Earthtech Consultants (Qld) Pty Ltd v Earth Tech Engineering Pty Ltd

Earthtech Consultants (Qld) Pty Ltd brought an action against Earth Tech Engineering Pty Ltd in the Federal Court of Australia, seeking an interlocutory injunction to prevent the defendant from using the name “Earth Tech” or any derivative thereof, in relation to their business as a professional engineer. The plaintiff claimed that the defendant’s use of a similar name caused confusion and deception among the public, resulting in passing off. The defendant argued that their name was not misleading and that the plaintiff’s action was an abuse of the court process.

The court was required to determine whether the defendant’s use of the name “Earth Tech” constituted passing off, and if so, whether an interlocutory injunction was warranted. The court considered the three essential elements of passing off: goodwill in the plaintiff’s business, misrepresentation by the defendant, and damage to the plaintiff caused by the misrepresentation. The court also had to consider whether the balance of convenience favoured granting the injunction, and if the defendant’s rights would be adequately protected by an undertaking as to damages.

The court found that the plaintiff had established the first two elements of passing off, with goodwill in their business and a misrepresentation by the defendant. The court considered that the use of a similar name by the defendant was likely to deceive or cause confusion among the public, which would amount to a misrepresentation. The court further found that the plaintiff had demonstrated a real risk of damage to their business if the defendant was not restrained from using the name “Earth Tech”. Regarding the balance of convenience, the court found that the plaintiff’s interest in protecting their goodwill outweighed the defendant’s right to carry on their business under the name “Earth Tech”. The court also considered that the plaintiff’s undertaking as to damages would adequately protect the defendant’s rights.

The court granted the plaintiff’s application for an interlocutory injunction, restraining the defendant from carrying on business as a professional engineer using the name “Earth Tech” or any derivative thereof in Queensland or elsewhere in respect of work to be carried out in Queensland. The court also ordered that the costs of and incidental to this application be reserved, and that the parties bring in a draft order containing procedural directions up to the stage of readiness for trial and in relation to mediation. The court further directed that liberty to apply be granted.