Australian Prime Realty Pty Ltd v Sydney One Realty Pty Ltd
[1997] FCA 1196
•31 OCTOBER 1997
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NG 903 of 1997
BETWEEN:
AUSTRALIAN PRIME REALTY PTY LIMITED
APPLICANTAND:
SYDNEY ONE REALTY PTY LIMITED
RESPONDENT
JUDGE:
MOORE J
DATE:
31 OCTOBER 1997
PLACE:
SYDNEY
THE COURT ORDERS THAT:
The respondent, by itself, its servants or agents, be restrained from using the names Sydney One Realty, Sydney One Real Estate, Sydney One Property or any name using or including the words "Sydney One" in the same sequence until further order.
2. That the respondent be restrained from operating any business of selling, offering for sale, managing or letting of real estate using telephone number 9660 9888 until further ordered.
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 903 of 1997
BETWEEN:
AUSTRALIAN PRIME REALTY PTY LIMITED
APPLICANTAND:
SYDNEY ONE REALTY PTY LIMITED
RESPONDENT
JUDGE:
MOORE J
DATE:
31 OCTOBER 1997
PLACE:
SYDNEY
REASONS FOR JUDGMENT
(Delivered ex tempore)
This is an application for an interlocutory injunction. The applicant is Australian Prime Realty Pty Limited. Its business is that of real estate agent and it trades under the name of Sydney Prime Realty. The respondent is likewise engaged in the selling of real estate and it presently proposes to trade under the name of Sydney One Property. That name was adopted by the respondent after initially having proposed to trade under the name Sydney One Realty, which it appears to have abandoned after representations were made on behalf of the applicant.
However one of the practical consequences of the respondent initially proposing to trade under the name Sydney One Realty is that there is presently recorded a telephone number under that name which continues to be used by the respondent even though it now proposes to trade under the name of Sydney One Property. In an application such as this it is necessary to ascertain whether there is an arguable case or serious question to be tried, and where the balance of convenience lies, though those two matters are not unrelated.
As I understand the proceedings they are brought only under the Trade Practices Act 1974 ("the Act") and the applicant contends that the respondent has by its conduct contravened the provisions of section 52 of that Act. The issue of the use by the applicant of its name and the use by another of a name that was similar, has already been the subject of a detailed consideration by a Judge of this Court in Australian Prime Realty Pty Limited t/as Sydney Prime Realty v Galbid Pty Limited t/as Sydney First Realty (1994) ATPR 41-366. That case involved consideration of the names "Sydney Prime Realty" and "Sydney First Realty". The latter was the trading name of the respondent in those proceedings, Galbid Pty Limited. Foster J concluded that the applicant in those proceedings, which is the applicant in this matter, had made out a case of conduct contravening section 52 of the Act. His Honour's reasons are comparatively lengthy but the gravamen of his decision appears to be several passages on page 42, 766 where his Honour discusses the similarities which he described as "marked similarities" between the two names. They related not only to, in that case, the common first and last word but also the similarities in the middle word and the way the name itself might be pronounced and what his Honour described as a natural rhythm of the two phrases.
The names in that case bore a greater similarity than the names in this case, at least to the extent that two of the words in each of the names were the same. In my view, however, the names in the present case, Sydney Prime Realty and Sydney One Property still exhibit features of the type referred to by his Honour which led to the conclusion that there had been contravention of section 52. It is true that the word "property" is a different word to the word "realty". It is also true that there may be subtle differences in meaning between the word "one" and the word "first". Those are questions that may bear upon whether the applicant ultimately succeeds at the final hearing. I am presently considering the question of whether or not there is an arguable case. I am satisfied there is.
As to the question of balance of convenience, and bearing in mind what I view to be the comparative weakness of the case here with that considered by his Honour in the case to which I have just referred, it is necessary to consider what I understand to be the salient facts.
The first is that the applicant has been trading under its name for four years and this weekend has engaged in the marketing of units it wishes to sell on behalf of others using that name, though, as is pointed out by counsel the respondent, using a telephone number which is prominently displayed. On the other hand the respondent has only recently been incorporated and, as I understand what I have been told from the bar table, intends to commence trading, in substance, under the name of Sydney One Property for the first time this weekend.
It thus emerges that the applicant is a real estate agent of some standing trading under the relevant name and the respondent is not. Having regard to the evidence about the telephone number in the name of "Sydney One Realty" and the possibility of confusion arising from the names in the provision of that number, there is some chance, though I would not wish to overstate it, that the respondent may derive some benefit from the name Sydney One Realty presently being recorded with Telecom as the number of what is intended to be Sydney One Property.
Taking into account all those matters, it appears to me that the balance of convenience lies in making orders restraining the respondent from trading under the names that are set out in the short minutes of order that have been handed to me by counsel for the applicant. The respondent made no submissions about the form of order save to point out their effect. However, the order I propose to make is intended to endure for a short period in the sense that the matter can come back before the court early next week for the purposes of directions being given for what I would hope would be an early final hearing of the matter.
In those circumstances and notwithstanding the width of the orders that are proposed, I intend to make orders in the terms of the short minutes handed up, subject to an undertaking as to damages being given by counsel for the applicant.
The court orders:
The respondent, by itself, its servants or agents, be restrained from using the names Sydney One Realty, Sydney One Real Estate, Sydney One Property or any name using or including the words "Sydney One" in the same sequence until further order.
2. That the respondent be restrained from operating any business of selling, offering for sale, managing or letting of real estate using telephone number 9660 9888 until further ordered.
I certify that the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Moore
Associate:
Dated: 31 October 1997
Counsel for the Applicant: Ms J Needham Solicitor for the Applicant: Diamond Peisah & Co Counsel for the Respondent: Mr B De Buse Solicitor for the Respondent: T Bouzanis & J Kekatos Solicitors Date of Hearing: 31 October 1997 Date of Judgment: 31 October 1997
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