delivery up and damages or an account of profit.
The interlocutory injunction
An interlocutory injunction is an injunction that is granted before the actual hearing of a case.
In order to succeed in an application for an interlocutory injunction, an applicant must satisfy the court of three things: (a) that there is a serious question to be tried, (b) that it would suffer irreparable damage if an injunction is not granted such that damages would not be an appropriate remedy, and (c) the balance of convenience favours the grant of an injunction.
The Court held that Snack Foods failed to satisfy those requirements.
In assessing the balance of convenience, the Court held that:
- the risk that Snack Foods would suffer irreparable damage was a “theoretical” one given it had not yet started marketing or selling POPPED CORNERS branded product in Australia and had no reputation in the market.
- the grant of an injunction would cause significant harm to Premier 1st as it would most likely result in Woolworths cancelling its orders for the product.
- the urgency for interlocutory relief was primarily caused by Snack Foods’ own failure to move quickly and apply for an injunction or request a final hearing in September 2012.
As a result, Snack Foods’ application for an interlocutory injunction was refused.
- When faced with infringement or potential infringement, it’s imperative that trade mark holders take immediate, decisive action.
- Spending too much time corresponding with the infringer (or its lawyers) can prejudice an application for urgent relief. In other words, if it’s urgent, act like its urgent and take urgent action.
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