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Federal Court of Australia |
Last Updated: 2 February 1999
Trade Practices Act 1974 s 52(1)
S & I Publishing Pty Limited v Australian Surf Live Saver Pty Limited [1998] FCA 1463, (Hill, RD Nicholson and Emmett JJ), applied
Equity Access Pty Limited v Westpac Banking Corporation (1990) ATPR |P40-994, cited
Thai World Import v Shuey Shing (1989) 17 IPR 289, cited
ConAgra Inc v McCain Foods (Aust) [1992] FCA 159; (1992) 33 FCR 302, applied
Snoid v CBS Records (1981) 38 ALR 383, cited
Bridge Stockbrokers Ltd v Bridges [1984] FCA 391; (1984) 4 FCR 460, applied
Brock v Terrace Times Pty Ltd [1982] FCA 10; (1982) 40 ALR 97, cited
APPLIED BUSINESS TECHNOLOGY PTY LIMITED v GRANDMASTER COMPUTERS PTY LIMITED
NG 695 of 1998
KATZ J
SYDNEY
1 FEBRUARY 1999
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY NG 695 of 1998
JUDGE:
KATZ J DATE OF ORDER: 1 February 1999 WHERE MADE: SYDNEY
1 The respondent by itself, its servants and agents be restrained from using in Sydney the letters "ABT" to identify its business.
2 The respondent pay the applicant's costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
|
IN THE FEDERAL COURT OF AUSTRALIA | |
| NEW SOUTH WALES DISTRICT REGISTRY | NG 695 of 1998 |
BETWEEN: ACN 059 909 327
Applicant AND: ACN 003 715 660
Respondent
APPLIED BUSINESS TECHNOLOGY PTY LIMITED
GRANDMASTER COMPUTERS PTY LIMITED
JUDGE:
KATZ J DATE: 1 February 1999 PLACE: SYDNEY
2 Applied has applied to this Court for the grant of a number of remedies against Grandmaster by reason both of the latter's alleged breach of both subs 52(1) and s 53 of the Trade Practices Act 1974 (Cth) ("the Act") and of the latter's alleged commission of the tort of passing off.
3 As to Grandmaster's alleged breach of s 53 of the Act, Applied did not expressly identify in the proceeding any particular paragraph or paragraphs of that section as being relied upon by it, but I infer from the form of par 9(b) of Applied's statement of claim (which alleged that Grandmaster had represented in trade or commerce to the trade and to consumers, contrary to the truth, that it was, or its goods and services were, affiliated with or sponsored or approved by Applied) that Applied placed reliance on pars 53(c) and 53(d).
4 In brief and whatever be the source of Grandmaster's alleged liability, Applied has sought to make out what I propose to call herein an "acronym" case against Grandmaster, the acronym concerned being "ABT". ("ABT" is obviously an acronym of "Applied Business Technology", those words of Applied's name which precede its identification as a proprietary limited company.)
5 Applied's complaint, as pleaded in par 7 of its statement of claim, was of Grandmaster's having adopted and used in trade or commerce in Australia the name "ABT".
6 (I should add that, in par 7 of its statement of claim, as well as complaining of Grandmaster's having adopted and used in trade or commerce in Australia the name "ABT", Applied also complained of Grandmaster's having adopted and used in trade or commerce in Australia the names "Australian Business Technology" and "Grandmaster ABT". Those complaints can be ignored for present purposes. There was no evidence before me of Grandmaster's having adopted and used either of those names, although, as will be seen, there was evidence of Grandmaster's having adopted and used in trade or commerce in Australia the name "ABT Australian Business Technologies". No application was made to me to amend par 7 of the statement of claim to include the name just mentioned, nor (in spite of such failure to apply to amend) was any attempt ultimately made by Applied to make submissions about Grandmaster's use of that name, all Applied's efforts being directed instead to Grandmaster's use of the letters "ABT" in isolation It may be (I do not know) that such reticence was based on the view that, when used together with and as a prefix to the words "Australian Business Technologies" (of which they are an acronym), the letters "ABT" have a different effect than when used in isolation.)
7 Given that facts which constitute a breach of par 53(c) or par 53(d) of the Act will also constitute a breach of subs 52(1) of the Act and that failure of a claim of breach of subs 52(1) of the Act in an "acronym" case will invariably also mean failure of a claim of commission of the tort of passing off in respect of the use of that acronym, it will be sufficient for present purposes to consider, in the first instance at least, Applied's claim under subs 52(1) of the Act. I did not understand Applied's counsel to disagree with that approach, at least in so far as concerns the relationship between a breach of subs 52(1) of the Act, on the one hand, and the tort of passing off, on the other. Further, although he did not say so (because he did not refer to them expressly), I have no reason to assume that he would hold a different view regarding the relationship between a breach of par 53(c) or par 53(d) of the Act, on the one hand, and the tort of passing off, on the other. In fact, according to him, the only potential advantage which, in the circumstances, the making of the claim of commission of the tort of passing off had conferred on his client which the making of the claims of breach of the Act had not had been one related to remedy, rather than to liability -- the possibility of obtaining the remedy of account of profits. However, as he ultimately made no submissions in support of the grant of such relief (or, indeed, in support of any of the types of relief prayed for in Applied's application), the claim of commission of the tort of passing off need not even be considered for that purpose.
8 In S & I Publishing Pty Limited v Australian Surf Live Saver Pty Limited [1998] FCA 1463, a Full Court of the Federal Court (Hill, RD Nicholson and Emmett JJ) said (at 14) of subs 52(1) of the Act,
"Where the conduct claimed to be misleading or deceptive [or to be likely to mislead or deceive] involves what is said to be a misrepresentation[, as it normally does,] a number of principles applicable are well established. These were summarised in Equity Access Pty Limited v Westpac Banking Corporation (1990) ATPR |P40-994 at 50,950-51 in a passage which has been followed in many cases and which was applied by the learned primary judge."9 Their Honours then restated (at 15-16) the applicable principles relevant to the case before them, which case involved, as had the Equity Access Case and as does the present one, a subs 52(1) claim of the passing off type.
10 I will mention others of the applicable principles later in these reasons, but a convenient one to start with for present purposes is the principle which had been summarised by Hill J in the Equity Access Case as follows (citations omitted):
"In a case such as the present the applicant must establish that [he/she/]it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographic area."11 (That statement of principle referred to "the name" simply because the Equity Access Case was a "name" case, the name concerned being "Equity Access".)
12 That principle was restated in the S & I Publishing Case as follows (citations omitted):
"In a case such as the present an applicant must establish that [he/she/]it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products."13 Although the Full Court's statement of the applicable principle contains no reference, as had that of Hill J in the Equity Access Case, to distinctiveness "in a particular country or geographic area", that omission was, as I understand it, related merely to the facts of the S & I Publishing Case.
14 Applied expressly acknowledged for the purpose of its subs 52(1) claim the existence of an obligation upon it of the type set out by Hill J in the Equity Access Case and restated in the S & I Publishing Case. It added, however, a gloss to that statement of principle, namely, that the date as of which an applicant must establish for the purpose of a subs 52(1) case of the passing off type that the acronym (or name or get-up, as the case may be) is distinctive of the applicant's business or products in a particular country or geographic area is the date upon which the respondent first began to use it in the manner complained of by the applicant: see Thai World Import v Shuey Shing (1989) 17 IPR 289, 302 (Gummow J).
15 As is apparent from par 5 of these reasons, the manner of use by Grandmaster of the letters "ABT" complained of by Applied was as identifying Grandmaster's business. On the question of Grandmaster's first use of the letters "ABT" in that manner, it is sufficient for present purposes to quote from a document sent by Grandmaster on some unspecified date to its customers, potential customers and suppliers as of that date. That document said, "As of the 16th March 1998, Grandmaster Computers Pty. Limited has begun to trade under the new registered trading name of `ABT Australian Business Technologies' or `ABT' in short." That the date to which reference has just been made was the date as of which Applied was required to establish distinctiveness of its business of the acronym "ABT" was not disputed by it. That meant that one of the hurdles which it was necessary for Applied to overcome in order to succeed in the present proceeding was to establish that, as of 16 March 1998, the acronym "ABT" had become distinctive of its business throughout Australia or some part(s) thereof. (Recognising that the geographical extent of the alleged distinctiveness of its business of the acronym "ABT" was a potential issue in the proceeding, Applied had pleaded in par 5 of its statement of claim (relevantly) that it had acquired a reputation in "ABT" in one or more of Australia, New South Wales and Sydney.)
16 Before turning to the evidence concerning that first hurdle, I should emphasise the purpose of the inquiry into whether, as of 16 March 1998, the acronym "ABT" had become distinctive of Applied's business throughout Australia or some part(s) thereof. It is not, as it would be if I were focusing on Applied's passing off claim, to determine whether Applied had goodwill at that date which was worthy of protection. It is, instead, primarily to determine whether there existed at that date a number of persons aware of the use by Applied of the acronym "ABT" to identify its business "sufficiently substantial" to permit a conclusion that the conduct of Grandmaster in trade or commerce complained of by Applied was either misleading or deceptive or likely to mislead or deceive: see ConAgra Inc v McCain Foods (Aust) [1992] FCA 159; (1992) 33 FCR 302 at 353 (Lockhart J); at 375 (Gummow J).
17 In the ConAgra Case, French J (at 380-81) offered guidance as to how one determines whether the number of persons concerned is sufficiently substantial for present purposes. He said, "If the similarity complained of is commercially irrelevant having regard to the number of people who know of it, then it can be concluded that the use of the name and/or get-up complained of is not misleading or deceptive". Later in these reasons, I will return to his Honour's test of commercial relevance.
18 A secondary purpose of the inquiry, on the assumption that there existed a sufficiently substantial number of persons aware of the use by Applied of the acronym "ABT" to identify its business, is to determine their geographic location, a matter which could be relevant to the remedial aspect of the case, should Applied get so far: see Snoid v CBS Records (1981) 38 ALR 383, 392 (Bowen CJ and Northrop and Morling JJ).
19 Turning now to the evidence concerning that first hurdle, most of it was not really in dispute as between Applied and Grandmaster. It was largely to be found in the affidavits of three persons connected with Applied, Messrs Reg King, Andrew Kunce and Frank O'Donoghue.
20 I must say immediately that much of the material in the affidavits of those three persons apparently directed to the question whether the acronym "ABT" had become distinctive of Applied's business throughout Australia or some part(s) thereof was unhelpful to me for various reasons. In particular, in some instances, it did not refer to the use of the acronym "ABT" at all, but merely to the use by Applied of its own name. In other instances, it referred to the use of the acronym "ABT" by Applied to identify its business, but only after 16 March 1998. In yet other instances, it referred to the use of the acronym "ABT" by Applied to identify its business, but at some unspecified time, which may or may not have been after 16 March 1998.
21 Given that the burden of persuasion in the relevant respect is on Applied and that the time of any use by it of the acronym "ABT" to identify its business is a matter of which Applied should have knowledge, I have relied in reaching my conclusion on the question of Applied's having the relevant reputation in the acronym "ABT" as of the relevant date only on that material which was clearly shown to concern the use of that acronym no later than the relevant date.
22 Such evidence can conveniently be divided into two parts, first, that dealing with the period between 1987 and early 1993 and, secondly, that dealing with the period between early 1993 and 16 March 1998.
23 The first part of that evidence begins relevantly with the existence in 1987 of a company called Technicorp Pty Limited, set up by Mr King.. That company carried on business in part under the business names "Applied Business Technology" and "Support Link". Under the former business name, the company provided computer based accounting and information management systems to what Mr King referred to as "small to medium business enterprises"; under the latter, it provided computer based support for customers.
24 According to Mr King, he actively promoted both the Applied Business Technology and Support Link aspects of Technicorp's business between 1987 and 1992 by public speaking and writing and by placing articles in various publications. Mr King also gave the following evidence involving his use of the acronym "ABT":
"Technicorp's advertising took the form essentially of public relations and I spoke regularly on behalf of the Financial Management Resource Centre at Armidale. I introduced myself as Reg King of `ABT' and many of Technicorp's early clients came through my speaking circuit which was conducted around Australia. Between 1987 and 1992 I spoke on average between 12 and 20 times a year. I spoke to groups of between 6 to 30 people at a time."25 Mr Kunce, who was an employee of Technicorp between 1987 and early 1993, also gave evidence involving the use of the acronym "ABT", saying that that part of Technicorp's business conducted as Applied Business Technology was known as "ABT". Unfortunately for present purposes, he did not identify either the category or location of persons by whom Applied Business Technology was known as "ABT".
26 The above evidence was the only evidence as to a relevant use of the acronym "ABT" in the period between 1987 and early 1993.
27 I turn now to the period between early 1993 and 16 March 1998.
28 In April 1993, Prinway Pty Limited, a shelf company owned by Mr Kunce and Mr O'Donoghue (then, like Mr Kunce, a Technicorp employee, but from early 1993 only), agreed to buy that part of Technicorp's business carried on under the two business names, "Applied Business Technology" and "Support Link".
29 Immediately, Prinway's name was changed to Applied (the applicant in the present proceeding) and the former business name "Applied Business Technology" ceased to be registered. Applied, however, registered in New South Wales the business names "ABT Solutions", "ABT Consulting" and "ABT Supportlink". (For some reason, the former "Support Link" had become one word.) Then, in 1997, Applied registered in New South Wales the further business name "ABT Computer Group".
30 Shortly after the coming into existence of Applied, an "ABT" logo was developed, which has been used since on all of Applied's letterhead, business cards, invoices, fax cover sheets, labels, signs and advertising. It uses the letters "A", "B" and "T" in a light colour, each letter in a separate upright oval of a dark colour, with the words "Applied Business Technology" underneath. The height of the letters in the words is small by comparison to the height of the letters in the ovals, so that the impression gained on seeing the logo is of the acronym, rather than of the words from which it derived. Sometimes, the logo is used in conjunction with the words "Solutions", "Consulting" or "Supportlink" (though not, apparently, with the words "Computer Group"). Those words, when so used, appear to the right of the logo and their letters are the same height as those in the ovals, but are not as bold as those in the ovals. Again, the acronym is more prominent than the accompanying words.
31 Although, subject to the evidence to which I will refer below, there was no very precise evidence about the extent of the use by Applied of letterhead, business cards, invoices, fax cover sheets and labels with the "ABT" logo thereon, I am able to infer that it must have been not insignificant simply from Applied's annual turnover, which increased from approximately half a million dollars in the financial year 1992-93 to over two million dollars in the financial year 1997-98.
32 Since 1996, Applied has conducted its business from a building on the Pacific Highway in the northern Sydney suburb of Gordon. That building is known as the ABT Building. The ABT logo is used on prominent external and internal signage associated with the building and also on three prominent flags which fly from the building. Customers (and, presumably, potential customers) of Applied attend at the building to transact business with Applied.
33 In addition to the above uses by Applied in its business of the acronym "ABT" to identify itself, which uses were described by Messrs King and Kunce, evidence of various other uses was given by Mr O'Donoghue, who is responsible for Applied's sales and marketing. I now turn to that evidence, with which I will deal in categories.
34 First, Mr O'Donoghue gave evidence of the acronym "ABT" having been used by Applied in advertisements in various publications, including in the Sydney Yellow Pages for the year 1997 under the heading "Computer", in the magazine "Accounting Software in Australia 1997" and in the magazine "Financial and Accounting Software Guide 1998", the latter magazine having been published in February, 1998 and being the successor to "Accounting Software in Australia 1997". In the first of those publications appeared, not only the ABT logo, but also references to "ABT Computer Group", "ABT Solutions", "ABT Support Link" [sic] and "ABT Consulting". In the second of those publications appeared references to "ABT". In the third of those publications appeared the ABT logo and references to "ABT". While I feel no difficulty in the absence of express evidence on the point in drawing an inference as to the approximate extent, both numerical and geographical, of the circulation of the Sydney Yellow Pages for the year 1997, I cannot do the same as to the latter two publications and there was no evidence before me on the matter.
35 Secondly, Mr O'Donoghue gave evidence of his having used the acronym "ABT" in the course of public speaking engagements on behalf of Applied. He referred to four such occasions: first, a speech on 24 July 1997 at a KPMG Private Business Services conference, attended by about 100 people, in the course of which he used numerous slides containing the ABT logo; secondly, a speech in September 1997 at an Institute of Chartered Accountants of Australia conference on business systems, attended by about 250 people, in the course of which he used numerous slides containing the ABT logo; thirdly, a speech on 21 November 1997 at a Congress of the Institute of Chartered Accountants of Australia, attended by about 250 people, in the course of which he used numerous slides containing the ABT logo; and, fourthly, a speech on 6 March 1998 at a PC World seminar, attended by about 300 people, in the course of which he used numerous slides containing the ABT logo. As to the last of the speeches only, there was evidence as to where it took place -- in Sydney.
36 Thirdly, Mr O'Donoghue gave evidence of the use by Applied of the sales technique of "telemarketing". According to him, a staff member was employed for between two and four days a week, throughout almost all of the period between early 1993 and 16 March 1998, ringing existing and potential customers of Applied in an attempt to gain new business for it. He was expected to make between eighty and one hundred calls a day. He would introduce himself in each call as being "from ABT". The geographic location of the persons rung was left unspecified, but, no doubt, many (if not all) of such persons would have been Sydney-based.
37 Having now dealt with Mr O'Donoghue's evidence of various uses by Applied in its business of the acronym "ABT" in addition to the uses which were described by Messrs King and Kunce, I mention one other aspect of his evidence, that about his use of business cards. I have already mentioned the use by Applied of business cards containing the ABT logo. Mr O'Donoghue said that he regularly handed out such cards, both at speaking engagements and when attending on customers. He estimated that he had given out about four thousand cards in the two or three years before 6 July 1998.
38 Having now summarised the evidence relating to the question whether Applied had, as of 16 March 1998, acquired the relevant reputation in the acronym "ABT", that is to say, whether the acronym "ABT" had become distinctive of its business throughout Australia or some part(s) thereof, I conclude from that evidence that it had acquired the relevant reputation. I am satisfied from that evidence that the number of persons aware of the use by Applied of the acronym "ABT" to identify its business was substantial. (I should perhaps add that, since we are here concerned with an acronym, the "descriptive name" problem discussed in the S & I Publishing Case (at 16 ff) does not arise in the present case.) At the same time, however, that evidence only satisfies me that the geographic area within such awareness existed was the Sydney area; such evidence as exists from which an inference could be drawn as to awareness in any geographic area outside Sydney is simply too weak for one reason or another (for example, staleness) to permit me to do so.
39 It is convenient now to say something of the facts regarding the use by Grandmaster of the letters "ABT" to identify its business.
40 In that respect, I should refer immediately to Grandmaster's defence in the present matter. In par 7 of its defence dated 13 August 1998, Grandmaster admitted that it then used both "the name `ABT Australian Business Technologies' in trade and commerce in Australia" and "the letters `ABT' for short reference to its business name `ABT Australian Business Technologies' in trade and commerce in Australia". Further, in par 12 of its defence, Grandmaster both admitted that it had "refused to cease using the names `ABT' and `ABT Australian Business Technologies'" and alleged that it was lawfully entitled to continue using such names. Those admissions should be read together with the document to which I have referred in par 15 of these reasons, which document showed that such conduct by Grandmaster had been continuing since 16 March 1998.
41 Although it is not necessary for present purposes to go beyond the material referred to in the preceding paragraph of these reasons in order to demonstrate Grandmaster's use of the letters "ABT" to identify its business, I should mention that there was evidence in Applied's case that it had had dealings with Grandmaster both in 1994 and 1996. In the course of those dealings in both years, Applied had used the acronym "ABT" to identify its business, while, in the course of the 1996 dealings, Grandmaster had also used the acronym "ABT" to identify Applied's business.
42 It would appear that, at one time, the evidence to which I have just referred (and perhaps other matters) led Applied to suspect that Grandmaster had begun to use the letters "ABT" to identify its business specifically because it knew that they were being used by Applied to identify its business and with the intent thereby to mislead or deceive. However, evidence in Grandmaster's case, which was not challenged by Applied, seems effectively to have put an end to that suspicion. I summarise that evidence in the next two paragraphs.
43 Mr John Murgatroyd is the Chief Executive Officer of Australian Business On-line Pty Ltd, a subsidiary of Australian Business Limited. (The latter company was previously known as the New South Wales Chamber of Manufactures.) Mr Justin Davis-Rice is a management consultant, now contracted to Grandmaster, but formerly contracted to another computer company, State Computers Pty Ltd. The latter company was, while Mr Davis-Rice was contracted to it, the computer product supplier and service provider to Australian Business Limited. About two years ago, Mr Davis-Rice "concepted" (his word) the name "Australian Business Technology" and sought to persuade Mr Murgatroyd that, under that name, Australian Business Limited and State Computers Pty Ltd should combine to provide computer services to the members of Australian Business Limited. For reasons which it unnecessary to discuss, that proposal did not proceed, but in mid-1997, after Mr Davis-Rice had severed his connection with State Computers Pty Ltd, he sought unsuccessfully to persuade Australian Business Limited itself to begin a venture with the name "Australian Business Technology". Mr Davis-Rice was concurrently negotiating to become a management consultant to Grandmaster and, shortly after his unsuccessful attempt to persuade Australian Business Limited itself to begin a venture with the name "Australian Business Technology", he proposed to Mr Murgatroyd that Australian Business Limited should cease to deal with State Computers Pty Ltd and begin instead to deal with Grandmaster. Australian Business Limited decided to do so. Shortly after it had made that change, Mr Davis-Rice proposed successfully both to Australian Business Limited and to Grandmaster that the latter should begin to use the name "Australian Business Technology", in order that Grandmaster would gain some (proper) commercial advantage from its relationship with Australian Business Limited.
44 Once Grandmaster had been persuaded by Mr Davis-Rice to begin using the name "Australian Business Technology", one of its shareholders and directors, Mr Peter Wiedemann, sought, according to him, to register as a business name for Grandmaster in New South Wales, not "Australian Business Technology", but "Australian Business Technologies". That, he said, was on the instructions of Mr Sepan Stepanian, the managing director of Grandmaster. Mr Stepanian, on the other hand, is not sure whether he instructed Mr Wiedemann to use in the proposed business name the word "technology" or the word "technologies". He may, he says, have mistakenly instructed Mr Wiedemann to use the latter word, rather than the former, because of confusion in his mind arising out of the fact that Grandmaster had previously registered a business name with the word "technologies" in it, namely, "Grandmaster Technologies". In any event, according to Mr Wiedemann,
"On or about 14 January 1998 I personally attended the Department of Fair Trading in Castlereagh Street, Sydney to register Australian Business Technologies as a business name. Whilst I was at the Department of Fair Trading I was refused registration of the business name Australian Business Technologies because I was informed that there was a business with a similar name who had previously registered. I cannot now recall the name of that business but it was not the name of the Applicant. I then telephoned Sepan Stepanian and we had the following conversation.45 From the registration by Grandmaster of the business name "ABT Australian Business Technologies" to the use by it of the letters "ABT" alone to identify its business was a not-unexpected step, as Mr Wiedemann acknowledged in cross-examination.
I said: `I can't register Australian Business Technologies'
He said: `Well try something similar'
I then returned to the Department of Fair Trading and made a further application to register the name `ABT Australian Business Technologies' which was successful. I chose that business name because I recalled from the telephone book a large number of business names use acronyms at the commencement of their name."
46 Of course, the fact that Grandmaster first associated itself with the letters "ABT" in the way in which I have just described and thereafter began to use them in isolation as identifying its business does not mean that it cannot have breached subs 52(1) of the Act by using them. To quote from the S & I Publishing Case part of another of the applicable principles in cases such as the present (citations omitted),
"Conduct may be misleading or deceptive or likely to mislead or deceive notwithstanding that the corporation said to engage in that conduct acted honestly and reasonably and did not intend to mislead or deceive."47 On the basis, then, that Grandmaster acted honestly and reasonably and did not intend to mislead or deceive by its adoption of the letters "ABT" to identify its business, the question nevertheless remains whether its doing so amounted to a breach of subs 52(1) of the Act. The answer to that question involves the application of a number of the applicable principles restated in the S & I Publishing Case additional to those which I have already mentioned. Particularly relevant are those which I set out below in my own words and order:
* the question whether conduct either is misleading or deceptive or is likely to mislead or deceive is an objective question of fact;
* conduct is misleading or deceptive if it leads into error;
* conduct is likely to mislead or deceive (in other words, likely to lead into error) if there is a real, as opposed to a remote, chance of its doing so, irrespective of whether it is more probable than not that it will do so; and
* in many cases, it will be necessary to identify the class of persons by reference to which the question whether conduct either is misleading or deceptive or is likely to mislead or deceive falls to be tested.
48 The present case is one in which it is necessary to identify the class of persons by reference to which the question falls to be tested whether the conduct of Grandmaster complained of by Applied either was misleading or deceptive or was likely to mislead or deceive.
49 In the first instance, one may at least say that the relevant class of persons included within it only those aware of the existence of Applied and of its use of the acronym "ABT" to identify its business: compare, for example, Brock v Terrace Times Pty Ltd [1982] FCA 10; (1982) 40 ALR 97 at 99 (Bowen CJ and Franki J); the ConAgra Case at 378 (French J).
50 Next, one may say that the relevant class of persons included within it only those interested in the supply to them by Applied of one or more of computer hardware, computer software and computer services.
51 Grandmaster has, however, argued that one should further refine the relevant class of persons by including within it only those interested in the supply to them by Applied of one or more of computer hardware, computer software and computer services of the types and quantities actually supplied by Applied. Although Grandmaster nominated no particular time as the time at which to identify for present purposes the types and quantities of computer hardware, computer software and computer services actually supplied by Applied, it is apparent that that time, so far as Grandmaster was concerned, was the time between 16 March 1998 (the date when Grandmaster first began to use the letters "ABT" to identify its business) and 10 July 1998 (the date when Applied filed its application in the present proceeding).
52 The reason for such argued further refinement of the relevant class of persons was that it was Grandmaster's position that there was no real, as opposed to remote, chance that persons in the class as so refined would have been led into error by Grandmaster's use of the letters "ABT" during the time between 16 March 1998 and 10 July 1998. Grandmaster argued that the evidence established that it and Applied were in different segments of the market for computer hardware, computer software and computer services and that it would have refused to deal with persons in the class as so refined; it therefore followed that there was no real chance that a person, intending to acquire from Applied computer hardware, computer software or computer services of the type which it then supplied, would have acquired them instead from Grandmaster, mistakenly believing, because of the latter's use of the letters "ABT" to identify its business, that it was the former.
53 Given the argument which I have just mentioned, it is not surprising that a considerable effort had been made by Grandmaster in evidence to establish that it and Applied had operated in different segments of the market for computer hardware, computer software and computer services and that it would have refused to deal with persons interested in the supply to them by Applied of one or more of computer hardware, computer software and computer services of the types and quantities actually supplied by Applied. I will refer below to what the evidence did establish in that respect.
54 Dealing first with the position regarding Grandmaster itself, evidence (both affidavit and oral) as to that matter came primarily from Mr Ilario Faenza, a director of Grandmaster, although Mr Wiedemann (already mentioned above) gave some oral evidence as to it as well.
55 In an affidavit dated 21 August 1998, Mr Faenza both summarised the business activities of Grandmaster and the ways in which he perceived them to differ from those of Applied. He said relevantly (paragraph numbering omitted),
"Grandmaster obtains its clients through tenders, invitations to express an interest and direct targeting of potential clients through our Sales Division. Grandmaster's business is targeted at clients requiring computer services. The services offered by Grandmaster cover everything relating to Network and Desktop. Grandmaster provides `cradle to grave' services for clients. This `cradle to grave' service encompasses the following:
* Procurement Services (supplier negotiation and supply of computer hardware, software and other services);
* Network Design and Consultancy;
* Technical Implementation Services;
* Facilities Management; and
* WAN Services (the provision of telecommunication services including the management of such. ie. the connection of computer networks between two physically different offices, so that the computer systems at each office are available to the other office).
...
Grandmaster's client base is made up of government departments (mostly NSW) and corporate clients within the top 500 and 1000 of the largest companies in Australia. As an organisation Grandmaster is not aiming or geared to look after the small to medium business market.
In order to service its clients, Grandmaster sends a pre-sales team to a client or potential client to ascertain their computing needs and to find out their requirements. The pre-sales team then designs a system for the client which provides computer solutions for their business. In this way the pre-sales team operates akin to architects or designers.
The Technical Implementation Services Division from Grandmaster will then step in and obtain all the necessary hardware and software, and design a plan of how to put all this together and deliver a service to the client. The type of systems that we integrate are in the upper end of the market, which means that the system is likely to have 2000 to 3000 users. Grandmaster will not accept potential clients with a small user network. In terms of the software or systems that Grandmaster will supply and integrate it will only supply what is called in the industry off the shelf software (ie. Microsoft Office). Grandmaster will not supply or provide support services in respect of customised software or software programmed or designed specifically for things such as document management, memberships, ticketing, point of sale, human resources, financial management systems or trust account systems....
Grandmaster has never provided a financial management system to a client as this is not a service that we offer. Where our clients insist that we locate a specialised software package, such a financial management software package, we will locate the appropriate specialist organisation but introduce them to the client for direct negotiation. We do not become involved in the decision making process of the client. Where the client does not insist upon our locating the appropriate specialist software developer, we leave the choice entirely to the client.
* Facilities Management is where Grandmaster acts as if it is ... the client's internal information technology team. In this service, Grandmaster provides all services in regards to the day-to-day operation of the client's network and desktop systems. Facilities Management is often referred to as outsourcing....
From a broad perusal of the material supplied by the Applicant's [sic] within and annexed to their affidavits it is my opinion that the Applicant is in quite a different market to Grandmaster for a number of reasons.
The first and probably major reason for differentiating Grandmaster from the Applicant is in the area of product. The Applicant appears to be a financial management systems or accounting systems provider. As can be seen from the above this is not a market in which Grandmaster operates.
Although from some of the material supplied by the Applicant, it appears that the Applicant and Grandmaster operate in the same market with respect to installation, implementation and even Facilities Management, it is clear from the material supplied that these services are provided in the context of the Applicant's provision of Financial Management Software Packages to its clients.
The other major area where the Applicant can be distinguished from Grandmaster is in the area of the size of the clients that are being serviced. Whilst Grandmaster will not deal with small to medium businesses, this is the market that the Applicant specifically gears itself to and caters for. These clients would not be serviced by Grandmaster as they would not meet our qualifying criteria in respect of the size of the businesses or the numbers of users of the network or system.
Based on the turnover figures supplied, Grandmaster is in a different league to the Applicant, whose turnover figures are much smaller."
56 In a second affidavit, dated 29 October 1998, Mr Faenza added that the opinion which he had expressed in his first affidavit that Applied was in quite a different market to Grandmaster had been based in part on the fact that, in three years of working for Grandmaster, he had never become aware of Applied as a competitor or potential competitor of Grandmaster's. He also added the following further information (paragraph numbering omitted),
"I say that Grandmaster is very selective about who it will take on as a customer. It does not engage in any mass marketing or like activity. I have frequently advised Grandmaster's sales representatives that potential leads are not to be followed up because the prospective client is not suitable for our business....57 Restricting oneself to Mr Faenza's affidavit evidence, one would have inferred that computer hardware was an essential component of all of Grandmaster's sales. However, it emerged during the cross-examination of Mr Wiedemann that Grandmaster also entered into contracts pursuant to which it provided computer services alone, such services being, as I understood it, the installation and configuration of networks the hardware for which had not been supplied by it. In re-examination, Mr Wiedemann said that such contracts might be with new or existing customers and, if with new customers, "we would look at roughly ... $250,000 as [a] minimum level of service provision for a new client".
...
I say that Grandmaster generally will not enter contractual arrangements for the provision of computer hardware at under approximately $500,000.00 (subject to the possibility of exceptional circumstances, although I am personally unaware of any past example).... On average computer hardware represents only about 30% of the total contract price and Grandmaster only supplies computer hardware in conjunction with a provision for services. For this reason the average contract entered into by Grandmaster has a gross price of about $1.5 million to $2 million (with the minimum usually being at least $1 million)....
... I say that an average Grandmaster/Customer contract brings Grandmaster gross revenue equal to almost the whole of the Applicant's 1998 turnover. For this reason it is my assessment that not only does the Applicant operate in the small to medium business financial management systems sector of the market (a segment in which Grandmaster does not operate and has never operated) but its average contract price must be many times below Grandmaster's average contract price. This, together with the Applicant's annual turnover figures, clearly establishes in my mind that the Applicant and Grandmaster trade in entirely different markets in relation to the nature of the products each supplies. It would not be possible for the Applicant to operate in Grandmaster's segment of the market (in which to my knowledge the Applicant is unknown) because it does not have the size, experience and structural makeup to enable it to do so. It is also not possible for Grandmaster to operate in the Applicant's market because it does not supply the products that market requires and its size and overhead structure prevent it from being economically competitive in the small to medium business market for any product."
58 I turn now to Mr Faenza's oral evidence. Although, in his second affidavit, he had said less than a week earlier that Grandmaster would not, barring exceptional circumstances, enter into contractual arrangements for the provision of computer hardware for less than approximately $500,000 and that he was unaware of any past example of such exceptional circumstances, when he gave his oral evidence, he was able to recall that Grandmaster had recently "delivered probably [a] 20 user LAN" [local area network] to an organisation which he named. That contract would plainly have been for less than approximately $500,000. However, that was because the organisation concerned was "a friend of our organisation". He also said that Grandmaster had thirty to forty "major" customers in a given year, but that there were also other customers who did not fall within that category. Those minor customers "are customers that we have dealt with either for a long time since our reception [sic] or customers that are on their way out that we are ceasing to deal with but are still on our books". Such minor customers traded at much smaller dollar volumes than the major ones and Grandmaster dealt with them on the basis that, "They are friends of the organisation ... and sometimes they have strategic value".
59 Mr Faenza also commented on Mr Wiedemann's oral evidence about contracts for services at the $250,000 level, saying that he could recall no such contract in the preceding year and thought the existence of such a contract before that time would "be a rarity if it occurred".
60 I now deal with the position regarding Applied.
61 In his affidavit sworn a few days before the commencement of the proceeding, Mr King (already mentioned above), described the then-current business activities of Applied in the following way:
"ABT provides financial management and manufacturing systems, hardware, networking, Unix, NT, internet services, computer bureaus, training, software and hardware support services and computer consulting to the small to medium commercial market."62 During cross-examination, Mr King was asked whether he had read Grandmaster's affidavits in the case, to which question he replied in the affirmative. He was then asked whether he recognised clearly (no doubt, assuming the accuracy of what he had read in those affidavits) that Grandmaster had identified a market different from that of Applied and was concentrating on it. He replied that he did recognise that that was so currently. He then defined Applied's market as concentrating on the provision of what he called "enterprise software", although he said that Applied also made sales of hardware alone. (Later, he added that Applied was also "quite often ... called in to provide ... network services ... and ... we just provide the network and the support of it".) His definition of enterprise software was as follows:
"It encompasses financial software in the strict sense. It takes into account financial back end, whereas distribution software takes in controlling stock through warehousing and distribution. Manufacturing, of course, takes into account down to unit cost of product and EIS [ ]or executive information services provides information of a managerial nature, not necessarily financial. So we term [it] enterprise management because it covers more areas than simply financial."63 Mr King was asked whether Applied had ever engaged in network design, WAN services or facilities management (business activities which, it will be recalled, Mr Faenza had said in his first affidavit were engaged in by Grandmaster). To those questions, he replied in the negative.
64 I must say that it seems to me to have been rather incautious of Mr King to reply to those questions in the negative, without seeking some clarification beforehand about what was meant by the terms used in them.
65 To say something first about the question relating to facilities management, Mr Faenza said in his first affidavit that Grandmaster provided such services, they being often, he said, referred to as "outsourcing". In another part of his oral evidence than the part presently under discussion, Mr King, on the other hand, referred to Applied's provision of "bureau services or outsourcing as it is commonly called". It may be (I do not know) that if Mr King had sought some clarification beforehand as to what the cross-examiner intended by the use of the term "facilities management", he would have given an affirmative, rather than a negative, answer so far as Applied's engaging in facilities management was concerned. My suspicion in that respect is reinforced by Mr Faenza's statement in his first affidavit that "from some of the material supplied by the Applicant, it appears that the Applicant and Grandmaster operate in the same market with respect to ... Facilities Management" although Mr Faenza also said that he inferred from that material that Applied only supplied facilities management services in the context of its provision of financial software.
66 Secondly, as to WAN services, Mr Faenza described that in his first affidavit as being the connection of computer networks between physically different sites and Mr O'Donoghue, who, it will be recalled, is another person connected with Applied, gave oral evidence of its having supplied to and installed for a named customer and of its providing support for a network "running ... in a wide area network configuration so there is more than one office connected". Mr O'Donoghue later said that Applied had provided that service to numerous customers. Perhaps (again, I do not know), Mr King's answer was given without regard to the particular customers referred to by Mr O'Donoghue. In any event, it appears to me possible that Applied had engaged in WAN services at the relevant time, at least according to Mr Faenza's definition of it in his first affidavit. Perhaps (again, I do not know), doing so necessarily means that one also engages in network design in the sense in which Mr Faenza had used that notion.
67 Mr King agreed that a contract involving receipt by Applied of $300,000 for the provision by it of computer goods and services was "very large" for it. Later he said that Applied's average sale in the financial year 1997-98 had been between $100,000 and $120,000.
68 I turn now to the oral evidence of Mr O'Donoghue relevant to the issue of the segment of the market for computer hardware, computer software and computer services in which Applied operated.
69 According to Mr O'Donoghue, the largest contract in dollar terms entered into by Applied "in the last few years" was one "in excess of $300,000" (from which I infer that the largest contact in dollar terms ever entered into by Applied was less than $400,000).
70 Questions were put to Mr O'Donoghue about certain material appearing at Applied's site on the World Wide Web. That material was as follows:
"Applied Business Technology ... specialise in accounting software solutions for any size business and tailored IT solutions to meet the needs of our customers.71 (I interpolate here that the reference in the material just quoted to the team of over twenty-five professionals was a reference to Applied's entire workforce, as Mr O'Donoghue acknowledged in the course of his evidence.)
...
Applied Business Technology's management have over 35 years of experience in the computerised accounting system marketplace. We have a team of over twenty five professionals entirely focused upon the implementation and support of such systems."
72 Mr O'Donoghue was asked whether the material in the second of the two paragraphs which I have quoted above was "a very precise and clear statement of the marketplace that your company is in". He answered in the affirmative, although he later qualified that answer by saying that the market referred to was one of the markets in which Applied was.
73 Later, it was suggested to Mr O'Donoghue that Applied specifically concentrated on marketing commercial accounting systems for small to medium business enterprises and that the other products which it marketed were marketed "very predominantly" as part of or in support of its primary business. Mr O'Donoghue accepted that suggestion and further agreed that that defined the business in which Applied was.
74 Both Mr O'Donoghue's reference to the computerised accounting system marketplace being only one of the markets Applied was in and his (implied) answer that the marketing of products other than commercial accounting systems for small to medium business enterprises was not exclusively as part of or in support of its primary business of marketing such systems was, it appears to me, a harking back by him to some earlier oral evidence he had given. He had earlier said that, for various customers, Applied had engaged in systems integration business which had not involved the provision of software dealing with financial and other information.
75 (It will be recalled that Mr Faenza, when discussing in his first affidavit Grandmaster's Technical Implementation Services Division, had referred to its integrating systems as well. I should also mention here that the document to which I referred in paragraph 15 of these reasons, the one in which Grandmaster announced its having begun to identify itself as (relevantly) "ABT", also referred to systems integration as having become "an integral part" of Grandmaster's business.)
76 Mr O'Donoghue defined the process of systems integration as involving "the integration of various technologies being computer hardware and different application software and operating systems, including but not limited to financial systems". As to such customers, he said,
"[W]e act as their systems integration people, we don't sell them our accounting system, nor do we support their accounting system. They have other people doing that....
...
[T]hey have their own application software which would normally or usually be in competition to one of our products. We go into those businesses and despite not selling or supporting their accounting software we support the rest of the network being the file servers, the cabling, the hardware, the [Microsoft O]ffice products and the other non accounting products."
Later, he said that approximately thirty percent of Applied's gross revenue was derived from the provision of systems integration services, although how much of that was for systems integration services independent of the supply of financial systems was left unexplored.
77 I am now in a position, having described above the relevant evidence on the matter, to express my conclusions, based on that evidence, with respect to the arguments of Grandmaster which I have set out at pars 51 and 52 of these reasons.
78 I accept that, generally speaking, Applied and Grandmaster were in different segments of the market for computer hardware, computer software and computer services at the relevant time, not only by reason of Applied's concentration on the provision of what Mr King called "enterprise software", as compared with Grandmaster's failure to provide such software at all, but also by reason of the relative dollar values of their respective individual contracts for the provision of computer goods and services.
79 A question, arises, however, whether acceptance of that market differentiation carries with it the consequence for which Grandmaster argues. It is convenient to begin answering that question by referring to the decision of a Full Court of the Federal Court in Bridge Stockbrokers Ltd v Bridges [1984] FCA 391; (1984) 4 FCR 460.
80 In the Bridge Stockbrokers Case, there existed a firm of stockbrokers whose full name was "Bridges, Son and Shepherd", but which was widely known as "Bridges" (note the letter "s" at the end of the word). It was a "full service" broker, that is to say, it offered advice as to share trading, as well as merely executing orders on behalf of customers. As a concomitant, its fees for executing orders to purchase or sell shares were based on a percentage of the purchase or sale price of the shares concerned. Further, it extended credit to those purchasing shares through it. A company named "Bridge Stockbrokers Limited" (note the absence of the letter "s" at the end of the first word) proposed to enter the field of stockbroking under its own name. However, it was to be a "discount" broker, with no advice provided, a flat fee for executing all orders, regardless of their size, and no credit for those purchasing shares through it. Bridges sought to prevent Bridge Stockbrokers from carrying on business as a stockbroker under the latter's own name and was successful in doing so, both at trial and on appeal.
81 At the trial [Bridges v Bridge Stockbrokers Ltd [1984] FCA 191; (1984) 4 FCR 21], Sheppard J had said (at 38) that the ultimate question for him to answer was,
"... whether significant numbers of the public who in various capacities have occasion to deal with stockbrokers are likely to be misled or deceived (not merely confused) by the [company's] conduct in using the `Bridge' name."Obviously, his Honour answered that question in the affirmative. (Incidentally, his Honour's reference in the passage just quoted to "are likely", rather than to "were likely", arose from the fact that Bridge Stockbrokers was not yet in operation.)
82 On appeal, Smithers and Woodward JJ, who delivered joint reasons for judgment, used similar terminology to that of Sheppard J, referring (at 466) to "a material section of the public interested to some extent in share dealing" and posing the question,
"... whether it is to be inferred that there is a material section of investors or potential investors who are likely to be misled by learning in one way or another that there is a stockbroking company carrying on business which calls itself `Bridge Stockbrokers Limited' or `Bridge Stockbrokers'."83 In answering that question, their Honours then said (at 467-69),
"The relevant members of the public are investors and potential investors. They fall into numerous classes. There will be those who are potential investors but with no present intention of investing. There are those who are keen students of the corporate and share dealing scene who will be well aware of the firm and the company and will know that the company is not the firm. There will be those who have known of the firm for a considerable period and are acquainted with it in greater or lesser degrees. There will be those who have recently heard of the firm, for the first time, from its publicity or in conversation with some acquaintance. There will be persons who receive advice from others which they believe refers to the firm whereas it actually relates to the company. It is certainly a tenable view that a proportion of persons having slight knowledge of the firm will draw the inference on learning subsequently of the existence of a stockbroker called `Bridge Stockbrokers Limited', that that entity is the `Bridges' they had previously heard about....
In this connection the submission of the company is that the number of persons likely to be misled must be negligible and the error induced by its name could only occur in very special, unusual and infrequent circumstances.
(I interpolate here that the submission being referred to was one which their Honours had earlier described as being that "the company's flat fee, exclusion of credit and refusal to proffer advice would differentiate its clients from those of a full service broker".)
"This submission can be examined in the light of contemplation of possible circumstances in which the error may be made.... The error cannot live in any situation in which the knowledge of the person concerned as to the different identities of the company and the firm is adequate. It is where that knowledge is imperfect that the error may arise.
A person, not of an analytical or trained business mind, believing that `Bridges Son and Shepherd' or `Bridges' are satisfactory brokers and having in mind to approach that firm in the near future could easily be diverted by learning of Bridge Stockbrokers Limited and approach it thinking he was approaching the firm or its successor. If such a person learned from some source of the restricted nature of the company's service, he might refrain from approaching it, believing that the company is the "Bridges" of whom he had heard, and seek out a broker not called `Bridge' or `Bridges'.
And of course if a person learning of the existence of Bridge Stockbrokers Limited, and mistaking it for the firm, were to approach that company and be informed of the company's terms of trade and find those terms unacceptable, he would be unlikely to be told there is a firm called `Bridges, Son & Shepherd' who are full service brokers. It would presumably be no part of the company's regular procedure to inform intending investors that there was such a firm with whom perhaps the caller had confused the company.
One may consider also the impending investor who asks his friend if Bridges are satisfactory brokers. The friend, knowing only of the company and not of the firm, may well answer, `Well, only if you are prepared to pay $75 no matter how small your transaction'....
...
... His Honour was required to, and did, direct his mind to the assessment of the degree of probability that relevant persons might by reason of the trading by the company in the name `Bridge Stockbrokers Limited' be led into error, and to the numerical strength of that body of persons. It was his decision that significant numbers of the public who in various capacities have occasion to deal with stockbrokers are likely to be misled or deceived (not merely confused) by the company's conduct in using the `Bridge' name. In our opinion the learned Judge had before him circumstances from which the inference he drew might properly be drawn."
84 The third member of the Full Court was Lockhart J. His Honour said (at 471-72),
"The relevant section of the public for present purposes consists of people who deal or who are likely to deal with stockbrokers for the purpose of buying or selling securities. The question is whether they are likely to be misled or deceived by the company's conduct in using the name `Bridge Stockbrokers'. In my opinion there are various categories of persons who are likely to be misled or deceived by the company's use of the name `Bridge Stockbrokers' or `Bridge Stockbrokers Limited'. I do not propose to exhaust all the possible categories of persons but they seem to me to include at least the following:85 It is apparent that the applicant in the Bridge Stockbrokers Case faced a hurdle which Applied does not face in the present case, since the name of which the applicant was complaining in that case was not identical to the one under which it was known, whereas here Applied is complaining of the use of precisely the same letters as those which it has used to identify its business. However, what is significant for present purposes is the approach of the Full Court to a case in which an argument had been made by a respondent that there existed no real chance of persons being led into error by its use of a particular name because it and the applicant were in different segments of the stockbroking market, it being a discount broker and the applicant being a full service broker. Even accepting that market distinction, the Court was nevertheless of the view that the respondent's use of its own name gave rise to a real chance of error on the part of "a material section of the public interested to some extent in share dealing" (to use the language of Smithers and Woodward JJ) or "various categories of persons in not insubstantial numbers" (to use the language of Lockhart J).
(a) People who have dealt with the firm or who, for one reason or another -- including introductions from others -- know of the firm and who get in touch with the company by telephone or otherwise thinking that it is the firm and some of whom may place orders with the company;
(b) People who either know the firm or who have been recommended to it by others who know about it, and who seek advice along the lines traditionally given in this country by stockbrokers. They may get in touch with the company by telephone or otherwise, thinking that it is the firm whereupon they are told that advice is not given: they then get in touch with a quite different firm of stockbrokers from the firm itself;
(c) People who see an advertisement for Bridge Stockbrokers Limited and think that Bridges Son & Shepherd have changed their name. They may go to a third stockbroker to seek advice knowing from the advertisement that advice is not offered by the company. This is sufficient to illustrate that there are various categories of persons in not insubstantial numbers who are likely to be misled or deceived by the conduct of the company."
86 It appears to me that the analysis used by their Honours in reaching that conclusion is equally applicable in the present case.
87 For instance, it appears to me that there is a real chance that, once Grandmaster had begun to identify itself as "ABT", a person, A, interested in the acquisition of computer hardware, computer software or computer services and aware only of the existence of the Applied "ABT", might have sought the advice of another person, B, as to the desirability of approaching for that purpose the business which A identified merely as "ABT". B, being aware only of the existence of the Grandmaster "ABT", might have given advice about the business which B also identified merely as "ABT", which advice discouraged A from approaching the Applied "ABT" and instead led A to approach a supplier other than either of the two "ABT"s. B might, for example, have advised A of the Grandmaster "ABT"'s refusal to contract with persons unless their minimum "spend" (to use a word used in that sense by Mr Faenza in his oral evidence) exceeded a certain amount, an amount greater than that which A proposed to spend. Alternatively, A might been interested in enterprise software and B might have advised A that the Grandmaster "ABT" did not supply such software. The scenario which I have described in this paragraph could well have occurred numerous times.
88 It appears to me also that there is a real chance that, once Grandmaster had begun to identify itself as "ABT", A, interested in the acquisition from the Applied "ABT" of computer hardware, computer software or computer services to the value of, say, between $100,000 and $120,000 (Applied's average sale in the financial year 1997-98), might have become aware of the existence of the Grandmaster "ABT" and approached it in the mistaken belief that it was the Applied "ABT". When informed by the Grandmaster "ABT" that it was uninterested in A's business, given the amount which A proposed to spend and the fact (if it was the fact) that A was interested in enterprise software, A would then presumably have approached a supplier other than either of the two "ABT"s. The scenario which I have described in this paragraph also could well have occurred numerous times. (I should perhaps add here that, just as in the case of Bridge Stockbrokers, it was presumably no part of Grandmaster's regular procedure to question those who approached it in the circumstances I am presently describing with a view to informing them of the existence of the Applied "ABT" if it should turn out they had intended to contact that business. Certainly, there was no evidence of any such procedure.)
89 The existence of the categories of persons I have described in the above two paragraphs is sufficient to persuade me that, even accepting Grandmaster's argued refinement of the class of persons by reference to which the question falls to be tested whether the conduct of Grandmaster complained of by Applied either was misleading or deceptive or was likely to mislead or deceive, there exists a real chance that a sufficiently substantial number of persons had been led into error by Grandmaster's use of the letters "ABT" to identify its business by the time Applied had commenced the present proceedings. In those circumstances, Grandmaster breached subs 52(1) of the Act by its use of the letters "ABT".
90 In reaching the conclusion I have just expressed, I have obviously rejected what I took to be a part of Grandmaster's argument against its having breached subs 52(1) of the Act, namely, that unless Grandmaster was, by virtue of its use of the letters "ABT", the beneficiary of any diversion of sales from Applied, it could not have committed such breach. Such argument is not only untenable in logic, but is also contrary to the approach of the Full Court of the Federal Court in the Bridge Stockbrokers Case.
91 I should also say that, in concluding that there exists a real chance that a sufficiently substantial number of persons had been led into error by Grandmaster's use of the letters "ABT", I have had in mind French J's test of commercial relevance referred to in paragraph 17 of these reasons in deciding whether the number of persons concerned was sufficiently substantial. It appears to me that when one is dealing, as here, with goods and services whose cost is usually relatively high, one requires fewer persons likely to have been led into error before one concludes that use of an acronym or name or get-up is likely to have misled or deceived than one would when the usual cost of the goods or services concerned is relatively low. In that connection, I repeat that Applied's average sale in the financial year 1997-98 was between $100,000 and $120,000, while, according to Mr Faenza's second affidavit, "the average contract entered by Grandmaster has a gross price of about $1.5 million to $2 million (with the minimum usually being at least $1 million)". With amounts like those involved here, the existence of a real chance of the leading into error of relatively few persons is sufficient to satisfy a commercial relevance test and thus lead to the conclusion that the number of such persons is sufficiently substantial.
92 I have so far dealt with the question of the existence of a real chance that a sufficiently substantial number of persons were led into error by Grandmaster's use of the letters "ABT" on the basis that there was no prospect of any diversion of sales from Applied to Grandmaster, only the prospect of diversion of sales from Applied to persons other than Grandmaster. In other words, I have proceeded on the basis that Applied's and Grandmaster's segments of the market were mutually exclusive. However, the facts that the largest sale ever made by Applied was for less than $400,000 (see paragraph 69 of these reasons) and that (barring exceptional circumstances which need not be considered for present purposes) Grandmaster would not enter into contracts (at least, those containing a hardware component) which had a gross price of under $1,000,000 does not preclude the prospect of diversion of sales from Applied to Grandmaster between the time of Grandmaster's adoption of the letters "ABT" and the commencement of Applied's proceedings. It does appear to me that there is a real chance that, once Grandmaster had begun to identify itself as "ABT", A, interested in the acquisition from the Applied "ABT" of computer hardware, computer software or computer services at dollar levels sufficient to attract Grandmaster and not including enterprise software might have become aware of the existence of the Grandmaster "ABT", approached it in the mistaken belief that it was the Applied "ABT" and entered into contractual relations with it. It is true that there was evidence in Grandmaster's case that it was "very selective about who it will take on as a customer" and that it did "not engage in any mass marketing". However, the evidence did not go so far as to deny any possibility of Grandmaster's dealing with a person in the circumstances I am presently describing and the prospect that it would deal with such persons, all other things being equal, seems to me to be entirely normal commercial behaviour. I emphasise, however, that, even if I were to ignore the chance of the existence of diversion of sales, not only from Applied, but also to Grandmaster, I would still, for the reasons I have already given, conclude that there was a real chance of a sufficiently substantial number of persons having been led into error by Grandmaster's use of the letters "ABT" to justify a conclusion that Grandmaster had thereby breached subs 52(1) of the Act.
93 I have not so far referred in these reasons to any of the evidence which was led before me either of actual confusion or error or of absence of actual confusion or error caused by Grandmaster's use of the letters "ABT" to identify its business. (A discussion of the significance of such evidence appears in the S & I Publishing Case (at 19-21).) In light of the conclusion which I have reached in this matter, it is unnecessary for me to say anything of the evidence of actual confusion or error led in Applied's case, but it is appropriate that I should explain why the evidence led in Grandmaster's case did not dissuade me from that conclusion. The reason is simply that that evidence was not from purchasers or potential purchasers of computer hardware, computer software or computer services, but was from persons in the computer industry itself, whose companies supplied goods both to Applied and to Grandmaster, namely: Mr Malcolm Pooley, Channel Partner Manager - Australia for Novell Pty Limited; Ms Wendy O'Keeffe, Northern Region Sales Manager for Tech Pacific Australia Pty Limited; Mr Mark Spencer of Express Data, a division of Com Tech Communications Pty Limited; Ms Janelle Owen, a colleague of Mr Spencer; and Mr Calvin Bradshaw, Channel Account Manager for Compaq Computer Australia Pty Limited. That there should have been no confusion or error caused by Grandmaster's use of the letters "ABT" on the part of persons apparently employed at a high level in the computer industry is not a matter for surprise, but does not detract from the conclusion which I have reached, which was based on the likelihood of error on the part of purchasers or potential purchasers of computer hardware, computer software or computer services.
94 I come finally to the question of remedies. I have already mentioned above the failure of Applied to make submissions in support of the grant of any of the types of relief prayed for in its application. Nor, I may add, was there any evidence directed specifically to the remedies question, in particular, to the remedy of damages, which was one of the remedies applied for by Applied. However, I have also already mentioned above par 12 of Grandmaster's defence, in which it admitted relevantly that it had refused to cease using the name "ABT" and further said relevantly that it was lawfully entitled to continue using the name "ABT". In the light of that stance by Grandmaster and my conclusions both as to the geographical extent of Applied's reputation in the acronym "ABT" and as to Grandmaster's breach of subs 52(1) of the Act by using the letters "ABT", I am prepared to grant to Applied injunctive relief, restraining Grandmaster by itself, its servants and agents from using in Sydney the letters "ABT" to identify its business.
|
I certify that the preceding ninety- four (94) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable
Justice Katz. |
Associate:
Dated: 1 February 1999
|
Counsel for the Applicant: | R Cobden |
| Solicitor for the Applicant: | Whelan Parker |
| Counsel for the Respondent: | P Neil SC |
| Solicitor for the Respondent: | David O'Neill Sistrom |
| Date of Hearing: | 2 and 3 November 1998 |
| Date of Judgment: | 1 February 1999 |
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