Beyond Care Pty Ltd v Beyond Care Australia Pty Ltd

[2024] NSWSC 1051

Supreme Court

New South Wales

Medium Neutral Citation:

Beyond Care Pty Ltd v Beyond Care Australia Pty Ltd [2024] NSWSC 1051

Hearing dates:

16 August 2024

Decision date:

16 August 2024

Jurisdiction:

Equity - Applications List

Before:

Kunc J

Decision:

Default judgment ordered

Catchwords:

CONSUMER LAW — Enforcement and remedies — Injunctions — Default judgment — No issue of principle

Legislation Cited:

Civil Procedure Act 2005 (NSW) s 90

Competition and Consumer Act 2010 (Cth), Sch 2 – Australian Consumer Law, s 18

Uniform Civil Procedure Rules 2005 (NSW) Pt 16, r 16.3

Cases Cited:

None

Texts Cited:

None

Category:

Principal judgment

Parties:

Beyond Care Pty Limited (Plaintiff)
Beyond Care Australia Pty Ltd (Defendant)

Representation:

Counsel: HW Somerville (plaintiff)

Solicitor: HWL Ebsworth Lawyers (plaintiff)

File Number(s):

2024/94341

Publication restriction:

None

EX TEMPORE JUDGMENT (REVISED)

1. The plaintiff, Beyond Care Pty Ltd, and the defendant, Beyond Care Australia Pty Ltd, are both companies which provide social work services, in particular services to clients of the National Disability Insurance Scheme (NDIS). By a statement of claim filed on 12 March 2024, the plaintiff sues the defendant primarily under the Australian Consumer Law, but also for passing off. The plaintiff is the registered owner of two trademarks both in relation to the words "Beyond Care" in class 45 in respect of social work services, and a figurative mark in the same class.

2. The plaintiff was today represented by Mr H W Somerville of Counsel. In circumstances I will shortly explain, there was no appearance for the defendant.

3. The Court is satisfied on the evidence that the statement of claim was served on the defendant. The matter has come before me in the Applications List on an amended notice of motion filed by the plaintiff seeking default judgment against the defendant. The defendant has never filed an appearance or a defence.

4. However, shortly before the matter last came before me in the Applications List on 19 July 2024, an email was sent to the plaintiff's solicitor and my Associate apparently on behalf of the defendant. That email is unsigned but came from the email address [email protected]. Dated 17 July 2024, it was addressed to “Dear Team” and included:

"In light of recent developments and to eliminate any potential confusion moving forward, we have decided to embark on a rebranding initiative. We intend to transition from 'Beyond Care Australia' to a more succinct and distinctive brand name, 'BCA'. This rebranding effort will involve registering a new domain under the name 'BCA' and obtaining the necessary trademark protection to solidify our brand identity."

5. On the basis of that email, I declined to entertain the plaintiff's application on 19 July 2024 because I was of the view that the plaintiff's entitlement to injunctive relief may turn on whether or not the defendant in fact had changed its name in the way the email promised. I stood the matter over for directions to today. The Court is satisfied on the evidence tendered today that the defendant has not changed its name.

6. The present application for default judgment was brought under the Court's general jurisdiction in s 90 of the Civil Procedure Act 2003 (NSW) and also pursuant to the Uniform Civil Procedure Rules 2005 (NSW) Pt 16 r 16.3. There is no doubt that the defendant is in default, having been properly served but not having filed a defence within the time limited under the rules. The email I have referred to in [4] above demonstrates beyond doubt that the defendant is aware of the proceedings.

7. The matter was called in the Applications List this morning. There was no appearance for the defendant. Mr Somerville began to move on his client’s amended notice of motion. However, I pointed out to him that, correctly, the plaintiff had only notified the defendant that the matter was in the list for directions. I stood the matter down to 2pm to enable the plaintiff to inform the defendant that the Court was proceeding to hear the amended notice of motion.

8. The hearing resumed at 2pm. Evidence was tendered that an email had been sent at 11.13am to the defendant at two different email addresses (including the address referred to in [4] above) and a message had been left on the mobile phone of someone called “Leon”, who had previously sent an email on behalf of the defendant. The email made it clear that the matter was proceeding to a hearing and that if the defendant wished to oppose the relief sought, it should appear at 2 p.m.

9. There was no appearance for the defendant when the matter was called at 2 p.m. Nor had anyone contacted my chambers on behalf of the defendant, notwithstanding that someone had done so on 17 July 2024.

10. I am satisfied that the defendant was properly put on notice of the hearing. While that notice was short, I find it was sufficient given two matters. First, there has been no formal engagement with the proceedings by the defendant to date. Second, the defendant was notified of today’s directions hearing by email to the two email addresses known to the plaintiff on 19 July 2024 and had chosen not to appear today. Mr Somerville was ready to proceed today, and it would have been contrary to the overriding purpose to put the plaintiff to the cost and delay of a further adjournment.

11. On the last occasion, the Court was informed that the plaintiff was not pressing for damages but only sought injunctive relief and costs. In the absence of a defence, the Court takes the allegations in the statement of claim as having been established on their face. That, together with the evidence that has been read, satisfies the Court that the plaintiff is entitled to an injunction restraining the defendant from the offending conduct of continuing to describe itself as “Beyond Care Australia”, which the Court finds is in breach of s 18 of the Australian Consumer Law by representing an association or affiliation with or sponsorship by the plaintiff which does not exist.

12. The plaintiff has also sought an order for its costs to be assessed on a gross sum basis. Mr Somerville correctly, in my respectful view, accepted that the basis for those costs should only be on the ordinary basis. I have had the advantage of evidence from the solicitor with the conduct of the matter, together with all the detailed invoices rendered by the plaintiff's solicitors to demonstrate the costs that have been incurred. I have reviewed these and am satisfied as to their reasonableness.

13. It is unnecessary in the circumstances to rehearse in any detail the principles governing when a gross sum costs order should be made. Given the apparently deliberate non-participation in the proceedings by the defendant, the Court is satisfied that to put the plaintiff to the time, trouble and expense of a formal assessment procedure for its costs would be inimical to the overriding purpose. Furthermore, all relevant material on costs is before me for the Court to be able to come to a fair assessment of what those costs are. For these reasons, it is appropriate to make a gross sum costs order.

14. In reaching the final figure as to the gross sum, I have allowed the disbursements of the filing fee and an ASIC search fully. Counsel's fees of $17,710 inclusive of GST, I have reduced marginally to $17,000 GST inclusive of GST.

15. The plaintiff's costs on a solicitor/client basis were $24,960.65 inclusive of GST. To reflect the generally accepted reduction from solicitor/client to party/party costs together with some small additional discount to reflect the fact that the costs are being assessed on a gross sum basis, I have reduced the solicitor/client figure by one third, rounding up slightly to a figure of $16,500 inclusive of GST.

16. Those components added together, rounded up slightly, total $37,200 inclusive of GST and an order for costs assessed in the gross sum of that amount will be made.

17. I will give the plaintiff time to bring in short minutes reflecting the colloquy I have had with Mr Somerville about the precise form of orders the Court is prepared to make, given that they will be enforceable by an action in contempt in the event of non-compliance by the defendant after proper service of the orders.

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Decision last updated: 20 August 2024