Brash Holdings Ltd v Commodore Television Pty Ltd

[1987] FCA 89

.

IN THE FEDERAL COURT	OF AUSTRALIA	)
)

VICTORIA	DISTRICT	REGISTRY	)	No. VG 297 of 1986
1

GENERAL DIVISION	)
BETWEEN :

BRASH HOLDINGS LTD, BRASHS PTY LTD. R.H. ELVY PTY LTD

and B.B. WITEHOUSE & CO PTY LTD

Applicants

and

COMMODORE T LEVISION PTY LTD Respondent

MINUTES OF ORDER

m: Woodward J.

m: 6 March 1987

W: Melbourne

THE COURT ORDERS THAT:

1. The application for interlocutory injunctions be

dismissed.

2 . Costs be reserved.

(m:	Settlement and entry of orders is dealt	with in 0.36 of
the Federal Court Rules.)

,-

IN THE FEDERAL COURT OF AUSTRALIA ) )

VICTORIA	D STRICT	REGISTRY	)	No. VG 297 of 1986
)

GENERAL DIVISION )

BFIWEEN	:
BRASH HOLDINGS LTD. BRASHS PTY LTD, R.H. ELW PTY LTD

and B.B. WHITEHOUSE & CO PTY LTD

Applicants

and

COMMODORE T LEVISION PTY LTD Respondent

m:	Woodward J.
m:	6 March 1987

W: Melbourne

REASONS FOR JUDGMENT

This is an application for interlocutory relief in a

proceedlng under the Trade Practices Act 1974 ('the Act'). The

applicants claim that there are "certain distinctive features and

styles" in their advertising of electronic audio and video

equipment. They allege that the respondent has been using those

distinctlve features and styles in its own advertising of similar

products, and that this amounts to misleadlng or deceptive

conduct, within the meaning of s . 5 2 of the Act, in that members of

the publlc may be deceived into thlnking there is a trade

connectlon between the appllcants' and respondent's businesses.

They want such advertising stopped.

- 2 -

The distinctlve features and styles relied on by the

applicant are -

(a) a background qrld pattern with advertised

goods, together with text, overlaid in the

foreground;

(b) the expression "for advice and price";

(c) the expression "it's qotta go"; and

(d) a distinctive typeface.

It would be helpful at this point to set out a brief

chronology of events:

1981 - the applicants start using, as one of a number of type

faces in advertisements, one that is said to be

distinctive.

1981 - the applicants start using a background grid pattern for

their advertisements.

1984 - the applicants begin using the expresslon "for advice

and price" in their advertisements.

1986 - the applicants first use the expression "it's gotta go"

in advertisements. Examples exhibited are from	25/26
June 1986.

14 July 1986 - the respondent begins using in its advertising

(1)	a background grid pattern
(ii)	the same type face which is said to be distinctive

(iii) the expression "It's gotta go"

(iv)	the expression "The best in price	-
The best in advice".

- 3 -

(None of these features had occurred in the respondent's

advertislng in the flrst six months of 1986. The inference is

irresistible that these ideas had been borrowed	(to use neutral
language) from the applicants' advertisements).

12 August 1986 - the appllcants' solicitor writes to the

respondent alleging deliberate Imitation of the

applicants' advertising campaign and threatening

actlon If approprlate	undertakings	are	not
immediately given.

14 August 1986 - respondent's solicitors reply saying that

there is no substance	tohe	applicants'
allegations.

17 November 1986 - this application is filed.

A number of points should be noted about the applicants'

alleged distinctive features:

(a) The background grid pattern used by the respondent is

very similar, but material tendered by the respondent suggested

that such patterns are quite commonly used in advertising, though seldom in the precise way in which it as been used in the present case.

(b) The applicants' expression 'FOR ADVICE AND PRICE" does

not occur in all advertisements and at first took the form "Right

on for price and advice", using a quite different typeface - more

like the one said to be distinctive. It always seems to be used

at the foot of the page.

- 4 -

The respondent has used the expression "THE BEST IN

PRICE - THE BEST IN ADVICE", in a quite different typeface from

either of those used by the appllcants and at	the	head of	the
page.

(c) The applicants' expression "It's gotta go", used for the

first tune in mid-1986, was sometmes used by the respondent in

just the same way and in a similar typeface. It was so used from July to September 1986. In October 1986, qulte different slogans were used and in November the expression "They've gotta go" was

used. I understand that neither of the 'I.. gotta go" expressions

has been used by the respondent since then, nor will they be used

again - though no formal undertakings have been given.

(d) The distinctive type-face alleged is referred to in a

supporting affidavit filed on behalf of the applicants, whlch

gives two instances of its use. Unfortunately these instances

involve two different typefaces, though they are simllar in some

respects.

Amongst the clutter of Items, displayed with much

accompanying material using a number of different typefaces, it is

difficult to say that either of the typefaces said to be

dlstinctive stands out. Perhaps the applicant is on strongest

ground in relation to the price figures, using mainly white on

black in each case and looking similar - though a closer

examinatlon reveals a number of differences.

For the purposes of this interlocutory hearing, based on

the evidence as it stands at present, I would make the following

tentative findings concerning the advertisements;

- 5 -

(1) The respondent dld deliberately copy certain distinctive

features of the appllcants' advertisements;

( 2 ) Those advertisements which used not only the grid

pattern but also the words "It's gotta go" could have led a person

famlliar with the applicants' advertisements to think there was

some connection between the applicants' and the respondent's

businesses. Any such impression would have been reinforced if the

words "price" and "advice" were also juxtaposed in the particular

advertisement. The type-faces chosen by the respondent, while

adding little to the overall impression of slmllarity, certainly

did not detract from It.

The next question I have to consider 1s who might be

deceived by the similarities described. Here the applicants are

on weaker ground.

The applicants, until now, have advertised in Melbourne

and some other state capitals, but hardly at all in Sydney. The

only evidence of their advertlsing in Sydney relates to

advertisements on behalf of the third-named applicant, featuring

different goods (pianos, organs and other musical instruments),

which appeared in March 1983 and again 1985 and 1986. Those

featured the grid pattern and some features of the allegedly

distinctive typeface but neither of slogans was used.

This evidence is far too thin to establish any

reputation of any of the applicants in distinctive advertising in

the Sydney market. But the respondent only advertises in Sydney

and one other NSW town. It describes itself clearly by its own

- 6 -

name and always claims to be "Sydney's Leading Audio-Video

Speclalists". It seems that the applicants are keen to break into

the Sydney market, but have not yet done so.

What has happened is that the respondent has taken some

ideas from the applicants' advertislng in other places, and used

them in Sydney before the appllcants have had a chance to do so.

This does not appear to be actionable unless the public has been deceived or misled by it.

The class of persons who could be misled would appear to

be strictly limited. It must be confined to those persons who are

sufflciently interested in the applicants' advertisements in

Melbourne or elsewhere to recognize their distinctive features and

identify them with the applicants. They would also have to be

Interested in purchasing the goods concerned on the Sydney market, but not sufficiently familiar with the industry to know that there

is in fact no connection between the applicants and the

respondent.

Having thus consldered the available evidence as to

whether the respondent's conduct has been misleading in nature and

whether the public was likely to be misled In fact, I h ve reached

the conclusion that there is here a serlous question to be tried,

even though I do not regard the applicants' case as strong.

Whether it succeeds or not will probably depend on evidence which

is not yet before the Court.

- 7 -

On the questlon of balance of convenience, I find the

scales lightly but evenly balanced. It would not be very

difficult for the respondent to recast Its advertisements - given

a reasonable time to do so - and the cost of such recasting would

be readily quantlfiable. On the other hand I am not persuaded

that the applicants are llkely to suffer any serious harm if the

advertisements - which have already been running for some 7 months

- were to continue until trial, which has been fixed for

mid-April. Wlth "It's qotta go" out of the way, the only matters

of substance left are the grid pattern and the juxtaposition of

the words "price" and "advice", although in different phrases.

It is slqniflcant that the applicants delayed three

months, after they knew the offending conduct would continue,

before they issued proceedings. They may have been wonderlnq

whether, in view	of what was at stake, expensive court proceedings
were warranted.	In my view, both partles in this dispute should

ask themselves that question now.

For the present I merely say that the applicants have

failed to persuade me, in all the circumstances, that

interlocutory in~unctlons are appropriate. However I have reached

that conclusion, as a matter of discretion, on a fairly even

balance. The exchange of material on affidavit has not been

wasted, and for these reasons I think it is best that I should

reserve the costs of this application.

- 8 -

Other interlocutory orders have already been made, which

will lead to an early hearlng if a senslble commercial solution to

thls dispute cannot be found.

I certify that this and the

seven (7) precedlng pages are

a true and accurate copy of the

Reasons for Judgment herein of

The Hon Mr Justice Woodward

A;soclate

Dated: 6 March 1987

Counsel for the Applicant: Mr J. Burnside

Solicitors for the Applicant: Messrs Coltmans

Counsel for the Respondent: Mr S. Wilson

Solicitors for the Respondent: Messrs Freehill, Hollingdale

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