Essential Media Communications Pty Ltd v Emc2 & Partners - [2002] VSC 554

IN THE SUPREME COURT OF VICTORIA

Not Restricted

AT MELBOURNE

COMMERCIAL AND EQUITY DIVISION

No. 7959 of 2002

ESSENTIAL MEDIA COMMUNICATIONS PTY LTD	Plaintiff
v
EMC2 & PARTNERS AND EDWARD MCDONNELL	Defendants

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JUDGE:	WILLIAMS J.
WHERE HELD:	MELBOURNE
DATE OF HEARING:	19, 20, 21 November 2002
DATE OF JUDGMENT:	10 December 2002
CASE MAY BE CITED AS:	Essential Media Communications Pty Ltd v EMC2 & Partners
MEDIUM NEUTRAL CITATION:	[2002] VSC 554

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TRADE AND COMMERCE – Misleading or deceptive conduct – Passing off – Whether use of acronym constituted misleading or deceptive conduct – S. 9 Fair Trading Act 1999 (Vic) – Interlocutory injunction – Balance of convenience.

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APPEARANCES:	Counsel	Solicitors
For the Plaintiff	Mr M. Bevan-John	Russell Kennedy
For the Defendants	Mr J. Williams	O'Neill Behan & Associates

HER HONOUR:

By a writ filed on 30 October 2002 the plaintiff claimed interlocutory and permanent injunctions restraining each of the defendants from using the names "EMC" or "EMC2" or "EMC2+partners" in connection with their business as a provider of public relations and media communications advisory services. The Indorsement of Claim on the writ alleged misleading and deceptive conduct and the making of false representations by the defendants, in breach of ss 11 and 12 of the Fair Trading Act1985 (Vic) and passing off. The plaintiff also claimed damages and other relief under the Fair Trading Act. (I note that counsel for the plaintiff indicated that the Indorsement of Claim would be replaced by an amended document referring to the relevant provisions of the Fair Trading Act 1999 (Vic)).

By a summons also dated 30 October 2002 the plaintiff sought an interim or interlocutory injunction restraining each of the defendants from using the name "EMC" or "EMC2" in connection with its business in Victoria.

The plaintiff alleged that, since 1996, it had become known by the name "EMC" ("the acronym"), and, since 1998, by a logo used in its stationery and advertising material containing the acronym ("the logo"). It further alleged that the defendants had refused its demand to stop using the names "EMC2" and "EMC2+partners" in connection with their business, thereby having engaged in, and continuing to engage in, conduct which was, and is, misleading or deceptive or likely to mislead or deceive or having passed off their business as that of or one associated with that of the plaintiff.

The second defendant had registered the first defendant's name at Melbourne under the Business Names Act 1962 (Vic) on 9 October 2002. The business name "EMC Essential Media Communications" was registered by the plaintiff on 10 October 2002, the following day.

Grant of an Interlocutory Injunction

The Court has power to grant an interlocutory injunction if it is just and convenient to do so under s 37(1) of the Supreme Court Act 1986 (Vic). Injunctions are to be granted in accordance with equitable principles. The issues are as to whether:

(a)there is a serious question to be tried; and
(b)the balance of convenience favours…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2002] VSC 554
Decision Date: 10 December 2002

CaseChat Overview and Summary

Essential Media Communications Pty Ltd, a company engaged in the provision of media services, brought an action against Emc2 & Partners, a company operating in the same industry, for alleged misleading or deceptive conduct. The dispute centred on Emc2 & Partners' use of the acronym "EMC" in their business name, which Essential Media argued constituted passing off and was misleading or deceptive under section 9 of the Fair Trading Act 1999 (Vic). Essential Media sought an interlocutory injunction to prevent Emc2 & Partners from continuing to use the acronym "EMC". The court was required to determine whether Emc2 & Partners' use of the acronym constituted misleading or deceptive conduct, and if so, whether an interlocutory injunction should be granted based on the balance of convenience.

The court considered the distinctiveness of the acronym "EMC" and whether it was likely to cause confusion among consumers. It was noted that the acronym was not a unique or proprietary identifier for Essential Media, and that it was a common abbreviation in the media industry. The court also examined the reputation and goodwill of Essential Media, and whether Emc2 & Partners' use of the acronym was likely to cause damage to Essential Media's business. The court found that while there was some risk of confusion, it was not significant enough to warrant an interlocutory injunction. The balance of convenience was also considered, with the court finding that the potential harm to Emc2 & Partners outweighed any potential harm to Essential Media.

The court determined that Emc2 & Partners' use of the acronym "EMC" did not constitute misleading or deceptive conduct, and that an interlocutory injunction was not appropriate. The court held that the acronym was a common and generic term in the industry, and that consumers were unlikely to be confused by its use. The court also found that Essential Media had not established a sufficient reputation or goodwill in the acronym "EMC" to warrant protection. As a result, the interlocutory injunction was refused.

No final orders have been made in this case, as it was an interlocutory decision. The matter is likely to proceed to a final hearing to determine the merits of Essential Media's claim for damages.

Orders