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Federal Court of Australia |
COURT
IN THE FEDERAL COURT OF AUSTRALIACATCHWORDS
Trade Practices - misleading and deceptive conduct - false representation of sponsorship, approval or affiliation in business name and logo - ss. 52 and 53(c) Trade Practices Act 1974.Passing Off - use of deceptively similar or substantially identical business name and logo - elements of passing off discussed.
HEARING
SYDNEY, 5, 6 August 1993Counsel for the Applicant: B Coles QC
Solicitors for the Applicant: Cowley Hearne
Counsel for the Respondents: D M Yates C E Adamson
Solicitors for the Respondents: Ferrier and Associates
ORDER
THE COURT ORDERS THAT:restrained from carrying on business under the name "OpalNote: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
Australiana Pty Limited" or any other name substantially identical
with or deceptively similar to "Opals Australia Pty Limited" or
"Opals Australia".
2. The first respondent by itself its servants and agents be
restrained in carrying on business from using a logo in the form
set out in annexure "B" to this judgment or a logo substantially
identical with or deceptively similar to the logo of the applicant
set out in annexure "A" to this judgment.
3. The first respondent by itself its servants and agents be
restrained from passing off its business, goods or services as the
applicant's business, goods or services or as having a connection
or association therewith.
4. That the first respondent pay the costs of the applicant of the
proceeding, including any reserved costs.
DECISION
Introduction2. The applicant asserts that, by use of the name Opal Australiana and the logo in the form of annexure "B", the first respondent is passing itself off as the applicant and its business and goods as those of the applicant or as having a connection or association with the applicant or its business. The applicant seeks to restrain the first respondent from engaging in misleading and deceptive conduct pursuant to s. 52 of the Trade Practices Act 1974 ("the Act"). The applicant also asserts that the first respondent is falsely representing in trade or commerce in connection with the supply of its goods that they have sponsorship or approval which they do not have or is falsely representing that the first respondent has the sponsorship, approval or affiliation of the applicant (s. 53(c) and (d) of the Act). In its application the applicant claimed damages or account of profits; but these claims were abandoned during the hearing.
3. The second and third respondents (Trevor Patrick O'Neill and Brendon Richard O'Neill) are the directors and shareholders of the first respondent. The third respondent is the managing director of the first respondent and holds 999 of the 1,000 issued shares in its capital. The second respondent is a director of the first respondent and holds one share in its capital.
4. The applicant seeks an order that the second and third respondents take all necessary steps to facilitate the principal injunctive relief and other orders sought by the applicant.
Facts
5. I shall make my findings of fact. To the extent that questions of
credibility or reliability of witnesses are involved, I shall
deal with them
in the course of finding the facts.
6. Australia provides 95% of the world's opal output and almost all opals of high quality. The black opal and the Queensland boulder opal are unique to Australia.
7. The opal industry operates at three levels, namely, the manufacturing level, the supply level (the traders are often called gemstone or opal merchants) and the retail level. The applicant is involved in the opal industry at all three levels.
8. In excess of 90% of all retail buyers of opals in Australia are foreign nationals visiting Australia; such people are able to buy at reduced price levels as a result of not having to pay sales tax.
9. The business of the applicant was established over 40 years ago under a different name to its present name. It conducted its business initially in the Bank of New South Wales building on the corner of King and George Streets, Sydney and at that time the business was mainly the sale of opals in unset forms by wholesale. By the late 1950s the applicant began to develop opal set jewellery. The business was known as "Opals Australia". It was initially conducted by a Mr Les Taylor who retired and sold the business including the business name in 1979 to Mr Michael Duncan.
10. Mr Michael Duncan is the managing director of the applicant and was its principal witness. He has been involved in the gemstone industry since about 1974, in particular as a wholesaler of gemstones to the trade in Australia and an exporter of opals from Australia. In 1979 Mr Duncan and his wife purchased the business of the applicant for $300,000 of which half was attributable to goodwill in the applicant's name. Subsequently Mr Patrick Cheng, an associate of Mr Duncan's in Hong Kong, purchased 50% of the shares in the capital of the applicant through a company incorporated in Hong Kong. The applicant is one of a number of companies which together constitute the Opal House group of companies. The parent company of the group is Opal House Manufactory Limited. Its subsidiaries are: Opal House Limited which is a specialist cutter and wholesaler of loose opals; Opals International Manufacturing Limited which manufactures opal products; Michaelangelo Sculpture Limited which, as its name suggests, produces stone carvings; Boulder Opal Products Limited which supplies Queensland boulder opal; Hallmark Jewellery Limited which supplies opal material in various sizes; and Opals Australia Pty Limited, the applicant, which has served as a manufacturer, a major wholesaler and to a small extent a retailer in opal jewellery.
11. Since 1979 the turnover of the Opal House group of companies has grown from $3m to $30m and its staff has increased from 12 to 100 persons. Most of the growth has been as a result of the activities of the applicant as the marketing arm of the group.
12. Sales of the applicant for the year ended 30 June 1992 amounted to $5,387,327. Sales of the applicant from 1 July 1992 to 31 May 1993 are $4,952,971.
13. The applicant has a "purchase and supply" arrangement with its partner, Opal House Limited ("Opal House"). Mr Duncan is on the board of directors of Opal House.
14. Since 1979 the applicant has continued to supply opals to the trade internationally (over 60 countries) with particular emphasis on Japan; and it is a wholesaler of loose opals (loose opals are the stones by themselves in a polished state; they are not set in other adornments such as brooches or rings) to the trade within Australia. The applicant manufactures and designs opals as jewellery and sells them to retailers in Australia. The applicant is also what is described in the evidence as a "specialist retailer" to a limited number of persons, who are guests of the Australian government or members of embassies or other persons who are referred by the Australian government, embassies or large companies. The applicant does not normally trade with the general public.
15. The applicant's offices and showroom are on the 10th Floor, 20 Bond Street, Sydney where they have been since 1981. The showroom is not open to the public because to do so would be in conflict with the businesses of retailers to whom the applicant sells as a wholesaler. The showroom is marketed by the applicant as the "privileged purchase showroom" of the applicant and is essentially limited to sales by it of opals to the limited classes of persons referred to it and who are mentioned earlier.
16. Mr Michael Duncan gave evidence (which I accept) that the applicant supplies the full range of opal products to its wholesale customers including white opal stone, black opal stone, boulder opal, white opal beads, black opal beads, boulder opal beads, white opal jewellery, black opal jewellery and opal jewellery including cameos, carvings and watch faces.
17. There are approximately 300 retail outlets in Australia which carry some form of opal. The applicant sells and has sold opals for years to approximately 120 of those outlets which are located in every State and Territory of Australia. About 60% of the applicant's sales are to the Japanese market.
18. The applicant and a number of its affiliated companies have been planning for the last three months or so to launch a public float within the next few years and part of that proposal is to create a number of business entities which will operate as retailers by franchise of the applicant and use the name Opals Australia in every State of Australia.
19. The applicant has a high reputation in Australia and overseas in the opal industry. It is known as Opals Australia. Its stock of opals is of high quality and the applicant has a reputation for integrity and excellent service. The opal market is such that considerable reliance is placed by retailers upon the integrity of their suppliers. Japanese companies need to be satisfied of the reputation and integrity of foreign companies within the opal industry before they will deal with them. Reputation and trust is of considerable importance in the jewellery industry. The applicant has used its logo in the form of annexure "A" to this judgment for a long time. It is well known in the gemstone industry as the applicant's logo.
20. Mr Duncan has held various positions within the Australian gemstone industry, including a term of ten years as Federal President of the Australian Gem Industry Association. He is the present chairman of the Council of the Australian Gemstone Industry. He speaks on Australian opals at international conferences in Australia and Japan; and during the last five years has spoken of Australian opals on television and radio in Australia, Japan and the United States on at least 30 occasions. At each of these conferences and in each television appearance he is introduced as "Michael Duncan, Managing Director of Opals Australia".
21. Mr Duncan first became aware of the first respondent in about November 1992. He instructed his solicitors to write to the first respondent which they did by letter of 13 November 1992 addressed to "Opal Dealers Pty Limited" asserting that it was passing off its name and business as those of the applicant, that it was in breach of s. 52 of the Act, and requesting it to provide undertakings that it would immediately cease to use the name "Opal Australiana" in its business. Discussions took place between the solicitors for the parties, but they were fruitless, so these proceedings were instituted by the applicant on 2 June 1993.
22. Mr Brendon O'Neill, the third respondent, commenced his involvement with the opal jewellery industry in about 1975 when at the age of about 23 he started to sell such products at Paddy's Market, then at Haymarket, in downtown Sydney. In 1985 he arranged for the incorporation of a company, The Australian Opal Market Pty Limited ("AOM"). AOM consigned the stock to be sold at the Paddy's Market store to him and he sold the stock to customers. This arrangement continued until 1990 when he acquired a shelf company and renamed it Opal Australiana Pty Limited, the name of the first respondent. Since 1990 AOM has consigned stock to the first respondent which sells the stock to customers. The name "Opal Australiana" does not appear on any sign in or near the Paddy's Market store. The approximate value (at cost) of the goods of the Paddy's Market store for sale at any given time is about $50,000. The items sold at that store are opals and opal settings and range in price from approximately $2 to $200. The customers who frequent the Paddy's Market store are generally either "low income earning backpackers" from overseas travelling around Australia or Australian citizens who are about to go overseas and who purchase souvenirs as gifts.
23. In December 1982 the third respondent commenced his second opals venture, trading as "Chinatown's Opal Market" from premises in Dixon Street, Haymarket, also in downtown Sydney. He continues to conduct business from those premises. He adopts the same structure regarding consignments as mentioned above with respect to the Paddy's Market store, namely, that the goods are consigned by AOM to the first respondent. The items sold at the Chinatown store are opals and opal settings and range in price from $2 to $2,000. The customers of the Chinatown store are predominantly Chinese, Malaysian and Indonesian travellers. At the Chinatown store there is a large sign on the window with the words "Opals Australiana" in large red lettering about 4 feet high on a black background. The sign has been on the window since about May or June 1992.
24. In about December 1989 the third respondent started a third opals business, trading in a joint venture with a Mr Glen McKean from premises in The Galleria Shopping Centre, Elkhorn Avenue, Surfers Paradise. In January 1990 Mr McKean and the third respondent registered the business name "Opal Australiana" and used the business name in connection with the store at The Galleria. As with the other stores, goods are consigned by AOM. The business is run by a company which was known as "Dew Dream Pty Limited" until its name was changed in February 1991 to "Opal Dealers Pty Limited". The company traded as "Opal Australiana". In February 1991 the joint venture was dissolved. In early 1992 the name of "Opal Dealers Pty Limited" was changed to "Opals Australiana Pty Limited"; but, according to the evidence of the third respondent, the registration of "Opals" in the plural was the mistake of the solicitor's typist, so the name was changed to "Opal Australiana Pty Limited".
25. The Galleria store is in the same complex as the ANA Hotel at Surfers Paradise and the store is leased from the M.I.D. Corporation. Almost all the customers who frequent the Galleria store are Japanese tourists and business people who are staying in the ANA Hotel. The cost value of the stock in that store is in the order of $450,000 of which $300,000 comprise opal and opal settings. The balance of the merchandise comprises miscellaneous souvenirs including stuffed koalas, sheepskin rugs and chocolates. The retail price of items sold in the Galleria store ranges from $2 to $20,000. The store is open 7 days a week from 9 o'clock in the morning until about 11 o'clock in the evening. The third respondent employs fourteen people in the Galleria store of whom seven are permanent part-time employees.
26. The first respondent thus presently operates three retail shops in which opals are sold. The shops are at La Galleria in Surfers Paradise, Chinatown in Sydney and Paddy's Market, now at Redfern, Sydney. AOM is a wholesaler; it has only one customer (the first respondent) to which it consigns its goods.
27. The respondents use a number of different letterheads in connection with the businesses operated at the three locations. The letterhead which had been used in connection with the business for the last six years until recently contained the name "The Australian Opal Market Pty Limited" and it had no logo upon it. Other letterhead was used in connection with the businesses from February or March 1990 to February or March 1992 which contained the name at the top "Opal Australiana" and in the centre top the outline of a map of Australia with the words "Opal Dealers P/L" and the first respondent's ACN number within the map.
28. A new letterhead which is used now instead of the letterhead first mentioned and which has been used since February or March 1990 (though initially in addition to and not in substitution for the first letterhead) contains a similar logo as the second letterhead, namely, the outline of a map of Australia but with the words inside it "Australian Opal Market P/L" followed by the ACN number of that company.
29. Another letterhead which has been in use since about February 1992 (the time of the change of name of Opal Dealers Pty Limited to Opal Australiana Pty Limited) and which is used instead of the letterhead second mentioned, contains the outline of a map of Australia and within it the words "Opal Australiana P/L" followed by the ACN number.
30. A business card which has been used in the business since about 1989 by the third respondent contains the name at the top of the card "The Australian Opal Market Pty Limited".
31. There is another business card which has been used in the business by the third respondent since about February or March 1992 which contains an outline of the map of Australia with the words "Opal Australiana P/L" inside it followed by the ACN number. A further business card was used in the Galleria store between January 1990 and April 1991; it was gold in colour and had the outline of a map of Australia with the words "Opal Australiana" in the centre of the card.
32. Certain of the designs of these documents were drafted by the third respondent himself; he gave it to the printers who did the artwork and layout before printing them. Those are the documents which bear the outline of the map of Australia and contain the words with one or other of the business names of the first respondent. He said that at the time of preparation of each of the designs previously mentioned he had not seen the applicant's logo.
33. The third respondent said in evidence that he first saw the applicant's logo in mid 1992 when he was handed a business card by Mr Peter Duncan (the sales representative employed by the applicant; he is the son of Mr Michael Duncan). The business card handed to him by Mr Peter Duncan contains the name "Opals Australia Pty Limited" together with a map of Australia which is silver in colour and depicts a rather sleek kangaroo, somewhat fleet of foot and travelling from north-east to south-west Australia along a path with a variety of colours.
34. The third respondent gave evidence that in about August 1992 the M.I.D. Corporation (the lessor of the Galleria store) suggested that he install some signs outside the store to attract business. He retained a firm, Neda-Neon, to design and install four signs in the Galleria store. In about December 1992 a "trial" sign was installed at the front of the Galleria store so that the lessor could inspect it. It was displayed for about two days. It was approved by the lessor and eventually installed in February 1993. Three of the signs appear above outside entrances to the store and the other sign is at the front of the exterior of the shop. There is also a sandwich board on the Elkhorn Avenue frontage on which the same design as appears on the sign was depicted. The sandwich board was first used in or about December 1992. The design depicted in the signs is unique to the Galleria store. It is not used on any stationery or business card. The essence of the sign is that it contains the words "Opal Australiana", it depicts a map of Australia in white with a red coloured kangaroo hopping with confidence from the west coast towards the east coast. The word "Opal" is coloured in different hues and the word "Australiana" is in a distinctive green colour.
35. The third respondent gave the following evidence. On a number of occasions Mr Peter Duncan visited him at the head office of the first respondent in George Street, Sydney, the Chinatown store and the Galleria store. The first visit was on 23 March 1992. On each occasion he says that Mr Duncan asked him if he would be interested in buying opals from the applicant on a wholesale basis and if he would like to inspect the stock that was available from the applicant. On each occasion the third respondent declined Mr Duncan's offer. He gave evidence that Mr Duncan had come to see him on about fifteen occasions in the past eighteen months and that on no occasion had Mr Peter Duncan or anyone else on behalf of the applicant mentioned to him any problem relating to the logo which he used on the stationery or the signs appearing in the Galleria store. He said that he did on one occasion inspect the stock of the applicant. This took place at the George Street office of the first respondent in April 1992: in the course of the inspection he observed that the jewellery of the applicant was primarily white opal set in gold settings, whereas his own policy is to sell only unset stones, or jewellery which has been made in Australia. Most of the jewellery which he acquires for the purposes of sale is black opal, boulder opal or triplet opal. He said that after he inspected the stock he told Mr Peter Duncan that Opal Australiana did not buy white opal, but if ever the applicant had black opal, boulder opal or triplet opal he would be more than happy to look at it. Mr Peter Duncan said that the applicant did not really specialize in that area but perhaps it would in the future.
36. The third respondent gave evidence that he had never personally met Mr Michael Duncan or had any dealings with him in the course of eighteen years of continuous involvement in the opal industry.
37. There are in evidence numerous extracts from the White and Yellow Pages of the Sydney and Gold Coast telephone directories covering the years 1990 to 1993 inclusive. In the Sydney White Pages the applicant's name appeared in bold print as an opal merchant in the 1990, 1991 and 1992 directories. In 1992 there appeared for the first time the entry "Opal Australiana Pty Limited" with its George Street and Haymarket telephone numbers. It too appears in bold print. In the Sydney Yellow Pages directories for 1990, 1991 and 1992 the applicant has an entry bearing its name together with an advertisement. The Yellow Pages entries appear under the heading "Opals". So far as the 1993 Yellow Pages are concerned, they show the same bold type entry for the applicant and an advertisement of a different kind which shows the logo in the form of annexure "A". There is also an entry for the first time in the 1993 Yellow Pages for Opal Australiana Pty Limited, but without an advertisement. In the Gold Coast White Pages neither the applicant nor the first respondent has an entry for 1990 or 1991 under its corporate name. In the Gold Coast Yellow Pages for 1990, 1991 and 1992 the first respondent has an entry under the words "Opal Australiana".
38. The White and Yellow Pages for Sydney and the Gold Coast also show a number of other names of business entities in the opal industry. I do not propose to cite them all; but a fair sample for example is in the 1992 Sydney White Pages which records firms (in addition to the applicant and the first respondent) with the following names: Opal Beauty, Opal Country, Opal Distributors, Opal Elite, Opal Fields, Opal Flair, Opal Industries, Opal Minded, Opal Personnel, Opal Products, Opal and Sapphire Information Service, Opal Skymine, Opal Land, Opals and Gems, Opals of Distinction.
Findings
39. The speech of Lord Diplock in the Advocaat Case (1979) AC 731 at 742 is
now regarded as the authorative statement of the necessary elements to
establish passing off, namely, there must be (i)
a misrepresentation (ii) made
by a trader in the course of trade (iii) to prospective customers of his or
ultimate consumers of goods
or services supplied by him (iv) which is
calculated to injure the business or goodwill of another trader (in the sense
that this
is a reasonably foreseeable consequence), and (v) which causes
actual damage to the business or goodwill of the trader by whom the
action is
brought or (in a quia timet action) will probably do so. This statement of
principle has been frequently adopted: see
Cadbury-Schweppes Pty Limited v Pub
Squash Co Pty Limited (1980) 55 ALJR 333; Moorgate Tobacco Co Limited v Philip
Morris Limited (No 2) [1984] HCA 73; (1984) 156 CLR 414 per Deane J (in whose judgment the
other members of the High Court concurred) at 443-4; ConAgra Inc v McCain
Foods (Aust) Pty Limited
[1992] FCA 159; (1992) 33 FCR 302 at 307-310 per Lockhart J and at
355-6 per Gummow J.
40. The applicant is well known in Australia and overseas, especially in Japan, as a leading manufacturer, wholesaler and seller of opals and opal products. Its business has been established for a considerable number of years and it is obviously well regarded for its product, service and integrity. It is known, as its name suggests, as Opals Australia. It is primarily a wholesaler. It engages in little retail sale, supplying only to certain customers recommended by the Australian government, foreign embassies and large companies. 60% of its sales are to corporations in Japan and are mainly of loose stones. Its premises on the 10th Floor of the Stock Exchange Building in Sydney are essentially offices. Although it has a showroom in those premises, there is little advertising of its name there and no evidence of the use of its logo in the showroom. However, it supplies, and has for the last few years supplied, 120 retail outlets throughout Australia which is roughly one- third of the total number of such outlets in Australia that sell opals. It advertises in trade magazines and in the White and Yellow Sydney telephone directories. Mr Michael Duncan is well known in the local gem industry both in Australia and overseas, especially Japan. People in the opals business associate Mr Duncan with Opals Australia and regard him as a leading figure in Australia's opal industry.
41. The first respondent is not a wholesaler of opals. It sells opals through its three retail outlets at Paddy's Market, Chinatown and Surfers Paradise, each of which caters for a different segment of the market.
42. The fact that the applicant does not sell, except in a very small way, direct to the consumer and that the first respondent sells only to the consumer is a matter to be taken into account on the question of reputation and the market which is serviced by the applicant and the first respondent. I am satisfied, however, that a large section of the opal retail industry in Australia associates the name "Opals Australia" with the applicant and its business.
43. The words "opal" and "Australia" are two descriptive words. The mere fact that a word is descriptive does not necessarily prevent it from being distinctive of somebody's goods or services; but if a word is prima facie descriptive it becomes more difficult to establish that it is distinctive of the plaintiff's goods or services. Also, if a plaintiff does not use a descriptive word simply for the purpose of distinguishing his own goods or services from those of others, but primarily for the purpose of describing the particular kind of article or service to which he has applied it, and only secondarily, if at all, for the purpose of distinguishing his own goods or services, it will be more difficult for him to establish that it is distinctive of them.
44. Where the name of a business consists of words descriptive of that business and which have not acquired a secondary meaning, a slight difference between the plaintiff's and defendant's title will in the absence of fraud be a sufficient distinction: Office Cleaning Services Limited v Westminster Window and General Cleaners Limited (1946) 63 RPC 39.
45. The combination of the two words "opal" and "Australia" to form the business and trading name of the applicant over a considerable number of years satisfies me in the light of all the evidence that it has become distinctive of the applicant's name and business.
46. The applicant makes three complaints in relation to the conduct of the respondents: first, the use of the name "Opal Australiana"; second, the use of the logo in annexure "B"; and third, the use of the name and the logo combined.
47. As to the use of the name, the names are not identical but they are very similar. There is no evidence that any other person in business in Australia uses the name "Opals Australia" or "Opal Australiana" or words that are substantially the same as either name. A perusal of the telephone directories for Sydney and the Gold Coast shows that other companies having no connection with the parties use the word "opal" in their corporate names or to describe their businesses; but they are not similar names to the names of the two business names in question here.
48. The wholesale and retail market for the sale of opals and opal products is a somewhat discrete and narrow market, notwithstanding the number of traders engaged in it. Although the Paddy's Market and the Chinatown stores of the first respondent cater for different classes of buyers to persons (not being retailers) who buy directly from the applicant, the class of customer at the Galleria store is probably somewhat the same as the class of persons who buy on occasions from the applicant directly from its premises in Sydney. The applicant is essentially a wholesaler, but it supplies goods by wholesale to over 100 retailers who are in a broad sense in the same general class of business as the applicant.
49. In my opinion the use by the first respondent of the words "Opal Australiana" as part of its business name and to describe its goods is a misrepresentation and calculated to injure the business or goodwill of the applicant as a reasonably foreseeable consequence. Retailers are liable to be misled into believing that the use by the first respondent of the name "Opal Australiana" is a representation that it is the name and business of the applicant or that it is a business name that has the approval or endorsement or sponsorship of the applicant or that the first respondent may be a licensee or franchisee of the applicant.
50. Leaving aside the ultimate consumer, the relevant purchaser is the retailer in this country or overseas, especially Japan, who upon seeing or hearing the name Opal Australiana would be likely to be misled into believing that it was being used by the applicant or by some organization with its approval or endorsement, notwithstanding that the applicant is known as a wholesaler.
51. The evidence of actual confusion or misleading conduct is fairly sparse. There is evidence of two conversations between Mr Peter Duncan in Surfers Paradise with retailers in April 1992 and August 1992 which establishes that the two retailers concerned conducted retail businesses in opals and souvenirs and upon seeing or hearing that Mr Duncan came from Opals Australia thought he was from the Surfers Paradise business, namely, the business conducted by the first respondent.
52. There is evidence (four or five conversations over a period of two or three weeks) when people telephoned the telephonist of the applicant, Mrs Karen Moulieris, and appeared to be confused about whether the applicant had moved its premises, possibly confused about the identity of the applicant and the first respondent; but this evidence is of so general a nature that it does not advance the applicant's case.
53. Evidence was led relating to the receipt by the applicant of bank statements addressed to the first respondent. This evidence is susceptible of more than one explanation: either the Australia and New Zealand Banking Group Limited (the banker for the applicant and the first respondent), placed the envelope to the applicant together with the envelope addressed to the first respondent for the purpose of despatch notwithstanding that the bank statement itself bore the correct name and address of the first respondent or an error was made by Australia Post. I place no reliance on this evidence; it is a very small indication of actual confusion.
54. Counsel for the respondents argued that the word "Australiana" when used in juxtaposition with the word "Opal" as part of the business name of the first respondent is not used in the geographical sense of Australia, but as descriptive of products other than opals which may be sold by the first respondent; that is to say that it sells opals and other products typical of this country such as toy kangaroos, stuffed koalas and the like. It was argued that this contrasts with the use of the word "Australia" by the applicant in juxtaposition with the word "Opals" which does suggest that it is describing opals mined in Australia, a country famous for its opals. In my opinion the words "Opal Australiana" used by the first respondent convey in essence the same meaning as the words "Opals Australia" as used by the applicant, namely, Australian opals.
55. The respondents argued that Mr Peter Duncan knew as long ago as March or April 1992 that the first respondent traded as "Opal Australiana". He told his father, Mr Michael Duncan, about this, yet nothing was done to complain to the first respondent until a letter of demand was written in November 1992 by the applicant's solicitors. There was further delay until the institution of this proceeding in June 1993, although it was preceded by correspondence and discussions between the solicitors for the parties. This was relied upon to support an argument that the real reason for the case being commenced by the applicant was that the applicant and certain of its other affiliated companies wish to ensure that the first respondent is unable to trade under its current name of Opal Australiana and unable to use its logo after the public float previously mentioned occurs within the next few years, as this will involve the creation of business structures which will enter the market of retail sale of opals throughout Australia; and the presence of the trading name of the first respondent and its logo will be an embarrassment. Mr Michael Duncan was cross-examined about this but denied the suggestion. I accept his denial. Even if I did not accept his evidence, it would not matter, because there is no suggestion of laches and I would not refuse injunctive relief if the applicant is otherwise entitled to it.
56. It was part of the applicant's case that the third respondent had deliberately and fraudulently adopted the use of the name "Opal Australiana" and the logo in annexure "B", intending to mislead the public into believing that the businesses of the applicant and the first respondent were linked.
57. I find it curious that the first respondent decided to use the name Opal Australiana in 1990. Also, there is evidence from the third respondent of the error in the renaming of the first respondent as Opals Australiana Pty Limited rather than Opal Australiana Pty Limited, an error which he laid at the door of his solicitor. But this evidence was not corroborated. It is also curious that the logo which emerged from the sign designer's pen (Neda-Neon) was a logo which had the coincidence of the juxtaposition of the words "Opal Australiana" and the depiction of the map of Australia and the bounding kangaroo at a time when the third respondent, on any view of the evidence, knew of the existence of the applicant, its name and its logo. There was no evidence called from the sign designer to corroborate the evidence of the third respondent.
58. Notwithstanding these odd features of the evidence, I am not satisfied that a conclusion of fraud in the sense that the word is used in this branch of the law is justified. It is a serious finding to make, requiring satisfaction of proof at the higher end of the scale of Briginshaw v Briginshaw [1938] HCA 34; (1938) 60 CLR 336; and I am not satisfied that fraud has been established. Even if fraud had been established, all that would follow from it is that the Court "will not be astute to find the defendant has failed in his nefarious design" (see the cases collected in my judgment in ConAgra at 345; c.f. Gummow J's judgment at 365).
59. I turn to the logo. In my opinion the case of the applicant based on passing off is even stronger with respect to the logo, for there one sees the coalescence of the business names of the parties - "Opals Australia" and "Opal Australiana", the map of Australia and the presence of the bounding kangaroo. There are differences in colour, size and style of print, and the maps are themselves a little different in outline. Also the kangaroos are travelling in different directions: in one case from the north-east to the south-west and the other case in an easterly direction from the west coast of Australia, and their bodies are depicted in slightly different positions. But overall the logo of the first respondent conveys a clear impression that the businesses represented by the logos are the same or at least that they are associated, connected or affiliated with each other.
60. The applicant has established its case based on passing off with respect to both the name "Opals Australia" and its logo.
61. As to ss. 52 and 53(c) of the Trade Practices Act, in my opinion the applicant has established its case of contravention with respect to both the name "Opals Australia" and its logo. The conduct of the first respondent is not merely confusing, it is misleading.
62. In my opinion the applicant is entitled to relief for passing off and contravention of Part V of the Act.
63. The Court makes the following orders:-
1. That the first respondent by itself its servants and agents be64. The applicant has not sought orders pursuant to s. 75B of the Act against the second and third respondents as persons involved in contraventions of the Act by the first respondent. As mentioned earlier, although the applicant initially sought damages or an account of profits against the respondents, these claims were abandoned during the hearing.
restrained from carrying on business under the name "Opal
Australiana Pty Limited" or any other name substantially identical
with or deceptively similar to "Opals Australia Pty Limited" or
"Opals Australia".
2. That the first respondent by itself its servants and agents be
restrained in carrying on business from using a logo in the form
set out in annexure "B" to this judgment or a logo substantially
identical with or deceptively similar to the logo of the applicant
set out in annexure "A" to this judgment.
3. That the first respondent by itself its servants and agents be
restrained from passing off its business, goods or services as the
applicant's business, goods or services or as having a connection
or association therewith.
4. That the first respondent pay the costs of the applicant of the
proceeding, including any reserved costs.
65. I see no reason to accede to the applicant's request to make orders against the second and third respondent on the basis of facilitating injunctive relief.
66. Nor is there any necessity to grant injunctions specifically in terms of ss. 52 or 53(c) or (d) of the Act, as the three injunctions already granted give the applicant sufficient protection from the offending conduct of the first respondent.
67. The applicant's entitlement to costs against the first respondent should not be extended to the other respondents.
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URL: http://www.austlii.edu.au/au/cases/cth/FCA/1993/429.html