Chipper & Son Pty Ltd v RAYLA Enterprises Pty Ltd

[1999] WASC 139

JURISDICTION     :   SUPREME COURT OF WESTERN AUSTRALIA

IN CHAMBERS

CITATION:   CHIPPER & SON PTY LTD -v- RAYLA ENTERPRISES PTY LTD & ANOR [1999] WASC 139

CORAM:   ANDERSON J

HEARD:   5 AUGUST 1999

DELIVERED          :   5 AUGUST 1999

FILE NO/S:   CIV 1726 of 1999

BETWEEN:   CHIPPER & SON PTY LTD (ACN 008 676 971)

Plaintiff

AND

RAYLA ENTERPRISES PTY LTD (ACN 009 324 618)
First Defendant

DONALD CHIPPER
Second Defendant

(BY ORIGINAL ACTION)

RAYLA ENTERPRISES PTY LTD (ACN 009 324 618)
First Plaintiff

DONALD JOHN CHIPPER
Second Plaintiff

AND

CHIPPER & SON PTY LTD (ACN 008 676 971)
First Defendant

THE REGISTRAR OF TRADEMARKS
Second Defendant

(BY COUNTERCLAIM)

Catchwords:

Injunction - Interlocutory injunction - Balance of convenience - Damages not an adequate remedy - Serious question to be tried - Misleading and deceptive conduct - Infringement of registered trademark - Passing off - No point of principle

Legislation:

Trade Practices Act, s 52

Trademarks Act, s 17

Result:

Application granted

Representation:

Original Action

Counsel:

Plaintiff:     Mr R J L McCormack

First Defendant             :     Mr D M Stone

Second Defendant         :     Mr D M Stone

Solicitors:

Plaintiff:     Richard Payne & Associates

First Defendant             :     Williams & Hughes

Second Defendant         :     Williams & Hughes

Counterclaim

Counsel:

First Plaintiff                :     No appearance

Second Plaintiff            :     No appearance

First Defendant             :     No appearance

Second Defendant         :     No appearance

Solicitors:

First Plaintiff                :     No appearance

Second Plaintiff            :     No appearance

First Defendant             :     No appearance

Second Defendant         :     No appearance

Case(s) referred to in judgment(s):

Nil

Case(s) also cited:

Nil

1. ANDERSON J:  I am satisfied there is a serious question to be tried on the issue of infringement of registered trademarks by the first defendant and on the issues of passing off in contravention of s 52 of the Trade Practices Act as against both defendants.

2. In its signage and advertising material - that is, in its trademark as defined in s 17 of the Trademarks Act - it is fairly clear that the first defendant is using the name Chipper as an important element in its efforts to attract business.  I am satisfied that it is well and truly arguable that the use of that name in signs advertising funeral services makes the signs deceptively similar to the plaintiff's registered marks in that it is likely to cause confusion as to the source of the services.

3. As to the Trade Practices Act and passing off heads of claim, I am also satisfied that it is well and truly arguable that the conduct in question - that is, the use of the name Don Chipper or Donald Chipper, or even the single name Chipper - in connection with funeral services is likely to deceive or mislead the relevant public and that it amounts to a passing off of the first defendant's funeral services as those of the plaintiff, or as connected to them.  That is to say, I am satisfied that those propositions are arguable.  I, of course, make no comment upon the position as it may finally turn out to be after trial.

4. I am satisfied that damages is not an adequate remedy in this kind of case.  The damage that may be done to the plaintiff's goodwill may be incapable of adequate or satisfactory assessment at trial.  I am satisfied that the balance of convenience lies with the plaintiff.  Grant of an injunction in appropriate terms, as to which I will hear counsel, will not stop the trading or inhibit the trading of the first defendant in the business of funeral directory services in any way.

5. I have considerable concerns about the breadth of the orders sought by the applicant plaintiff.  For myself, and I will hear counsel on this, I would have thought it sufficient for present purposes simply to restrain the first defendant, and perhaps also the second defendant, from using the name Chipper in the course of trade in relation to funeral directing services; but, as I say, I will hear counsel on that.