Cardell Insurance Agencies Pty Ltd v Corporate Affairs Commission

[2003] SADC 137

CARDELL INSURANCE AGENCIES  PTY LTD & ORS -V- CORPORATE AFFAIRS COMMISSION
[2003] SADC 137

Judge Robertson
Administrative Division

Nature of Proceedings

1. This is an Appeal by the Appellants against the decision of the Corporate Affairs Commission (“the Commission”) refusing to register the business name “Australian Seniors Insurance Agency” under the Business Names Act 1996 (“the Act”). The written application for registration of a Business Name came before the Corporate Affairs Commission in early 2003. On 22 February 2003 the Commission made a decision refusing the application to register the name. The Commission considered that the name was very similar to the name of Australian Pensioners Insurance Agency Pty Ltd, which is a registered company. The Commission formed the view that because of the similarity in name this could result in an increased chance of confusion or mistake being made by consumers.

2. The Appeal comes before the Court in its Administrative and Disciplinary Division pursuant to Section 16 of the Act which provides that “ … a person aggrieved by an act or decision of the Commission may appeal to the District Court against that decision”.

   The Relevant Legislation

3. Section 8 of the Act provides for the application for the registration of a business name under the Act. Section 8 (4)(b) provides:-

   “8(4)         However, the Commission –

   (b)must not, subject to any directions of the Minister, register a business name that is the same as or that is in the Commission’s opinion likely to be confused with or mistaken for  -

   (I) a registered business name or;

   (II) … ; or

   (III) the name of a body corporate;” (Emphasis Added)

   Issues arising from the Appeal

4. The question arising in the Appeal is whether the registration of the business name is likely to be confused with or mistaken for the name of Australian Pensioners Insurance Agency Pty Ltd.  Section 42 E of the District Court Act 1992 provides that in considering an Appeal brought under sub-division 2 of part 6 of that Act, the Court must give due weight to the decision being appealed against and the reasons for it and that it is not to depart from the decision except for cogent reasons.

   The Relevant Legal Principles

5. The Full Court of the Supreme Court of Western Australia in the decision of Drake v Commissioner for Corporate Affairs and Drake Personnel (Unreported Judgment delivered on 17 April 1999) in dealing with Section 9 of the Business Names Act 1962 (WA) had cause to consider a Ministerial Direction which provided that the Commissioner was not to accept for registration “names that are likely to be confused with or be mistaken for a business name registered in Western Australia”. (Emphasis Added)

6. It can be seen that the Court was required to consider the phrase “likely to be confused with or be mistaken for” which is similar to the phrase which the Commission here was required to consider, pursuant to Section 8(4)(b) of the Act.

7. Whilst there are differences in the legislation in Western Australia and the fact that the matter came before the Western Australian Court by way of judicial review, I am satisfied,  that the statements of principle expressed in that decision are of assistance in the resolution of this Appeal.  I set out hereunder a distillation of the principles identified in Drake which, in my opinion, have relevance to the present circumstances:

   ·The question whether the registration of a business is “likely to be confused with or mistaken for” a business name or company have already registered is an objective one; in other words it is an objective test;

   ·The question is to be determined by reference to the likelihood of confusion or mistake not by reference to any actual confusion or mistake;

   ·Evidence of actual confusion or mistake or where there is evidence of the absence of confusion or mistake is to be taken into account but is not determinative of the answer to the question.

   ·That one of the purposes of the Act is the protection of the public from being misled by names that are used in business.

   Material before the Commission at the Time of the Decision

8. As I mentioned, the Commission had an Application in writing for the registration of the Business Name.  That Application indicated that the type of business proposed to be carried on was “Insurance Marketing”.  The Application also indicated that the proposed business proprietor was Cardell Insurance Agencies Pty Ltd of Victoria.  In addition, the Applicant placed before the Commission business name Registration Certificates recording that the same business name was registered in Western Australia, Tasmania, Queensland, New South Wales and Victoria.  Further, additional written material placed before the Commission was a Certificate of Registration of the web site Domain Name of “Australianseniors.com.au”.  This Certificate indicated that the Domain Name was registered to Australian Seniors Insurance Agency.  The Commission also had before it a Certificate of Registration of a Trademark which included in the displayed Trademark were the words “Australian Seniors Insurance Agency”.

9. In addition to the written material I have referred to the following factual material was also supplied to the Commission with the Application;

   ·That Australian Seniors Insurance Agency had operated in all States of Australia for the last four years except South Australia.

   ·As a result of commercial arrangements being entered into by the South Australia Government Department it was thought necessary to proceed to register the business name in South Australia.

   ·Australian Pensioners Insurance Agencies Pty Ltd operates in all States of Australia.

   ·To the best of the knowledge of the applicant there had not been any confusion or misunderstanding by either consumers or suppliers up to the time of the application.

   The Decision of the Commission

10. The affidavits of Sonja Van Amstel declared and affirmed on 22 July 2003 and of Richard Lawley sworn on 22 July 2003, both officers of the Commission, referred to the reasoning and grounds for the Commission’s decision to refuse the application to register the business name.  It is clear that the Commission considered that the name Australian Seniors Insurance Agencies was similar to Australian Pensioners Insurance Agency Pty Ltd.  The Commission noted that three out of the four words of each of the names were exactly the same with the only difference being the word “Pensioners” and the word “Seniors”.  It concluded that because of the similarities in names and the similar nature of the respective businesses of Australian Seniors Insurance Agency and Australian Pensioners Insurance Agency Pty Ltd, there would then be an increased chance of confusion or mistake made by consumers thinking that they were dealing with the same organization when there were in fact two separate organizations.  Ms Van Amstel stated in her affidavit that the Commission considered the word “Pensioners” and “Seniors” to mean the same thing.

11. Mr Durkin, Counsel for the Appellants, criticised the decision making process of the Commission, stating that it used the wrong test. He said that the Commission had reached its decision on the basis that the names were “very similar”, when the test set down in Section 8, of the Act, is whether the name to be registered is likely to be “confused with or mistaken for” the name of Australian Pensioners Insurance Agency Pty Ltd. I do not agree with this submission. Whilst the affidavits do not specifically refer to the test in Section 8 it is in my view, that the Commission correctly understood the test that it needed to apply and refused the application because it reached the decision that the proposed business name was likely to be confused with or mistaken for Australian Pensioners Insurance Agency Pty Ltd.

    Material Before the Court on the Appeal

12. In addition to all the material before the Commission to which I have referred earlier the Appellants placed before the Court other material which was said to be relevant to the Appeal. 

13. The Appellant Diane Cardell, in her affidavit sworn on 30 May 2003 deposed to the appellants having extensively marketed insurance services under the name “Australian Seniors Insurance Agency” in the print media since 1998.  Exhibited to her affidavit, were copies of advertisements in New South Wales and Queensland  publications which were distributed to Seniors Card Members.  Ms Cardell also exhibited to affidavits, Sponsorship Agreements between Australian Seniors Insurance Agency and Government Departments in Tasmania and Queensland.  Further, she deposed that the Appellants, under the trading name of “Australian Seniors Insurance Agency”, had been a major advertiser with the Commonwealth Government Centrelink Publication known as “Aged Pension News” which is distributed throughout Australia.  Finally, Ms Cardell deposed that throughout the whole period of trading since 1998, the Appellants had not experienced one instance of the business name Australian Seniors Insurance Agency being confused or mistaken with the name “Australian Pensioners Insurance Agency”.

14. Counsel for the Appellants submitted that this further evidence was placed before the Court to highlight the point that to date there has been no evidence of confusion or mistake between the names elsewhere.  He submitted, that this evidence is to be seen against the background of significant business and marketing activities by Australian Pensioners Insurance Agency in other parts of Australia.

    Should the Appeal be Allowed?

15. There are significant similarities between the two names.   As the Commission noted the only difference between the two names are the words “Pensioners” and “Seniors”.  The Commission interpreted those two words to mean the same thing.  In my opinion, they were not entitled to do so.  The word “Pensioner” in ordinary Australian language is understood to mean a class of people who receive some form of pension, including an Aged pension.  I think I am entitled to take into account that the word “Seniors” has a meaning in Australian contemporary language as being somebody of quite mature age.  In other words a person whose age was beyond what would be recognised as “middle aged”. The word can include people who are of mature age and who also are in receipt of a pension of some form or another.  It can also be taken to mean people who are of mature age who are not receiving a pension.  In my opinion the meaning of the word “Seniors”, is of wider import than the word “Pensioners”.

16. The Commission concluded that both businesses were part of the insurance industry.  Certainly, on the application form, the Appellants indicated that the proposed business was that of insurance marketing.  Whilst I have no evidence before me, I have no doubt that the Commission from the documents relevant to Australian Pensioners Insurance Agency lodged with the Commission could have identified the business of that company.

17. Indeed, there was very little evidence before me of the nature of the business of Australian Seniors Insurance Agency.  Mr Durkin during the course of his submissions, without demur by Counsel for the Crown, said that its business was that of an insurance agent catering primarily for persons over the age of fifty.  There is even less evidence of the business of Australian Pensioners Insurance Agency Pty Ltd.  However, I suppose I am entitled to infer from its name that it is an insurance agent targeting mainly pensioners.

18. As I mentioned earlier, the question raised by Section 8 (4)(b) of the Act namely, whether a proposed business name is “likely to be confused with or mistaken for” a registered business name or the name of a body corporate is an objective one.  It is an objective test that the Court needs to apply on the appeal and it is an objective test which the Commission needs to apply when called upon to reach its decision.  Further, the question is whether it is likely that confusion or a mistake will arise.  (Emphasis Added).  However, as I mentioned earlier, in considering that question, evidence of actual confusion or an actual mistake or the lack of confusion or mistake, where such evidence is available, are relevant factors to take into account without such evidence being determinative.

19. The Commission had before it evidence that in all other States of Australia, the Appellants operated under the proposed business name and that there had not been any reported cases of confusion or misunderstanding by consumers with the name Australian Pensioners Insurance Agency.  It seems to me that the Commission did not give sufficient weight or any weight at all to this evidence when coming to its decision.  The only reference to the fact  that the Appellants operated the business names in all other States of Australia was contained in paragraph 11 of the Affidavit of Ms Van Amstel when she said:-

    “The letter stated that as the states allowed the name to be registered the applicants expected the name to be registered in South Australia.”

20. The letter to which Ms Amstel referred said nothing of the sort.  It appears from that statement that the Commission misunderstood the relevance of that evidence. 

21. In my opinion, the evidence that the Appellants had been operating their insurance agency business under the business name “Australian Seniors Insurance Agency” in all other states of Australia and that there is no evidence of any confusion or mistake by a consumer is relevant to the ultimate question.  Furthermore, the extra material provided on this Appeal supports and adds weight to the evidence which was before the Commission.  The name Australian Seniors Insurance Agency has maintained a significant profile in publications directed to mature age consumers.  Furthermore, it is relevant to consider that there has been no complaint from Australian Pensioners Insurance Agency Pty Ltd that there has been confusion or mistakes amongst consumers regarding the two organizations. 

22. In my opinion, whilst the names are similar the central word in each of them, namely, “Pensioner” and “Senior” have different meanings.  Added to this, is the evidence of absence of confusion or mistake between the two names over a period of approximately five years in the context that both organizations have substantial business operations in the Australian market place.  Taking all these factors into account, and applying the test objectively the conclusion is reached that it is not likely there will be confusion or mistake with Australian Pensioners Insurance Agency Pty Ltd if the Commission registers the business name “Australian Seniors Insurance Agency”. 

23. I am, therefore, of the opinion, for the reasons set out herein, that there is cogent reason to depart from the decision of the Commission in refusing to register the business name.  As a result, I rescind the decision of the Commission and substitute the decision that the appellants be permitted to register the business name “Australian Seniors Insurance Agency”, with the Corporate Affairs Commission pursuant to Section 8 of the Business Names Act 1996. I direct that the Commission do proceed to register the name.