Bendigo and Country Districts Trustees and Executors Co Ltd v Sandhurst and Northern District Trustees, Executors, and Agency Co Ltd - [1909] HCA 63

9 CLR 474

BENDIGO AND COUNTRY DIS-

TRICTS TRUSTEES AND EXECUTORS CO. LTD.

DEFENDANTS,

THE SANDHURST AND NORTHERN DIS-

TRICT TRUSTEES, EXECUTORS, AND

RESPONDENTS

AGENCY CO. LTD.

ON APPEAL FROM THE SUPREME COURT OF Trade name-Name adopted by company-Similarity to name of another company-

Both companies carrying on same business-Likelihood of confusion-Burden of proof. MELBOURNE,

In an action by one company to prevent another company from using a Sept. 28, 29;

name SO like that of the plaintiff company as to be likely to deceive, the plaintiff company must show that it is reasonably certain that what the defendant company are about to do will cause imminent and substantial damage to the plaintiff company.

Royal Insurance Co. Ltd. v. Midland Insurance Co. Ltd. (26 R.P.C., 95), Held, that the name of the appellant company was not SO like that of the respondent company as to render it reasonably certain that anyone intending to employ the respondent company and make them trustees under a will or settlement, or employ them as agents, would be led to believe the appellant company were the respondent company.

Decision of the Supreme Court of Victoria (Madden C.J.) reversed.

9 CLR 475

APPEAL by special leave from the Supreme Court of Victoria.

An action was brought in the Supreme Court of Victoria by the Sandhurst and Northern District Trustees, Executors and Agency Co. Ltd. against the Bendigo and Country Districts Trustees and Executors Co. Ltd., claiming an injunction " re- straining the defendant company from using the name style or title of the 'Bendigo and Country Districts Trustees and Executors Co. Ltd.,' or any other style or name which includes the plaintiff company's name or SO nearly resembles the same as to be calculated to induce the belief that the business carried on by the defendant company is the same as the business carried on by the plaintiff company or in any way connected therewith."

By order of the Court the plaintiff company was given liberty to apply by motion for an injunction in the terms stated above, and both parties undertook to treat the hearing of the motion as the trial of the action.

The motion was heard by Madden C.J., who granted an injunction in the terms asked for.

From this judgment the defendant company now by special leave appealed to the High Court.

The material facts sufficiently appear in the judgments here- under.

Duffy K.C. (with him Mucfarlan), for the appellants. The proper remedy is by opposing the registration of the appellant company under the Companies Acts. See sec. 21 of the Com- panies Act 1890. The respondent company has not itself used the word " Bendigo," and has gained no right in that way, and the word has not acquired a secondary meaning. It is merely a geographical term, and those who speak of the respondent coin- pany as the Bendigo Company" mean only the company carry- ing on business in Bendigo. That gives the respondent company no exclusive right to the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Bendigo and Country Districts Trustees and Executors Co Ltd...

Details

AGLC: Bendigo and Country Districts Trustees and Executors Co Ltd v Sandhurst and Northern District Trustees, Executors, and Agency Co Ltd [1909] HCA 63
Case: [1909] HCA 63
Decision Date: 1 October 1909

CaseChat Overview and Summary

The High Court of Australia heard an appeal from the Supreme Court of Victoria concerning a dispute between two trustee and executor companies. The plaintiff, Sandhurst and Northern District Trustees, Executors, and Agency Co. Ltd., sought to restrain the defendant, Bendigo and Country Districts Trustees and Executors Co. Ltd., from using its chosen name. The plaintiff argued that the defendant's name was so similar to its own as to be likely to deceive the public and cause confusion, thereby damaging its business.

The central legal issue before the High Court was whether the defendant's proposed name was likely to cause confusion among the public, leading them to believe that the defendant's business was connected with or the same as the plaintiff's business. This involved determining the standard of proof required for such a claim, particularly in a *quia timet* action where actual damage had not yet occurred, and assessing the likelihood of deception among persons likely to deal with such companies.

The High Court, in allowing the appeal, reasoned that the onus was on the plaintiff to demonstrate with reasonable certainty that the defendant's use of its name would cause imminent and substantial damage. The Court considered that individuals engaging the services of trustee and executor companies are typically prudent and would make inquiries to ascertain the identity of the entity they intend to trust. While acknowledging that the plaintiff company might be colloquially referred to as the "Bendigo Trustees Co." due to its business location, the Court found the evidence of likely confusion insufficient. The Court emphasised that the names, when considered in their entirety and in the context of the formal dealings of such companies, were sufficiently distinct to prevent deception by persons exercising ordinary care and observation. The Supreme Court's decision granting an injunction was therefore reversed.

Orders