Barry v Lake Jindabyne Reservation Centre Pty Ltd

, I

Trade Practices -

claim by applicants trading as Jindabyne Resort

Centre that respondent trading as Jindabyne Reservation Centre

engaging in misleading

deceptive conduct - whether

circumstances names descriptive of business carried on

by parties

- effect of some confusion only in minds

of public - relevance of

intention

of parties

- whether any misrepresentation

- whether

name distinctive of either business carried on by parties.

Trade Practices Act

1974 6 6 . 5 2 ,

Business Names Act 1962

(N.S.W.)

BRUCE IAN

EARRY and REBECCA BARRY v. LAKE JINDABYNE RESERVATION

CENTRE FTY. LIMITED

TOOHEY J.

PERTH	I
21 AUGUST 1985
b

I N THE FEDERAL COURT

OF AUSTRALIA

)

WESTERN AUSTRAGIA

1	No. NSW G213 of 1984

DISTRICT PEGISTRY

GENERAL DIVISION

)

B E T W E E N :

BRUCE IAN EARRY and REBECCA

BARRY

Applicants

and

LzllcE JINDABYNE RESERVATION CENTRE

PTY. LIMITED

Respondent

MINUTE OF ORDER

JUM;E MAKING ORDER: Toohey J.

DATE OF ORDER:	21 August 1985
WHERE MADE:	Perth

THE COURT ORDERS THAT:

1. The application is dismissed.

2. The applicants pay the respondent's costs of the application.

Note:

Settlement and entry of orders is dealt

with in Order 36 of the Federal Court Rules

IN THE FEDERAL COURT	)
OF AUSTRALIA	1

WESTERN

AUSTRALIA

No. NSW G213 of 1984

DISTRICT

REGISTRY

)

GENEIZAL

DIVISION

B E T W E E N :

BRUCE IAN BARRY and REBECCA

BARRY

Applicants

and

LAKE JINDABYNE RESERVATION	CENTRE
PTY. LIMITED

Respondent

CORAM: TOOHEY J.

21 August 1985

REASONS FOR JUDGMENT

The applicants and the respondent each carry

on business

at Jindabyne, a popular ski resort in New South

Wales.

The applicints, who

are husband and

wife, operate under

the registered business name

of Jindabyne Resort Centre. The

respondent

incorporated

in the

name

of Lake

Jindabyne

Reservation

Centre Pty. Limited

but,

the course

its

activities, it commonly

uses

the

name

Jindabyne

Reservation

Centre. The respondent has sought registration of that name under the Business Names Act 1962 (N.S.W.). Registration has been

refused because of an

objection taken by the applicants by reason

of their proprietorship of the business name Jindabyne	Resort
Centre.

L .

The applicants claim

that the use

by the respondent of

the	name Jindabyne Reservation Centre, the name Lake Jindabyne

Reservatlon

Centre or

any

name

whlch

those

words

appear

constitutes misleading conduct within 6 . 5 2 of the Trade Practices

Act 1974.

They further contend

that the use of either name by the

respondent is a contravention of

6.53 of the Act

and amounts to

passing off at common law.

In opening his clients' case, counsel

for the applicants conceded

that if they failed to make good

case under 6.52

it was unlikely that they would

be able to do

on either of the other bases relied upon. Conversely, if the applicants succeed in establishing a contravention of 6.52, they

do not need to rely

on 6.53 or any common law cause of action.

Evidence

was

adduced

on affidavit. ' There

was

cross-examination of some deponents. Questions	of fact and of law
arise for determination.

The statement

claim

pleads

that the

applicants

carry on the business of providing holiday accommodation and that

they are engaged in the management

of holiday resorts,

"all of

which are in close proximity

to the

snow fields and to Lake

Jindabyne".

It is the applicants' case tbat the

name Jindabyne

Resort

Centre has been widely advertised

and promoted

to the

public and :o travel and booking agents and that, in consequence, they have acquired a reputation in and by the use of that name. The statement of claim further recites that the respondent carries

on business

in Jindabyne "In providing holiday accommodation

Jindabyne in close proximity to the snow

fields and to Lake

Jindabyne".

It alleges

that since 1983 the respondent has traded

3 .

under the names Jindabyne Reservation Centre and Lake Jindabyne and mislead and did deceive and mislead the public into believing that the respondent's business was associated with the applicants

or that the services and business of the respondent were that Of

satisfied that the respondent has used the name Lake Jindabyne

Reservation Centre as opposed to Lake Jindabyne Reservation Centre

the

applicants or had

affiliation

with

them.

I am

not

Pty.

Ltd.

though no

point

was taken on that ground

the

respondent.

The claims of deceptive and misleading conduct, false

representation and passing off were put squarely in terms of the reSpOndent'6 use of the offending names. The applicants did not

contend that any other conduct

the respondent constituted a

cause of

action under the Trade Practices Act or at

common law.

It was not the

applicants'

case that the respondent

had

deliberately set out

to capture customers

of the applicants,

actual or potential.

Their case was

put quite simply that the

respondent's use,

particularly of the name Jindabyne Reservation

Centre, misled the public and caused damage to the applicants

because of a belief thereby engendered in

the minds of the public,

at any rate those interested in skiing in the country around

Jindabyne, that

if they dealt

with the

respondent they were

dealing with the

applicants.

By its defence the respondent denied the allegations

the statement of claim, other than formal allegations, and by way of further answer pleaded that since it had been served with the

application and statement of claim it

had "taken all precautions

to trade and continue tradinu	only under its corporate	name and
style".

The

nature

of the

respective

businesses

of the

applicants and the respondent

lies very much at the heart of this

matter.

The applicants contend

that their business

is both the

management

holiday

resorts

and

the

provision

of holiday

accommodation, in other words that

they are both a

resort and a

reservation centre.

It is for this reason, they

say, that the

respondent's use of a similar name is likely to mislead.

On the

other hand, the respondent argues

that there is

an essential

difference between the two

businesses. It says that it is not

concerned with the management

of holiday premises and that its

business is

what its name

suggests, that of

making reservations

for facilities in and around

Jindabyne.

And,

it says,

those

facilities are not confined to

accommodation.

The

booking of

travel to and

from

Jindabyne and nearby resorts and

of facilities

associated with skiing such as Chair-lifts and

equipment is a

vital part of its business.

It specialises in holiday packages

and is a

licensed travel agent.

In effect the respondent argues

that its

name and the shortened version Jindabyne Reservation

Centre

are

merely

descriptive

its

business,

that the

applicants' name is merely descriptive of their business and that

in those circumstances there can

be no question of a contravention

of the Trade Practices

Act.

Some

reference

the

history

of the

respective

businesses is advisable.

The applicants' business name, Jindabyne

Resort

Centre,

was

registered

on 21 July 1981.

The original

proprietors of the

name

were

Bruce

Ian

Barry

(one of the

applicants), Graeme John Garthon and Daryl Malcolm Garthon.

The

nature of the

business

was

shown

"hollday

accommodation

management services" and its location

as the

corner of Kosciusko

Road and

Kalkite Road, Jindabyne. A resort centre was built on

the site and it became known as Alpine Gables.

It comprises 45

split level units, a bar and restaurant, quest lounge, games room,

spa and sauna. The centre

is owned by Ajat Pty. Limited, a

company in

which the applicants have no interest.

At the outset

the applicants wished

to manage the bar and

restaurant and also

the resort. They could not afford the management fee for both and so entered into negotiations with a Mr. and Mrs. Shmeissing. The

applicants and

the Shmeissings

bought a shelf company, Cockrums

Holdings Pty. Limited, and that company entered into a management agreement with Ajat Pty. Limited in respect of both aspects of the business. The name Jindabyne Resort Centre was transferred to

Cockrums

Holdings

on 31 March 1982. In January 1982 the

applicants began to have brochures and stationery printed in the

name	of Jindabyne Resort Centre, opened bank accounts in that

name, obtained an

entry in the telephone directory and advertised

the name.

These steps were taken in preparation for the opening

of the resort for the 1982 skiing season.	In fact Alpine Gables
was opened on 10 June 1982.

In December

1982 the appllcants agreed to

sell

to the

Shme1ssings their interest in Cockrums Holdlngs on the basis that the company would continue to manage the bar and restaurant and the applicants would manage Alpine Gables. As part of that

arrangement the business

name

was

transferred

Cockrums

Holdings. However in August 1983

it was re-transferred to the

applicants and they remain the registered proprietors of that

business

name.

A sign Jindabyne Resort Centre stands outside

Alpine Gables though, since the beginning

of the 1985 snow season,

the sign has been entirely covered by a banner bearing the words "Skiing Galore's 85 Jetset Tours Thredbo". The banner was placed there as part of an arrangement between the applicants and the company running the tours.

The applicant Bruce Ian Barry swore two affidavits in

support of the application.

In the first affidavit, sworn

October 1984, he deposed that in

1981 Anchor Projects Pty. Limited

bought land on Kosciusko Road directly opposite Alpine Gables.

Mr.	Barry referred to negotiations with Anchor Projects for the

applicants to manage what was to be

known

a6 "The

Lakeside

Chalet". In his affidavit

he said that the resort centre was

"ready to start" and

was due to open in 1985.

In his oral

evidence Mr. Barry explained that "ready to start" was

a reference

to construction not to the operation of the centre. In fact there

has been no construction on

the site and, in Mr. Barry'a words,

the owners "are still determining what	is	going to be built on
that land".

In the same affidavit Mr. Barry mentioned

an arrangement

whereby, in January 1984, the applicants abtained the right to

manage "Maddox Apartments"

in Jindabyne.

The correct name is

Mattox Apartments. In an affidavit sworn in answer to Mr. Barry's affidavit of 9 October 1984, Derry Michael Weis who is a director

of the respondent deposed to attending the site of the Mattox

Apartments

and

ascertaining

"that

here

were

completed

apartments on the premises and

the building was

still in the

course of

construction". This discrepancy was explained

by M r .

Barry in a later affidavit in these

terms:

' I . . .

Maddox

Apartments

were

constructed

approximately seven to ten years

ago. They

are presently being renovated and that is why

they are in the state described in

M r .

Weis'

Affidavit.

They should be

ready for letting

again by the

next winter season. We have

been

renting

accommodation

in the

Maddox

Apartments for one year and Wellmore Real

Estate

have rented Maddox

Apartments

for

several years".

Speaking generally, I found Mr. Barry a credible witness

but I must

say that, in relation to The Lakeside Chalet site and

the

Mattox

Apartments,

his

affidavit

9 October 1904 was

misleading.	Infelicity of expression hardly affords an adeqJate
explanation.

Mattox Apartments comprises four

units. The owners live

in two.

The remaining two are available for

letting.

Mr. Barry

claimed that the applicants had the agency for the apartments but he agreed that, although the units were available for letting in late July 1985, the applicar.ls had not booked any persons into the unit S .

The appllcants now have an arrangement with Raine

and

Horne, a firm of estate agents in Jindabyne, to let eleven units In and around Jindabyne. They have exclusive management rights in the sense that, If Raine and Horne wlsh to let those units, they

8 .

must

flrst

check

thelr

availability

with

the

applicants.

brochure showing

the units

was tendered in evidence;

it was

prepared by the applicants in November

1984.

the

light

entire

evidence

these

proceedings, I am satisfied that the business of the appllcants is

primarily and essentially the management of Alpine Gables. They

have played no active part in the letting of Mattox Apartments and

the letting of apartments made available by Raine and Horne is

very small

part indeed of their business as are other activities

such as

the sale of ski-lift tickets.

The name Jindabyne Resort

Centre is an accurate description of their business.

I turn now to the

respondent's

activities.

The

respondent was originally

a shelf company Pogulo Pty. Limited

which changed its name to Lake Jindabyne Reservation Centre Pty.

Limited

on 9

April

1 9 E Z .

It thereupon began

to conduct the

business of providing

holiday

accommodation

and

around

Jindabyne. At first the respondent conducted its business from

office in Sydney and from Shop 2 , Petamin Plaza in Jindabyne. In March 1983 its Sydney office was moved to Surry Hills and on 9 May

1984

lts Jindabyne office was moved to Shop

6 in the Petamin

Plaza. When the respondent was operating from Shop

in the

Petamln Plaza,

it used the name S k l

Lodge Membershlp Exchange as

well as the name in which it was incorporated. It also used the

name Jindabyne Development Corporation though

the evldence threw

very little light

the

nature

that

business

or the

clrcumstances in

which

the name was used.

It seems that the

respondent

only

began

advertlse

Its

office

as Jindabyne

Reservation Centre after

the move to Shop

Petamin Plaza

16, ~f not the only shopplng complex

Jindabyne, the

biggest.

One

meets

vlrtually

on entering

Jindabyne from Sydney. The front

of the respondent's business

premises is

glass.

The most prominent sign displayed there is a

large wooden sign

hung from the ceiling

and bearing the words

"Accommodation

Centre".

Mr.

Weis

deposed

that

he was the

proprietor

of the business name Jindabyne Accommodation Centre

"which also conducts its business from the subject premises".

Again the precise relationship between the business conducted by

Jindabyne Accommodation Centre and

the other activities of

the

respondent was not explained. Painted

on the glass front of the

respondent's

premises,

below

the

wooden

sign,

are the

words

Jindabyne Reservatjsn Centre.

Photographs of the premises show

that above the word Jindabyne appears the word Lake

and after the

word Centre, the words Pty. Ltd.

The added words

are in smaller

lettering and are quite clearly by way

of after-thought. Although

Mr. Weis'

affidavit refers

the words Lake and Pty. Ltd.

"painted", his oral evidence was that the words were stencilled

paper which was

turn pasted onto the window. Certainly the

addltional words have an air of impermanence.

I am satisfied that

they were added because

of this lltigation.

I d1d not find

convincing Mr. Wels' evidence that difficulties

In obtaining a

slun wrlter was his

reason for falling to have the

word "Lake"

added

to the slgn Jindabyne Reservatlon Centre in the window.

Equally I do not accept the defence that the respondent "has since

being served

wlth the Application and Statement of

Clam herein

taken all precautions to trade and contlnue trading only under its

corporate name and

style".

The name Jindabyne Reservation Centre

1s the name by which the respondent 1s generally known and, not surprisingly, it sults it to use that name or to emphasise those words in Its corporate name.

However the question remains

- what are the implications

for these proceedings of a finding that the respondent has done

little to avoid the use of the name Jindabyne Reservation Centre?

If the use of the name does not constitute misleading or deceptive

conduct, the respondent's actions in that regard

are virtually

irrelevant. If the use

of the name does constitute misleading or

deceptive conduct, it

is no answer to say that the respondent

has

made some efforts to avoid the

use of the name.

For the purposes

of 6 . 5 2 of the Trade Practices Act, the respondent's conduct

1s o

be measured objectively

and not by reference

to the intentions of

those who

control its activities. Hornsbv Buildinq Information

Centre Ptv. Ltd.

Svdnev Buildinq Information Centre

Ltd.

(1977-1978) 140

C.L.R.

216.

Nevertheless it should be said that

the respondent has continued to use the name Jindabyne Reservation

Centre because that is the name by which it

has become known and

it suits it to use that name. It is not the case, and indeed this was not put on behalf of the applicants, that the respondent has

used	the name Jindabyne Reservation Centre to qain some benefit

from the appllcants' actlvities.

Mr.

Wels was cross-examined extensively on

a brochure

prepared bv the respondent in October 1984

in the name Jlndabyne

Reservation Centre.

Th16 was after the present proceedings had

begun.

The

brochure is entitled Jindabyne Australia'a Year Round

Resort. It is in the form

of an accommodation dlrectory wlth

photographs of hotels and motels, lodges, unlts and town houses

and around Jindabyne. There 1s no doubt that the intention

of the

brochure is to advertise accommodation available through Jindabyne

Reservation Centre. The brochure carries, in separate	form, a two
page description of 1985 Ski Packages. Again th1s is	in the name

of Jindabyne Reservation Centre

and, as the name suggests, it

offers combinations of accommodation, tickets to ski resorts and tickets to chair-lifts. Mr. Weis was cross-examined in great detail about individual lodges, units and town houses with a view

to showing that in

a number of cases accommodation

was in fact not

available through the respondent.

addition the applicants

called Mr. T.R. Barry, the holder

of the Raine

and Horne franchise

for

Jindabyne,

give

vldence

that

in some cases

the

accommodation offered by the respondent in the brochure was not available because letting arrangements were held by others than the respondent. At the time of this cross-examination I expressed

doubts as to its relevance, particularly

in the detail in which it

was being pursued.

I still have those doubts.

If the respondent

advertised accommodation which it was not able to provide

or at

any rate had no certalnty of provision (and I

am satisfied that

this is the case with some

of the unlts offered),

it does not seem

to ne to advance the applicants' claim. It does not detract from

the fact that the respondent's operations are essentially those of

a reservatlons centre though, as

Mr. Weis not

o n l y acknowledged

but w a s at pains to point

out, the enphasls

1s on booking ski

packaues rather than lndlvldual components. I am satlsfied that

the name Jindabyne

Reservatlon Centre 1s

an accurate description

of the respondent'

business.

There is

no doubt that some members of

the public have

been confused as to the relatlonship between the applicants'

buslness

and

that

the

respondent.

The applicants

adduced

evidence of a letter received by them addressed to "Jindabyne

Resort Centre, Petamin

Plaza, Jindabyne N.S.W.", a letter from

travel agents with whom they had no dealings. It was apparent

that the letter was intended

for the respondent. Other examples

were given, such as telephone calls received	by the applicants'
receptlonist intended for the respondent, an	account received by

the

applicants

from

Sun Newspapers

addressed

Jindabyne

Reservation

Centre

Jindabyne,

a payment

advice

addressed

Jindabyne Reservation Centre, Alpine Gable6 and

also a letter

addressed to Jindabyne Resort Centre enclosing

a cheque for $300

in c~rcumtitances where the cheque was intended

for the respondent.

Some of

these examples were simply cases of mls-delivery by the

post office; others evidenced a belief in the mind of the writer

that he or she was dealing with Jindabyne Resort Centre when in

fact It was with Jindabyne Reservation Centre.

Mr.

Weis gave

evidence that,

to the best of

his knowledge,

the respondent had

received no mail intended for the applicants. In his affLdavit of

9 October 1984

Mr. Barry also mentloned an incident at the

Brlsbane Ski Show

in March

1984 where both the applicants and the

respondent had a

stand.

"During the course of the

show at least

one person sald to me:

'Are you the same organizatlon?' referring

to Jindabyne Resort Centre."

In my

view the cases of mis-delivery are no more than

that.

The other examples are

of some confusion In the mind of the

writer or

speaker. It may be that the exlstence

two names,

having some similarity, causes uncertainty

in the minds

of some

persons wlshing

organize a

skilng holiday in the Jindabyne

area. Conduct which merely causes

uncertainty does not contravene

6.52 of the Trade Practices Act Parkdale Custom Built Furniture Ptv. Ltd. v. Puxu Ptv. Ltd. (1981-1982) 149 C.L.R. 191. Conduct 16 not misleading or deceptive unless it contains or conveys a

misrepresentation. Taco Cornpanv of Australia Inc. v. Taco Bell

Ptv. Ltd.

(1982) 4 2 C.L.R.

177.

In my view, the use by the

respondent of

the name Jindabyne Reservation Centre has

done no

more than give rise

to uncertainty. Viewed objectively, the use

the

name

contains

conveys

no misrepresentation

the

respondent and

does not constitute conduct that is misleading or

deceptive or conduct likely

to mislead or deceive.

A name which is

on its face descriptive may become

distinctive of the products of a particular manufacturer. See for instance Abundant Earth Ptv. Ltd. v. R. & C. Products Ptv. Ltd.

(1985) 59 A.L.R. 211.

But that is not the case here. Where

complaint of misleading or deceptive conduct relates to the use

a partlcular nane by a respondent, the applicant must show an

associatlon In the rnlnds of the relevant sectlon of members of the

public wlth that particular name, otherwlse conduct is not llkely

to mlslead or decelve. Dalry Vale Metro Co-operative Ltd. v.

Brownes Dalrv Ltd. (1981) 35 A.L.R. 494; Taco Companv of Australla

Inc. V. Taco Bell Ptv. Ltd. supra; Burswood Manaaement Lrmited

Eurswoa-Casino

MotelIHotel Ptv. Ltd. (unreported decislon

Toohey J., dellvered 13 June 1985).

There is no doubt

that

the

respondent

markets

its

services mare widely and more aggresslvely than

do the applicants.

The respondent has

a telex,

a toll-free telephone to ensure its

llsting in every Australian telephone directory and entries in the

yellow pages of the Jindabyne telephone directory.

It has been

involved in the production

of a video tape, shown on television to

advertise the attractions of the Jindabyne

area and featuring

as a

sponsor Jindabyne Reservation Centre.

The very nature

of its

buslness, that

of travel agent engaged in the booking

ski

packages,

prompts

the

respondent

to advertise widely. The

respondent tends to look to individual members

of the public. The

applicants r e l y ,

to fill the rooms

at Alpine Gables, largely

tour coaches (as is evidenced by the banner to

whlch reference was

made earlier in these reasons) and their contacts are therefore

more confined. They have not established an association with the

name Jindabyne Resort Centre that goes further than the management

of Alpine Gables.

Equally such usage does not amount to

passing

off of

the

respondent’s business as that

of the applicants.

Indeed, while I

dld

not

flnd

the

evidence

Mr. We16 satisfactory

in all

respects, I accept that

has been

pains

avoid

t n e

respondent being llnked in the minds of the public with the

applicants.

The respondent

has

nothing

gain

belng

linked; its business is different from and bigger than that	of the
applicants.

This is a matter in which some co-operation on the part

of the respondent might have avoided litigation. Consistent	use
by the respondent of the name Lake Jindabyne Reservation Centre

rather

than

Jindabyne

Reservation

Centre

would

less

objectionable so far as the applicants are concerned. Although it

would seem that feelings over the use of

names have deepened, it

may not be too late

for

some co-operation. However the fact

remains that the applicants have failed to establish

a cause of

action

against

respondent.

Their

application

must

dismissed.

c e r t i f y t h a t t h i s

and

the four teen

preceding pages are

t rue

copy

the

Reasons

f o r Judgment here in of

h i s

Honour

M r .

J u s t i c e Toohey.

[1985] FCA 412

21 Aug 1985