Hoover Co (Australia) Pty Ltd v Spackman [1999] FCA 70 (17 February 1999)

Last Updated: 25 February 1999

FEDERAL COURT OF AUSTRALIA

Hoover Co (Australia) Pty Ltd v Spackman [1999] FCA 70

TRADE MARKS - infringement - "Hoover" and "Hoovex" - whether substantially identical - whether deceptively similar - intentional selection of confusing name - inference that confusion in fact occurred - grant of quia timet injunction - previous use by a respondent company now in liquidation - whether respondent seeking to use name entitled to resist injunction on grounds of acquiescence

Trade Marks Act 1995 (Cth) s 120

Trade Practices Act 1974 (Cth) s 52

The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 applied

Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 applied

Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 applied

Re G E Trademark [1973] RPC 297 applied

HOOVER COMPANY (AUSTRALIA) PTY LIMITED & ORS v JULIE ANNE SPACKMAN & ORS (NO. 2)

NO. VG 732 of 1996

HEEREY J

17 FEBRUARY 1999

SYDNEY (HEARD IN MELBOURNE)

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VG 732 of 1996

BETWEEN:	HOOVER COMPANY (AUSTRALIA) PTY LIMITED (ACN 000 018 075) First Applicant SOUTHCORP APPLIANCES PTY LTD (ACN 008 292 395) Second Applicant HOOVER APPLIANCES (AUST) LTD (ACN 003 444 059) Third Applicant SOUTHCORP MANUFACTURING PTY LTD (ACN 004 253 605) Fourth Applicant SOUTHCORP HOLDINGS LIMITED (ACN 007 722 643) Fifth Applicant SOUTHCORP WHITEGOODS PTY LTD (ACN 004 419 210) Sixth Applicant
AND:	JULIE ANNE SPACKMAN First Respondent DOMICOR HOLDINGS BV Second Respondent MAYTAG CORPORATION INC Third Respondent BUSINESS MARKETING AUSTRALIA PTY LTD (ACN 006 503 699) Fourth Respondent STANLEY SPACKMAN Fifth Respondent MARCIA JACOBSON Sixth Respondent SS APPLIANCES PTY LTD (ACN 004 738 694) Seventh Respondent TELSTRA CORPORATION LIMITED (ACN 051 775 556) Eighth Respondent HOOVER, ACCESS TO WASHING MACHINE AND CLOTHES DRYER SERVICE BY TESCO PTY LTD (ACN 077 712 979) Ninth Respondent TERENCE SPACKMAN Tenth Respondent VULCAN DISHLEX, ACCESS TO DISHWASHER SERVICE BY TESCO PTY LTD (ACN 007 712 942) Eleventh Respondent TESCO SERVICES PTY LTD (ACN 077 652 245) Twelfth Respondent
JUDGE:	HEEREY J
DATE OF ORDER:	17 FEBRUARY 1999
WHERE MADE:	SYDNEY (HEARD IN MELBOURNE)

THE COURT ORDERS THAT:

1. Each of the first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents:

(a) be permanently restrained whether by themselves, their servants or agents or otherwise howsoever from using for any purpose;

(b) take all steps and do all things within their respective powers, and at their expense, necessary to disconnect; and

(c) refrain from reconnecting, or applying for the reconnection of, for use:

(i) by any one of them, for any purpose, or

(ii) by any other person in connection with a business in which any one of them is involved or has an interest

the following telephone numbers: [phone], [phone], [phone], [phone], [phone], [phone], [phone], [phone].

2. On or before 24 February 1999, the first, fifth, sixth, seventh, ninth, eleventh and twelfth respondents instruct the eighth respondent, at their expense, to cause callers to the telephone number [phone] to receive in answer to their calls the following tape recorded message, at the conclusion of which the calls shall be automatically terminated:

"You have called 9560 8822. Hoovex Washing Machine Repair Service is no longer in business. If you have a warranty claim in respect of work carried out or parts supplied by this business, please call Your Washing Machine Service on 9560 9133. Your Washing Machine Service is not an authorised service agent of Hoover."

3. On or before 24 February 1999, the first, fifth, sixth, seventh, ninth, eleventh and twelfth respondents instruct the eighth respondent, at their expense, to cause callers to telephone number [phone] to receive in answer to their calls, at the conclusion of which the calls shall be automatically terminated:

"You have called 9560 9733. Hoovex Washing Machine Repair Service is no longer in business. If you have a warranty claim in respect of work carried out or parts supplied by this business, please call Your Washing Machine Service on 9560 9133. Your Washing Machine Service is not an authorised service agent of Hoover."

4. Each of the first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents be permanently restrained whether by themselves, their servants or agents or otherwise howsoever from:

(a) advertising in any medium, including (without limitation) by entry in any telephone directory of any kind, by using;

(b) incorporating in the name of any business or company in which any of them is involved or has an interest; and

(c) otherwise using in the course of trade in relation to a business of servicing or repairing white goods or other appliances:

any of the following names or marks:

(i) "Southcorp"

(ii) "Hoover"

(iii) "Vulcan"

(iv) "Dishlex"

(v) "Admiral"

(vi) "Norge"

(vii) any other name or mark misleadingly or deceptively similar to any of the names or marks in (i) - (vi) above, including (without limitation) "Southcomp", "Hoovac" and "Hoovex",

except where:

A. such name or mark is used merely to describe goods serviced or repaired by the respondent, and

B. accompanying such use of the name or mark, at least one name or mark is also used to describe goods serviced or repaired by the respondent and which does not belong to any of the applicants or the second or third respondents.

5. Each of the first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents deliver up on oath to the applicants' solicitors for destruction under supervision all labels, tickets, catalogues, price lists, brochures, letterheads, handbills and all other documents and materials in her, his or its possession, custody or control bearing any of the following names or marks:

(i) "Southcorp"

(ii) "Hoover"

(iii) "Vulcan"

(iv) "Dishlex"

(v) "Admiral"

(vi) "Norge"

(vii) any other name or mark misleadingly or deceptively similar to any of the names or marks in (i) - (vi) above including (without limitation) "Southcomp", "Hoovac" and "Hoovex"

except where:

A. such name or mark is used merely to describe goods serviced or repaired by the respondent, and

B. accompanying such use of the name or mark, at least one name or mark is also used to describe goods serviced or repaired by the respondent and which does not belong to any of the applicants or the second or third respondents.

6. Each of the seventh, ninth, eleventh and twelfth respondents account to the applicants for the profits it has earned from the use of any of the following names or marks:

(i) "Southcorp"

(ii) "Hoover"

(iii) "Vulcan"

(iv) "Dishlex"

(v) "Admiral"

(vi) "Norge"

(vii) any other name or mark misleadingly or deceptively similar to any of the names or marks in (i) - (vi) above including (without limitation) "Southcomp", "Hoovac" and "Hoovex"

except where:

A. such name or mark was used merely to describe goods serviced or repaired by the respondent, and

B. accompanying such use of the name or mark, at least one name or mark was also used to describe goods serviced or repaired by the respondent and which does not belong to any of the applicants or the second or third respondents.

7. An order that the twelfth respondent, within seven days, do all such acts and execute all such documents as may be necessary or desirable to be done or executed in order to have the registration of the business name "Hoovex Washing Machine Repair Service" immediately cancelled with the Office of Fair Trading and Business Affairs in Victoria.

8. The first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents pay the applicants' costs of the proceeding including:

(a) all reserved costs, and

(b) the costs of the fourth and eighth respondents paid or payable by the applicants

limited, in the case of the twelfth respondent, to all such costs incurred on and after 28 January 1998.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VG 732 of 1996

BETWEEN:

HOOVER COMPANY (AUSTRALIA) PTY LIMITED (ACN 000 018 075) First Applicant SOUTHCORP APPLIANCES PTY LTD (ACN 008 292 395) Second Applicant HOOVER APPLIANCES (AUST) LTD (ACN 003 444 059) Third Applicant SOUTHCORP MANUFACTURING PTY LTD (ACN 004 253 605) Fourth Applicant SOUTHCORP HOLDINGS LIMITED (ACN 007 722 643) Fifth Applicant SOUTHCORP WHITEGOODS PTY LTD (ACN 004 419 210) Sixth Applicant

AND:

JULIE ANNE SPACKMAN First Respondent DOMICOR HOLDINGS BV Second Respondent MAYTAG CORPORATION INC Third Respondent BUSINESS MARKETING AUSTRALIA PTY LTD (ACN 006 503 699) Fourth Respondent STANLEY SPACKMAN Fifth Respondent MARCIA JACOBSON Sixth Respondent SS APPLIANCES PTY LTD (ACN 004 738 694) Seventh Respondent TELSTRA CORPORATION LIMITED (ACN 051 775 556) Eighth Respondent HOOVER, ACCESS TO WASHING MACHINE AND CLOTHES DRYER SERVICE BY TESCO PTY LTD (ACN 077 712 979) Ninth Respondent TERENCE SPACKMAN Tenth Respondent VULCAN DISHLEX, ACCESS TO DISHWASHER SERVICE BY TESCO PTY LTD (ACN 007 712 942) Eleventh Respondent TESCO SERVICES PTY LTD (ACN 077 652 245) Twelfth Respondent

JUDGE:	HEEREY J
DATE:	17 FEBRUARY 1999
PLACE:	SYDNEY (HEARD IN MELBOURNE)

REASONS FOR JUDGMENT

Introduction

1 This matter has had a complex history including interlocutory injunctions, contempt proceedings alleging breach of those injunctions, arguments about the construction of orders in related proceedings (see (1998) 81 FCR 320) and negotiations which almost, but not quite, achieved an overall commercial settlement.

2 However, as a result of sensible co-operation between counsel, the only remaining live issue is whether the twelfth respondent Tesco Services Pty Ltd should be restrained from using the name Hoovex in connection with the servicing or repairing of whitegoods or other domestic appliances.

3 The applicants contend that the name Hoovex is substantially identical with or deceptively similar to their registered trade marks constituted by the word Hoover: Trade Marks Act 1995 (Cth) s 120(1). Contravention of s 52 of the Trade Practices Act 1974 (Cth) and passing off are also alleged.

4 The applicants accept that the twelfth respondent has not yet infringed the Hoover marks. Such infringement as has occurred to date has been committed by the seventh respondent SS Appliances Pty Ltd. A liquidator was appointed to that company on 18 January 1999. The twelfth respondent has since 28 January 1998 been the registered proprietor under the Business Names Act 1962 (Vic) of the business name Hoovex Washing Machine Repair Service but has not yet traded under that name. But the applicants contend that in the circumstances a quia timet injunction is warranted, having regard to the past conduct of the group of companies to which the twelfth respondent belongs. In particular they point to the conduct of the controller of the group, the fifth respondent Mr Stanley Spackman.

5 The second and third respondents are the ultimate owners of certain trade marks affected by this proceeding. They have been sued for conformity and took no part in the proceeding. The fourth and eighth respondents are, respectively, the publishers of the Melbourne Big directory and the White and Yellow Pages directories. They also took no part in the proceeding. When I speak of "the respondents" I am not referring to the second, third, fourth and eighth respondents.

Infringement

6 The acts relied upon by the applicants as constituting infringement of the Hoover marks are the advertising, promotion, operation and management in Australia of a business of servicing domestic appliances, including the applicants' goods, under and by reference to the Hoovex name. In particular, advertisements have been inserted in the Melbourne White Pages telephone directory. In the 1998-99 White Pages the following entry appears:

"HOOVEX WASHING

MACHINE REPAIR

SERVICE

HOOVER, ADMIRAL & EMAIL

WASHING MACHINE &

CLOTHES DRYER, IN HOME

SERVICING

37 MyrtleGlenWvrly .... 9560 8822

SPARE PARTS &

FACTORY................9560 9733

Hoovex Washing Machine Repair

Service is not an authorised agent

or distributor of `Hoover' brand

products"

The disclaimer was inserted in this edition following consent interlocutory orders made in the present proceeding.

7 The only evidence of actual effect of the Hoovex name was that of Ms Keryn Murphy of Mooroolbark. In early November 1998 her Hoover washing machine malfunctioned. She mentioned this to one of the other mothers at the school her child attended. This lady, whose name Ms Murphy does not know, told her "she had a telephone number of a Hoover dealer". The lady wrote down the number 9560 8822. Ms Murphy telephoned this number, believing that the number was "for a repairer associated with or a part of the Hoover Company". The call was answered by a man, whose name she does not know, and the following conversation took place:

Man:

"Good morning, service. Can I help you?"

Ms Murphy:

"I have a Hoover 620 model washing machine which has a problem, and I was wondering whether you are an authorised Hoover repairer?"

Man:

"Yes madam. That is fine. Yes we are."

8 Ms Murphy then explained briefly what was wrong with the machine and asked for a rough idea of the fees. The man said there would be a $55 service fee and other charges totalling approximately $300. An appointment was made for a serviceman to attend at Ms Murphy's home on the following Wednesday. The appointment was not kept. Subsequently a serviceman did arrive and took away the machine. The machine was not satisfactorily repaired, but the detail of this is not relevant for present purposes. However it will be necessary to return later to further evidence of Ms Murphy.

9 The tests of substantial identity and deceptive similarity are expounded in the judgment of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 414-415. Windeyer J's conclusion was reversed on appeal but counsel accepted the following statements correctly state the relevant principles. His Honour said (citations omitted):

"In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. `The identification of an essential feature depends', it has been said, `partly on the Court's own judgment and partly on the burden of the evidence that is placed before it'.

...

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: `The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him .... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole' ... `In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.'"

10 In my opinion the words Hoover and Hoovex are not substantially identical. While only the concluding letter in each word differs, the sound of each is distinct from the other. Looked at side by side they would be seen by the reasonable observer as similar, but not the same.

11 However I think the words are not only similar, but deceptively so. This is particularly the case when their visual appearance is considered, and especially so in the context with which the present case is concerned, namely the appearance of words in telephone directories. Both words are unusual. The only common noun contained in the Macquarie Dictionary commencing with the letters "hoov" is hooves, a plural of hoof. Even as a surname, Hoover is rare. In the 1998-99 Melbourne White Pages, apart from parties connected with the present case, there are only two entries for Hoover and none for Hoovex.

12 Facts agreed to by counsel included the fact that the applicants

"possess a very large and valuable reputation and goodwill in respect of the trade marks and goods and services supplied under them and the applicants' trade marks are exclusively and distinctively associated with the applicants, their businesses and the goods and services they produce, sell and repair."

13 It can hardly be coincidental that a person embarking on the business of domestic appliance repair chose from amongst the infinite possibilities of the Roman alphabet a word so similar to the name used by a well-known manufacturer of such goods. The inference I draw is that the name was chosen with the intention that it would lead customers to believe that the Hoovex repair service was connected with or authorised by the manufacturer of Hoover appliances. The further inference then follows that this objective was achieved: Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 at 657, Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at 106.

14 It would be quite likely that a person desiring to have a Hoover appliance repaired might quickly glance at a telephone directory and assume that the name Hoovex, being held out in relation to the repair of such goods, was a service being provided by the manufacturer of Hoover appliances, or at the very least such service was in some way connected with the manufacturer.

15 The evidence of Ms Murphy supports this conclusion. She wanted not just any washing machine repairer, but an authorised Hoover repairer. Her informant had obviously formed the conclusion that the number she gave Ms Murphy (which was a number listed under Hoovex in the telephone directory) was the number of such an authorised repairer.

16 Once the Hoovex name has passed into general currency, the disclaimer is unlikely to provide adequate protection against confusion. The episode with Ms Murphy supports this conclusion.

Should a quia timet injunction be granted?

17 The repair business which has used Hoovex, and various other names with which this case is concerned, operates from 37 Myrtle Street, Glen Waverley. The business has been carried on, although not always from that address, since 1965. The effective controller of the business is Mr Stanley Spackman. Mr Spackman was made bankrupt in April 1998. Other members of his family who have featured in the business from time to time are his daughters Ms Julie Anne Spackman and Mrs Marcia Jacobson. Another member of the family said to be involved in the business is Stanley's brother, Mr Terence Spackman. But the role of Terence Spackman, and indeed even his very existence, is a subject of controversy.

18 The evidence of Ms Murphy was that after her machine was collected for repair it was not returned on the day promised. She telephoned the Hoovex phone number. The person who answered said that the only person who could return the machine was somebody called Paul who had suffered third degree burns when taking the radiator cap off his car. However the Hoovex person promised the machine would be returned on the following Friday. But the machine was not returned on that day. Ms Murphy rang again and asked to speak to the manager. The Hoovex person said "There isn't one". Ms Murphy asked whether there was somebody else in charge to whom she could speak. The Hoovex person said there was only one person and that person was not in until 12.30 pm. The person refused to give Ms Murphy the name. On Ms Murphy saying that she wanted to complain about the service, the Hoovex person said that the manager was sick and "was up north for three weeks and he was not well". Ms Murphy asked to whom she should write a letter of complaint. The Hoovex person said that she should write to Terence Spackman.

19 Ms Murphy later discovered that Hoovex was not an authorised Hoover agent. She then rang Hoovex again and demanded her machine back, fixed or not. Late in the afternoon of that day a Hoovex serviceman bought her machine back. Ms Murphy told him that she wanted to complain about the service and said she had been given the name Terence Spackman. The serviceman then laughed and said

"Terence Spackman does not exist. The company is run by a family of arseholes. I use [sic] to be a son-in-law of the family. Terry does not exist and he is a figment of their imagination. In fact, Terry is a cousin of the Spackmans but they just use his name as a front."

20 The respondents tendered an affidavit sworn by one Matthew Sedgman, an employee of SS Appliances Pty Ltd, who identified himself as the serviceman who returned Ms Murphy's washing machine on 11 December 1998. He denied saying that Terence Spackman did not exist or that he himself had been a son-in-law of a family connected with the SS Appliances Pty Ltd business. He swore that he had "met and personally know[s] Terry Spackman as being Stan Spackman's brother and not his cousin". Mr Sedgman was not cross-examined, but neither was Ms Murphy in relation to her version of this conversation. She was an honest and intelligent witness. There was no apparent reason why she should invent the colourful incident with Mr Sedgman.

21 On the second day of the hearing Ms Annabel Dungey, an employee of the solicitors for the respondents, deposed that on 28 January 1999, in the presence of herself and counsel, Stanley Spackman

"purported to make a telephone call to his brother Terrence [sic] Spackman in Queensland. I then spoke to the gentleman on the other end of the telephone line who confirmed that he was Terrence [sic] Spackman, the Tenth Respondent in these proceedings. We then had a brief discussion about the conduct of these proceedings and the need for clear written instructions from him."

22 He gave Ms Dungey a Queensland fax number which he said was the fax number of a newsagency to which he had access. Ms Dungey sent a fax to that number and received a fax back the same day with a signed confirmation purportedly bearing Terence Spackman's signature.

23 Notwithstanding the evidence of Ms Murphy and the facts that Terence Spackman is named as the tenth respondent and represented by the same solicitors and counsel as the other respondents, no affidavit was sworn by him. No explanation was proffered for the failure of Terence Spackman to verify his own existence.

24 Terence Spackman features in Australian Securities and Investment Commission (ASIC) records as being appointed a director and secretary of some of the respondent companies as follows:

Company Appointed Address

SS Appliances Pty Ltd (7th resp) 31 December 1996 9 Earls Court, North Balwyn

(Director)

Hoover, Access to Washing 3 March 1997 (Director) 9 Earls Court, North Balwyn

Machine and Clothes Dryer Service 9 May 1997 (Secretary) 1B Marine Parade, Elwood

by Tesco Pty Ltd (9th resp)

Vulcan Dishlex, Access to Dish- 3 March 1997 (Director) 9 Earls Court, North Balwyn

washer Service by Tesco Pty Ltd 9 May 1997 (Secretary) 1B Marine Parade, Elwood

(11th resp)

Tesco Services Pty Ltd (12th resp) 26 February 1997

(Director) 9 Earls Court, North Balwyn

9 May 1997 (Secretary) 1B Marine Parade, Elwood

The Balwyn address is apparently the home of Stanley Spackman.

25 The Elwood address was also given in ASIC and business name registration documents filed by or on behalf of various of the respondents as the address of Stanley Spackman's daughter Marcia Jacobsen and the place of business in relation to certain registered business names.

26 Because of difficulties in effecting service the applicants' solicitors retained title searchers who enquired at the Land Titles Office and the City of Port Philip. Those enquiries revealed that the address 1B Marine Parade Elwood does not exist. When asked by the applicants' counsel to tell the Court what sort of premises were at 1B Marine Parade, Elwood, Stanley Spackman said:

"It's a large cruiser at St Kilda Marina. It has its own telephone point attached to the jetty".

27 When it was put to Mr Spackman that this explained the difficulty process servers had in serving documents, he replied:

"Well, if he had difficulty doing that he didn't try hard enough".

28 Mr Spackman then said that the name of the vessel was not "1B Marine Parade" but that the dock number was 1B St Kilda Marina, Marine Parade, Elwood.

29 While there certainly is a marina at Elwood, and one would expect the docks at that marina to be numbered in some way, I am quite satisfied that Stanley Spackman was a party to using the non-existent address 1B Marine Parade Elwood as a means of evading the service of process and thwarting the purpose of corporate and business name registration.

30 The role of Terence Spackman (if he exists) is the subject of the following passage from the cross examination of Stanley Spackman:

"You say here in this affidavit that your brother is in Queensland. Does he still live in Queensland?... Yes

For what period has he resided in Queensland?... I can only say he's been up there for several years, I don't recall actually when he went there.

But it's your evidence to the court that over several years his place of residence has been in the state of Queensland?... He has also resided in Melbourne on a temporary basis during that period.

So, what, he's been going backwards and forwards?... Not so much backwards and forwards, he was running one of the business companies personally.

Which company was that?... Number 37 Myrtle Street, Glen Waverley and he decided he didn't want to continue in business any longer and that he was going back to Queensland.

When did he decide that?... I can't be absolutely specific.

Give us a rough guess?... Let me think. It would have been `97.

1997, he said, `I don't want to be involved in these businesses any more'?... Yes, he's on welfare, he's up in Queensland and he's happy to just live his life up there. The hassle of business was a bit more than he wanted to do.

According to records that have been lodged with the court, your brother is currently a director of SS Appliances Pty Ltd, Hoover Access to Washing Machine and Clothes Dryer Service by Tesco Pty Ltd, Vulcan Dishlex Access to Dishwasher Service by Tesco Pty Ltd, and Tesco Services Pty Ltd. He's also currently the secretary of all of those companies except SS Appliances Pty Ltd. How do you explain that?... The fact that he is all those things.

I thought he'd retired from the business?... No, he retired from actively running the business but not in his capacity as director or secretary.

And he's, what, drawing a welfare cheque?... Yes. He gets no income from any of those companies.

So since sometime in 1997 he's been permanently in Queensland, not involved in the companies except as a nominal director?... Yes."

31 Later in his evidence Stanley Spackman gave an address in Manunda near Cairns where he said Terence lived. Terence had, he said, been at that address for "five years at least, but it could be more".

32 There were a number of documents in evidence bearing what purported to be Terence Spackman's signature. A number of the signatures appear quite different from others. In relation to one of them Stanley Spackman agreed that he himself had written it. There was tendered in evidence a cheque book for a Bank of Melbourne account in the name of Tesco Services Pty Ltd. Blank cheques bear the purported signature of Terence Spackman.

33 In his final address counsel for the applicants did not invite me to make a finding that Terence Spackman does not exist, although I must say I have my doubts. But at the very least Terence Spackman is used as a cipher by Stanley Spackman who, as an undischarged bankrupt, cannot lawfully participate in the management of a business. Stanley Spackman claims that he is only acting in "an advisory capacity" to Terence but in my opinion, and I so find, he is the effective controller of all the respondent companies and the businesses they conduct. Speaking generally of companies with which he is or has been associated he said in evidence:

"Certainly as regards trading activities I've always regarded the company and myself as one and the same thing."

34 The quia timet injunction "is granted to prevent a threatened infringement of the rights of the plaintiff, where the infringement is yet to occur": Parkinson (Ed), The Principles of Equity (1996) at 639.

35 I am satisfied that were an injunction not granted Stanley Spackman would cause Tesco Services Pty Ltd to use the name Hoovex in a way that infringed the applicants' marks. He is a man quite oblivious to normal principles of commercial morality and would do anything if he thought he could get away with it. In any event, Stanley Spackman's case is that he wishes to use the name Hoovex and I have no doubt that he would do so unless restrained.

Acquiescence

36 The name Hoovex has been used for many years without objection by the applicants. The question is whether this circumstance gives any right to Tesco Services Pty Ltd which would entitle it to resist injunctive relief. Whatever may have been the position with SS Appliances Pty Ltd, Tesco Services Pty Ltd can claim no interest in any common law trademark which SS Appliances Pty Ltd might have acquired. Such a mark could not be assigned independently of the goodwill of the business: Re G E Trademark [1973] RPC 297 at 326. There was no evidence of any such assignment.

Passing off and s 52

37 The foregoing findings also make out the applicants' case of passing off and contravention of s 52.

Orders

38 The orders that I have pronounced are extensive. It is only those parts italicised which were the subject of contention. It is true, as counsel for the respondents stressed, that although these proceedings were commenced in December 1996 it was only on the occasion when Tesco Services Pty Ltd was joined as a party on 21 January 1999 that an attack was made on the use of the name Hoovex. It is also true that the applicants consented on an interlocutory basis to the use of the word Hoovex, with the disclaimer I have mentioned. However the claims in respect of the name Hoovex, which were made by leave of Gray J on 21 January 1999, have to be resolved. If the parties cannot reach a negotiated settlement of all matters in dispute, including, as I am told, matters not within the parameters of the present proceeding, then the Court simply has to adjudicate on their rights. As the colloquial expression has it, all bets are off. The respondents cannot resist a particular order simply because at some stage as part of an overall negotiation the applicants may have been prepared not to insist on it.

39 I will make the following orders:

1. Each of the first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents:

(a) be permanently restrained whether by themselves, their servants or agents or otherwise howsoever from using for any purpose;

(b) take all steps and do all things within their respective powers, and at their expense, necessary to disconnect; and

(c) refrain from reconnecting, or applying for the reconnection of, for use:

(i) by any one of them, for any purpose, or

(ii) by any other person in connection with a business in which any one of them is involved or has an interest

the following telephone numbers: [phone], [phone], [phone], [phone], [phone], [phone], [phone], [phone].

2. On or before 24 February 1999, the first, fifth, sixth, seventh, ninth, eleventh and twelfth respondents instruct the eighth respondent, at their expense, to cause callers to the telephone number [phone] to receive in answer to their calls the following tape recorded message, at the conclusion of which the calls shall be automatically terminated:

"You have called 9560 8822. Hoovex Washing Machine Repair Service is no longer in business. If you have a warranty claim in respect of work carried out or parts supplied by this business, please call Your Washing Machine Service on 9560 9133. Your Washing Machine Service is not an authorised service agent of Hoover."

3. On or before 24 February 1999, the first, fifth, sixth, seventh, ninth, eleventh and twelfth respondents instruct the eighth respondent, at their expense, to cause callers to the telephone number [phone] to receive in answer to their calls, at the conclusion of which the calls shall be automatically terminated:

"You have called 9560 9733. Hoovex Washing Machine Repair Service is no longer in business. If you have a warranty claim in respect of work carried out or parts supplied by this business, please call Your Washing Machine Service on 9560 9133. Your Washing Machine Service is not an authorised service agent of Hoover."

4. Each of the first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents be permanently restrained whether by themselves, their servants or agents or otherwise howsoever from:

(a) advertising in any medium, including (without limitation) by entry in any telephone directory of any kind, by using;

(b) incorporating in the name of any business or company in which any of them is involved or has an interest; and

(c) otherwise using in the course of trade in relation to a business of servicing or repairing white goods or other appliances:

any of the following names or marks:

(i) "Southcorp"

(ii) "Hoover"

(iii) "Vulcan"

(iv) "Dishlex"

(v) "Admiral"

(vi) "Norge"

(vii) any other name or mark misleadingly or deceptively similar to any of the names or marks in (i) - (vi) above, including (without limitation) "Southcomp", "Hoovac" and "Hoovex",

except where:

A. such name or mark is used merely to describe goods serviced or repaired by the respondent, and

B. accompanying such use of the name or mark, at least one name or mark is also used to describe goods serviced or repaired by the respondent and which does not belong to any of the applicants or the second or third respondents.

5. Each of the first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents deliver up on oath to the applicants' solicitors for destruction under supervision all labels, tickets, catalogues, price lists, brochures, letterheads, handbills and all other documents and materials in her, his or its possession, custody or control bearing any of the following names or marks:

(i) "Southcorp"

(ii) "Hoover"

(iii) "Vulcan"

(iv) "Dishlex"

(v) "Admiral"

(vi) "Norge"

(vii) any other name or mark misleadingly or deceptively similar to any of the names or marks in (i) - (vi) above including (without limitation) "Southcomp", "Hoovac" and "Hoovex"

except where:

A. such name or mark is used merely to describe goods serviced or repaired by the respondent, and

B. accompanying such use of the name or mark, at least one name or mark is also used to describe goods serviced or repaired by the respondent and which does not belong to any of the applicants or the second or third respondents.

6. Each of the seventh, ninth, eleventh and twelfth respondents account to the applicants for the profits it has earned from the use of any of the following names or marks:

(i) "Southcorp"

(ii) "Hoover"

(iii) "Vulcan"

(iv) "Dishlex"

(v) "Admiral"

(vi) "Norge"

(vii) any other name or mark misleadingly or deceptively similar to any of the names or marks in (i) - (vi) above including (without limitation) "Southcomp", "Hoovac" and "Hoovex"

except where:

A. such name or mark was used merely to describe goods serviced or repaired by the respondent, and

B. accompanying such use of the name or mark, at least one name or mark was also used to describe goods serviced or repaired by the respondent and which does not belong to any of the applicants or the second or third respondents.

7. An order that the twelfth respondent, within seven days, do all such acts and execute all such documents as may be necessary or desirable to be done or executed in order to have the registration of the business name "Hoovex Washing Machine Repair Service" immediately cancelled with the Office of Fair Trading and Business Affairs in Victoria.

8. The first, fifth, sixth, seventh, ninth, tenth, eleventh and twelfth respondents pay the applicants' costs of the proceeding including:

(a) all reserved costs, and

(b) the costs of the fourth and eighth respondents paid or payable by the applicants

limited, in the case of the twelfth respondent, to all such costs incurred on and after 28 January 1998.

I certify that the preceding thirty nine (39) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.

Associate:

Dated: 17 February 1999

Counsel for the Applicants:	Mr M Pearce
Solicitors for the Applicants:	Norton Smith & Co
Counsel for the Respondents:	Mr R Webster
Solicitors for the Respondents:	Hicks & Oakley
Date of Hearing:	3 - 4 February 1999
Date of Judgment:	17 February 1999