Crystal Carwash Cafe Pty Ltd v Crystal Clear Carwash and Cafe Pty Ltd
[2006] FCA 1284
•21 SEPTEMBER 2006
FEDERAL COURT OF AUSTRALIA
Crystal Carwash Cafe Pty Ltd v Crystal Clear Carwash & Cafe Pty Ltd [2006] FCA 1284
CRYSTAL CARWASH CAFE PTY LTD (ACN 060 916 770) v CRYSTAL CLEAR CAR WASH & CAFE PTY LIMITED (ACN 118 920 497), NISHA UPPAL, DEEPAK SHARMA AND RAMAN KUMAR
NSD 1801 OF 2006GRAHAM J
21 SEPTEMBER 2006
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NSD 1801 OF 2006
BETWEEN:
CRYSTAL CARWASH CAFE PTY LTD (ACN 060 916 770)
ApplicantAND:
CRYSTAL CLEAR CAR WASH & CAFE PTY LIMITED (ACN 118 920 497)
First RespondentNISHA UPPAL
Second RespondentDEEPAK SHARMA
Third RespondentRAMAN KUMAR
Fourth Respondent
JUDGE:
GRAHAM J
DATE OF ORDER:
21 SEPTEMBER 2006
WHERE MADE:
SYDNEY
THE COURT NOTES:
The undertaking of the First Respondent by its Counsel to the Court upon instructions from the First Respondent that the First Respondent will not in the course of conducting a car wash and café business after 6pm on 21 September 2006 whether by itself, its servants or agents use the name ‘CRYSTAL CLEAR CAR WASH AND CAFÉ’ or any name deceptively similar thereto whether on signs, banners, stickers, dockets, T-Shirts, advertising brochures or otherwise as part of a business name or in the conduct of the business referred to above.
THE COURT FURTHER NOTES:
The Applicant accepts that the use by the First Respondent in the course of conducting a car wash and café business of the name ‘CLEAR VIEW CAR WASH AND CAFÉ’ after 21 September 2006 will not involve a breach of the undertaking in respect of the name ‘CRYSTAL CLEAR CAR WASH AND CAFÉ’.THE COURT ORDERS THAT:
1.The application be dismissed.
2.There be no order as to costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NSD 1801 OF 2006
BETWEEN:
CRYSTAL CARWASH CAFE PTY LTD (ACN 060 916 770)
ApplicantAND:
CRYSTAL CLEAR CAR WASH & CAFE PTY LIMITED (ACN 118 920 497)
First RespondentNISHA UPPAL
Second RespondentDEEPAK SHARMA
Third RespondentRAMAN KUMAR
Fourth Respondent
JUDGE:
GRAHAM J
DATE:
21 SEPTEMBER 2006
PLACE:
SYDNEY
REASONS FOR JUDGMENT
The applicant, Crystal Carwash Cafe Pty Limited, is the owner and operator or franchisor of a number of carwash facilities in Sydney trading as ‘Crystal Carwash Café’. The respondent, Crystal Clear Carwash & Cafe Pty Limited, established a ‘Crystal Clear Hand Carwash & Café’ at 880 Pacific Highway, Gordon, on Thursday 14 September 2006. I might add that one of the principals involved in the first respondent was a former employee of the applicant.
If one looks at the signage used by the applicant and the signage chosen for the Gordon premises by the first respondent and the brochures used by the applicant and the brochures chosen for use by the first respondent one can readily understand that the applicant was aggrieved and rightly aggrieved in respect of the passing off by the first respondent of its business as if it was part of the applicant’s business. It is unnecessary to define the basis on which the applicant would be entitled to relief but the entitlement is plain.
On Monday 18 September a principal of the applicant, Mr Anthony Sahade, telephoned a number at Gordon and spoke with a person connected with the first respondent. The conversation started with Mr Sahade saying:
‘What makes you think that you can call yourself Crystal Clear Car Wash Cafe?’
The response was:
‘My solicitor has done a search with ASIC and there are many companies that have the name Crystal.’
Mr Sahade then proceeded to say (without reciting the entire conversation):
‘If you don’t change your name, we are going to Court.’
The response was:
‘I will change my name, but you have to pay for the signs.’
Mr Sahade responded:
‘I am not paying for the signs, you did a silly thing and you have to fix it. …’
The other party said:
‘I know you, I used to work for you. I don’t want any trouble. If I agree to change my name, then we don’t have to go to Court.’
Mr Sahade responded:
‘Send me a fax to 9283 9090 setting that out by the close of business today otherwise we are in Court tomorrow morning.’
The other party said:
‘OK.’
Shortly thereafter a conversation took place between the same parties who were joined on a conference telephone call by a lady solicitor representing the first respondent. The lady solicitor said words to the effect:
‘Why don’t you send us a fax setting out the issues in dispute and then we can get back to you.’
To which Mr Anthony Sahade responded:
‘No that is too late. I just want to ask you one question, will you accept service of the summons on behalf of your client?’
At 7.55 pm on 18 September 2006 the first respondent forwarded a facsimile to the nominated fax number provided by Mr Anthony Sahade, namely 9283 9090, which read:
‘To Whom It May Concern:
This is to certify that I Roby from Crystal Clear Car Wash and Café Pty Ltd situated at 880 Pacific Highway, Gordon NSW, Sydney will not be displaying the sign and log (sic) of (Crystal Clear Car Wash Café in the future. If u have any other inquiries don’t hesitate to contact on the number below.’
The document was signed ‘Roby’ under which a telephone number 9599 9523 was provided.
Notwithstanding the provision of the facsimile the applicant proceeded to approach the Court on the following day, namely Tuesday 19 September, seeking an order allowing short service of an application for injunctive relief in respect of the respondents’ conduct. It is said by counsel for the applicant, who I accept, that the facsimile number provided by Mr Anthony Sahade to which the person associated with the first respondent should communicate was the facsimile number within the chambers of counsel for the applicant. However, counsel for the applicant approached the Court shortly after 10.15 on Tuesday 19 September without determining whether or not overnight a facsimile had come in to the appointed fax number from the respondents, agreeing to cease and desist from the conduct complained of.
No doubt had the facsimile been located it would have elicited a response requiring some tidying up from the respondents to enable the litigation which ensued to be avoided. However, no attempt was made by the applicant to achieve such an outcome. It simply commenced the proceedings and secured the order for short service of the application which has come before the Court today. The whole of the proceedings have been resolved earlier today by the giving of an undertaking to the Court by the first respondent to abandon the name ‘Crystal Clear Carwash and Café’ on the basis that it will change its identification to become ‘Clearview Car Wash and Café’.
The only remaining issue is costs. One other fact is important and that is that, notwithstanding the undertaking proffered by the first respondent by Roby on its behalf, a brochure was handed out by the first respondent at its Gordon premises as recently as 12.50 pm on the afternoon of Tuesday 19 September 2006. That brochure featured a grand opening special for ‘Crystal Clear Hand Carwash Café’ at 880 Pacific Highway, Gordon.
In my opinion, this is not a case where, as counsel for the first, second and third respondent submits, there should be an order that the applicant pay those respondents’ costs (there was no appearance for the fourth respondent). Equally, I am not satisfied that this is a case where the respondents or any of them should be ordered to pay the applicant’s costs.
The respondents undoubtedly engaged in conduct which was improper, but the proceedings were commenced in circumstances where, had regard been had to the facsimile forwarded on the evening of 18 September 2006, there would have been no occasion for proceedings to be commenced as they were on the following morning. It is also relevant that the brochure was still being handed out, notwithstanding the facsimile, at 12.50 pm on Tuesday, 19 September.
In my opinion this is a case where there should be no order as to costs and I so order.
Subject to the court noting the undertaking given by the first respondent and the order in respect of costs I order that the application be dismissed.
I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham. Associate:
Dated: 27 September 2006
Counsel for the Applicant: Mr M V Sahade Solicitor for the Applicant: Comino Prassas Counsel for the First, Second and Third Respondents: Mr R J Ellicott Solicitor for the First, Second and Third Respondents: Harish Prasad & Associates The Fourth Respondent did not appear. Date of Hearing: 21 September 2006 Date of Judgment: 21 September 2006
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