Besser (Qld) Ltd v Action Besser Blocks Pty Ltd
[1990] FCA 64
•9 Mar 1990
C A T C H W O R D S
TRADE PRACTICES - interlocutory injunctive relief - Infringement of trade mark (s.62) - misleading and deceptiva conduct - use of similar name for and in advertising respondent's products
- whether generic term amongst public and in buildlng trade -
whether trade mark distinctive - availability of defences (ss.62(2) and 56) - form of relief where respondent shares telephone number wlth innocent party.
Trade Practices Act 1974, ss.52 and 62
Besser (Qld) Limited
v. Actlon Besser Blocks Pty Ltd & Anor
Qld G137 of 1989
PINCUS J .
BRISBANE
9 FEBRUARY 1990
PRINCIPAL 07 MAR 1990
FEDERAL COURT OF
AUSTRALIA
l
| IN THE FEDERAL COURT OF AUSTRALIA | 1 | ||
| QUEENSLAND DISTRICT REGISTRY |
| ||
| GENERAL DIVISION | ) |
BETWEEN: BESSER (QLD) LIMITED
Applicant
AND: ACTION BESSER BLOCKS PTY LTD
First Respondent
AND: ACTION MASONRY BLOCKS PTY LTD
Second Respondent
MINUTES OF ORDER
| JUDGE MAKING ORDER: | PINCUS J |
| DATE OF ORDER: | 9 FEBRUARY 1990 |
| WHERE MADE: | BRISBANE |
| THE COURT ORDERS THAT: |
1. Until further order, the First Respondent be restrained, whether by itself, its directors, servants, agents or otherwise, from using the word "Besser" in connection with concrete products,
within a radius of 162-kilometres of the General
Post Office of the City of Brisbane otherwise than use in connection with the Applicant or its
products;2. The First Respondent, within seven (7) days of this order, obliterate the word "Besser" from any pallets used by it and further that the First Respondent will not deliver or use pallets that have not been subjected to such obliteration;
3. The First Respondent will cause to be said to any caller (on telephone number 393 4066) who expresses interest in concrete blocks, concrete bricks, concrete pavers, or any Besser products, words to the effect that the recipient of the call is a new company, Action Besser Blocks Pty. Ltd. and that if the caller wishes to contact the original Besser Company, its number is 376 4966, and that the
Action Besser Blocks company has no connection with the original Besser company.
4. The Applicant deliver its statement of claim on or before 2 March, 1990;
5 . The Respondents deliver their defences on or before
6 April, 1990;
6. The Applicant deliver its reply on or before 10 May 1990;
7. The matter be further mentioned on 17 May 1990 at 9.30 a.m.;
8. As to both the First and Second Respondents that the costs of the application be the Applicant's costs in the proceedings.
| - | NOTE : | Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. |
i
| ~h THE FEDERAL COURT OF AUSTRALIA | 1 | ||
| QUEENSLAND DISTRICT REGISTRY |
| ||
| P | ) |
BETWEEN! BESSER (QLD) LIMITED
Applicant
AND: ACTION BESSER BLOCKS PTY LTD
First Respondent
AND! ACTION MASONRY BLOCKS PTY LTD
Second Respondent
8 FEBRUARY 1990
REASONS FOR JUDGMENT
| This is a motion for an interlocutory injunction. The applicantis case; in outline, is that it has a registered trade mark 'Besserh for concrete products, which is being infringed by the*respondents, and it also asserts that the respondents are | using ,the name "Besser" in their business in a way which is | prohibited by the terms of s.52 of the Trade Practices Act 1974. |
| The two respondents are related companies. The only substantial case is that against the first respondent. Mr Fryberg Q.C:, who ied dr Keim tor the applicant, suggested that an inference is open that the second respondent also uses the name "Besset" in its business, but that does not appear to me to be so. | ||
| he hoe1 Cooke, a director of the second respondent, has sworn that the second respondent "does not actively trade under a name or style id any way remotely connected with the word 'Besser"' and that has not been challenged. | ||
| The first respondent, on the other hand, is admittedly using the name "Besser" in ways which are mentioned below. The absence of any evidence of wrongdoing on the part of the second respondent creates a difficulty in framing suitable relief, as the r@spondents use the same telephone number. | ||
| The trade mark suit appears to me to have some strength. The dpplicant is the proprietor of a mark registered in Part B in respect of concrete masonry building blocks. It was first rbgistered in 1964 and has been twice renewed, the second renewal taking the registration to the year 1999. The evidence shows, and it is indeed undisputed, that the first respondent has been using the name "Besser" in connection with concrete masonry building blocks in a number of ways. | ||
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| .. | ||
| Secondly, the first respondent uses the name "Besser" in response to telephone inquiries. I deduce this from the conversation kr L.S. Bond, the Brisbane Manager of the applicant, had on 23 November 1989. On phoning the fitst respondent's number (393 4066), he was told, among other things, "We sell Besser Blocks". ~urther, it is shown that the word "Besser" has been painted on pallets, which the first respondent has obtained and presumably intends to use to transport its products. A photograph of the pallet shows that on one side it has the word "Action" at the left hand end and "Besser" at the right hand end. | ||
| The principal provision dealing with infringement of trade marks is s.62 of the Trade Marks Act 1955, sub-s.(l) of which speaks of use of "a mark which is substantially identical with, or deceptively similar to, the trademark, in the course of trade, in relation to goods or services in respect of which the trade mark is registered". There has plainly been such a use of the mark as s.62(1) contemplates. Nor, as it appears to me, would the kitst respondent be likely to obtain much help from s.62(2), which gives alleged infringers of Part B marks a defence against a | ||
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| difficult for the first respondent to interest the court in the ptoposition that its large advertisement in the Yellow Pages referred to above is not likely to "deceive or cause confusion". |
he real point raised by Mr Bain, for the respondents,
in respect of the trade mark suit is that there may be a defence under 6.56 of the Act. Its general effect, so far as relevant, is to destroy rights under marks in some circumstances where they have become generic or descriptive. Mr Fryberg said, in effect, that on the face of it, s.56 could not apply because of the interpretation given the provieion in F.H. Faulding and Co. ~imited v. Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537. In that case, the provision was read as potentially destructive of rights under marks only where, in the case of a word mark, the very word registered itself becomes generic. In that case, "barrier" was registered, whereas the expression shown to have been used in the trade in respect of the relevant type of goods (protective creams) was "barrier cream". M Fryberg said that here the corresponding words are "Besser", which is registered, and "Besser blocks", which according to some evidence has become part of the language.
It is not necessary to decide this point for the purposes of this interlocutory application, but prima facie the construction given to s.56 in the F.H. Fauldinq case appears to me Strongly to favour the applicant,
| A second argument advanced by Mr Bain was that the mark is not distinctive within the meaning of s.26 of the Act, the terms of which it is unnecessary to set out. It is by no means clear that (apart from the special circumstances set out in s.561, the Court has jurisdiction to rectify the register on the ground that the applicantvs mark has ceased to be distinctive. That can hardly be So with respect to Part B marks, which, in order to justify registration, need not be distinctive, but merely "capable of becoming distinctive" - see s.2511). Although the point was |
1.
not explored, again the applicantls case on this aspect of the
matter appears to me to have considerable strength.
Section 52 of Trade practices Act
Although the considerations arising under s.52 are somewhat broader than those raised under the Trade Marks Act, the respondentsf answers to the applicant's case rested in large part on the same factual foundation. This was that, on the evidence, the *ord "Besser" as applied to concrete building and fencing blocks had come to be applied to all such blocks, when made of concrete in the style of the applicant's blocks, whether or not actually originating with the applicant. I am prepared to accept, for the plirposes of this interlocutory stage of the proceeding, that the first respondent has good prospects of establishing that this wider usage of the word "Besser" is current, at least in some quarters. But it appears to me almost inevitable that persons engaged in the building trade, as opposed to consumers, will generally be conscious of the fact that concrete building blocks
| are made by more than one manufacturer. It must often happen that |
references to Besser blocks are intended to be, and taken to be, references to the first applicant's blocks, as opposed to any other manufacturers1.
In documents used in the building industry such as tender documents, specifications and the like, references to "Besser blocks", at least when the first word has an initial capital letter would, as it seems to me, probably be assumed to
require the use of the applicant's blocks. In advertisements, in my Opinion, at least some people would be likely to assume that references to "Besser blocks" were intended to make the reader think of blocks made by the fairly well-known local manufacturer of concrete blocks - i.e. the applicant. I am satisfied that there is a prima facie case of breach of s.52, particularly in the large advertisement: in the Yellow Pages referred to above. An inference is open that the placing of the word "Besser" in large type there was designed to take advantage, at least to some extent, of the applicant's goodwill.
Form of Relief
Mr Fryberg presented two possible forms of order, which were discussed. The principal problem is the telephone number, 393 4066. On the evidence, the number is used by both respondents and most of its usage relates to matters unconnected with the disputk discussed above: for example, those who telephbne may be seeking to have their houses restumped or to buy certain sorts of
| timber, .or to buy precast concrete panels. It is difficult, on |
this #material, to justify the making of any order which would restrict or interfere with the second respondent's use of its telephone number.
It was suggested that a practical course might be to require that it be arranged that a recorded message, designed to protect the applicant; be played to each person who calls the number 393 4066. I have decided not to accept that suggestion.
It appears to me that a more practical course, which alleviates the bad effects of the presumptive wrong done to the applicant pending trial, without interfering with the rights of the second respondent, is to require the first respondent to say to any caller who expresses interest in concrete blocks or in any Besser products words to the effect that the recipient of the call is a new company, Action Besser Blocks Pty Ltd, and that if the caller wishes to contact the original Besser company, its number is 376 4966. I appreciate that, to comply with this order, the first respondent will have to instruct its staff carefully. 1 am also conscious of the fact that making an order in such a form as that is likely to lead to further disputes if the applicant, on telephoning 393 4066 to test compliance, is dissatisfied with the response. I propose to make an order in such a form as this, although it is less convenient than simply requiring the same taped message to be played to every caller, because I have accepted the contention on behalf of the respondents that use of a taped message is likely to damage the business on both respondents without (as to the second) any evidence having been adduced to justify the causing of such damage.
| Apart from that, it appears to me that the order should be in such form as to prohibit any further use of the word "Besser" by the first respondent, in connection with its concrete products, pendente lite. The word "Besser' on the pallets which have been made must be painted out. I do not see any necessity, however, to take any steps at this stage with respect to the Register of Business Names. |
One further point which requires to be dealt with is that, although there was no discussion at the hearing about it, the trade mark registration applies within a limited geographical area. It may be necessary to discuss with counsel the question whether the interlocutory injunction should be similarly limited.
What I propose to do is to hand down these reasons and to invite the parties, after reading them and taking instructions, either to agree upon or make submissions about the precise form of order and on the question of costs.
I certify that this and the seven preceding pages are a true copy of the reasons for judgment herein of His Honour Mr. Justice Pincus.
d Associate
Dated B ??Am7
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