F. Braun & Co (Aust) Pty Ltd v Thomson, J

[1989] FCA 728

1 1 IN THE FEDERAL COURT OF AUSTRALIA

1         QLD G100 of 1989

- GENERAL DIVISION )

BETWEEN: P. BRAUN & CO. (AUSTRALIA) PTY. LTD.

First Applicant

AND: F. BRAUN & CO. (N.S.W.) PTY. LTD.

Second Applicant

AND: WELLA A.G.

Third Applicant

AND: JAMES THOMSON

Respondent

MINUTES OF ORDER

JUDGE MAKING ORDER:	PINCUS J .
DATE OF ORDER:	9 NOVEMBER
WHERE MADE:	BRISBANE
THE COURT ORDERS THAT:

1.    Upon the usual undertaking of the applicants as to damages, that until trial of this action or further earlier order, the respondent be restrained from:

of the business name "Delva" in Queensland;

(a)	selling, distributing, supplying or offering to sell, distribute or supply, or advertising or in any way promoting hair care products bearing the name "Delva";
(b)	alleging or claiming that the respondent has the exclusive right to use the name "Delva" in Queensland or that use of or reference to the name "Delva" by any person infringes the rights of the respondent, except insofar as the respondent may assert he is the proprietor

2.    the costs of and incidental to the application today and on November 3, 1989 be costs in the proceedings;

3.     by consent, any further documents to be served on the respondent be served by pre-paid post addressed to M Thomson at his last known residential address, presently being 12 Aberfeldy Street, Kenmore in the State of Queensland;

4.     the matter be set down for mention on a date to be fixed by the Registrar.

NOTE :  Settlement and entry of orders is dealt with in
Order 36 of the Federal Court Rules.

l

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY	QLD G100 of 1989
GENERAL DIVISION

BETWEEN: F. BRAUN & CO. (AUSTRALIA) PTY. LTD.

First Applicant

AND: F. BRAUN & CO. (N.S.W.) PTY. LTD.

Second Applicant

AND: WELLA A.G.

Third Applicant

AND: JAMES THOMSON

Respondent

PINCUS J . 9 NOVEMBER 1989

EX TEMPORE REASONS FOR JUDGMENT

This application was commenced on 30 October 1989 and by
it, the applicant sought an injunction restraining the respondent

from what was alleged to be misleading or deceptive conduct,

restraining passing off and restraining infringement of a	trade mark.
The matter first came before me on 3 November, when I made an order ex parte against the respondent and since then, he has examined the papers and has come before me today on an application for extension of the injunction.
The respondent, M Thomson, basically raises one point only, although he has some subsidiary points, and that is this: whereas the applicants rely upon registered trade marks, he said that his user of the marks is such as to defeat their rights. The facts which have been mentioned on either side, particularly on Mr Thomson's side and the documents produced, are reasonably extensive, but I think I should come right to the heart of the matter, and that is that the applicants have produced two copy certificates of registration.
One of them is a part A mark in respect of "non-medicated preparations for hair care", including, in class 3 for a period of 7 years from 29 November 1976, the mark "Delva". That has subsequently been transferred twice and is presently, according to the certificate, registered in the name of the third applicant. The second mark, which is evidenced by a copy certificate, is a part B mark in respect of "soaps, perfumery, essential oils, hair lotions and all cosmetic and toilet preparations, inclusive of hair accessories all being goods in this class" included in class number 3 for a period of 7 years
transferee is, again, the third applicant. from 19 May 1971. The mark is "Delva", and the registered
The substantial point taken, as I underetand Mr Thomson's argument, is that he is entitled to use the name of "Delvan in respect of products covered by these registered trade marks, because of the provisions of s.64(1) of the Trade Marks Act 1955. I had thought that MC Thomson might rely upon s.64(l)(c), but he seemed to rely also, or perhaps solely, upon s.64(l)(a).

Those two provisions are as follows:

"64. (1)	Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of a trade mark:
(a) the use in good faith by a person of his own name or the name of his place of business or the name, or the name of the place of business, of any of his predecessors in business;
(C) the use by a person of a trade mark in relation to goods or services in relation to which that person has, by himself or his predecessors in business, continuously used the trade mark from a date before -

(i)    the use of the registered trade mark by a registered proprietor, by his predecessors in business or by a registered user of the trade mark; or

(ii)      registration of the trade mark,

whichever is the earlier."

Now, as to s.64(l)(a), Mr Thomsonrs argument is that he has a business in Aberfeldy Street, Itenmore, and he has the business name, including "Delva", registered. Therefore the name of his place of business is or includes the name 'Delva". In my

opinion, that does not seem to be correct as a matter of law, as

the "4711" case illustrates.

The critical question is whether one has the name of a place, not the name of a business, and it is clear that "Delva" is not the name of a place.

Insofar as Mr Thomson relies on s.64(l)(c), he seems to have advanced two arguments. First of all, he says that he continuously used the trade marks in question from a date before the use by the registered proprietor or the predecessors in business. Secondly, he says that there is another mark prior to these which is within s.64(l)(c).

As to the former point, it is perhaps unfortunate, but the fact is, as I see it, clear that prima facie the use has not been continuous since either of the dates mentioned in s.64(l)(c). The details need not be recounted, but it should be mentioned that, as to one gap, the financial gap, the respondent Mr Thomson says that the cause was a bankruptcy proceeding. In my view, s.64(l)(c), when it uses the expression "continuously", does not contain any implicit exception in favour of gaps, and here we have a substantial gap, undoubtedly, due to insolvency.

As to the second point raised by fir Thomson under s.64(l)(c), it is my opinion that the rights that the third applicant has under the other trade mark which fir Thomson referred to have nothing to do with this case. It has not put forward

about these marks is that there is provision in the statute	rights under that mark. The other thing which should be said
permitting the Court to remove trade marks, and one of the grounds upon which removal can be done, as the authorities show (and the most common ground, I think) is that the mark is not one which complies with 6.28. I have given some consideration to this, because it is not perfectly obvious on the face of 6.28 that it is a provision which governs the process of removal, but the authorities make it clear that it does. On the face of it, s.28 only seems to be concerned with initial registration. I feel obliged to say that, on a thorough investigation of the matter, it would be necessary, if Mr Thompson were represented by lawyers, for them to consider whether or not there is any basis for removal under 6.28. The difficulties in relation to that, however, may be compounded by the time limits in 66.60 and 61.
However, although Mr Thompson was not represented, I am in general confined to the points which he raises, and any others which are obvious or have been drawn to my attention by Mr Cooper, who has argued the case helpfully in the sense that he has mentioned matters that he thought would be necessary for me to consider on either side. Prima facie, the case which the respondent makes under 6.64 seems to me to be weak, and he does not rely upon any other specific provisions in the Trade Marks Act.
At this stage, I am concerned only with the matter of whether or not there is a serious question to be tried, and there plainly is on 6.64. Insofar as I am concerned with the strength
of that case, which can, on the authorities, affect the exercise
of discretion, it is relevant that the applicantst case under 6.64 has considerable strength.
The other matter which was raised by fir Thomson was that he has a registered business name which he says gives him the right to use the name of "Delva", or at least he seems to me to imply that. I have found nothing in the relevant legislation which supports that contention. It appears to me that there is a common misconception that such registration entitles one legally to use a name. In fact, it does not. It is clear that, for example, use of the name which is not made unlawful by the Business Names Act, may be unlawful for other reasons, such as the general law of passing off, the Trade Practices Act 1974 and its analogues in the state sphere, and the Trade Marks Act.
This misapprehension, for such I believe it to be, may have spread to Mr Thomson but, however that may be, it is my opinion that there is nothing in the point that Mr Thomson has a certain registration under the Business Names Act; that could not defeat the rights of the applicants under the Trade Marks legislation.
Mr Thomson has also supplied me with a quantity of material which seems, speaking generally, to show a long user by him. The user seems to be in two respects. One is the user as a seller of products produced by or with the authority of the owner of the trade mark, and I do not see how that can assist him. The other is the user of products of his own. As to the latter, that
could assist him under s.64(l)(c) if he had the necessary continuous use, which he does not, prima facie, have.
Mr Thomson's papers which he has provided to me also include papers relating to litigation in relation to a similar dispute in the Supreme Court of Queensland. Ultimately, those proceedings seem to have terminated in an interlocutory application made to W.B. Campbell J. The evidence which Mr
Thomson gave included an assertion that he had @on that case. The difficulties about that assertion are, firstly, that on the face of the order made he did not and, secondly, the proceedings before W.B. Campbell J. were, in any event, interlocutory and could not raise any estoppel.
The consequence is that the applicants have a eubstantial case based upon infringement of the trade marks and prima facie should be entitled to interlocutory relief.
The order which I made on 3 November was not as extensive as that which was asked for. I made an order that:

"1. Upon the usual undertaking of the Applicants as to damages, that until 4.15 p.m. on Thursday, November 9, 1989 or further order the Respondent be restrained from:-

(a) Selling, distributing, supplying or

offering to sell, distribute or supply or advertising or in any way promoting goods bearing the name 'Delva';

(b)	Alleging or claiming that the Respondent has the exclusive right to use the name 'Delvat in Queensland or that use of or reference to the name 'Delva' by any person infringes the rights of the Respondent;
(C) That the Applicants may in the first instance give notice of this Order by telephone but shall serve a COPY forthwith;

(d) Costs reserved. ''

The submissions which have been made to me by Mr Cooper in respect of (b), that is the allegation or claim that Mr Thomson has the exclusive right to use the name, included the assertion

that the allegation or claim might be misleading or deceptive conduct. It appears to me prima facie that would be so. However, it has occurred to me that the wording of (b) may need some narrowing.

The allegation that the use of or reference to the name "Delva" infringes the rights of the respondents may have some kind of or show of truth if it be the case, for example, that Mr Thomson is the only one entitled to carry on business under the business name "Delva" in Queensland. That could be so only in a loose sense because, as I have said, I do not read the Business Names Act as conferring rights to use names. Nevertheless, it would seem to me desirable to effect some rephrasing of (b) and I will hear Mr Cooper on that.

I do not want to have (b) even loosely read as saying anything about Mr Thomson's right, so-called, to use the name "Delva" under the Business Names Act. It seems to me (b) might usefully discriminate between using it as the name of a business and using it as the name of a product and be confined to the latter sort of use.

Upon the applicants giving usual undertakings as to

damages, it will be ordered that until trial of this action or

further earlier order the respondent be restrained from -

(a)	selling, distributing, supplying or offering to sell,
distribute or supply, or advertising in any way promoting hair care products bearing the name "Delva";
(b)	alleging or claiming that the respondentlhas the exclusive

right to use the name "Delva" in Queensland or that use of or reference to the name "Delva" by any person infringes the rights of the respondent, except insofar as the respondent may assert that he is the registered proprietor of the business name "Delva" in Queensland.

It will also be ordered that the costs of and incidental to the application today and the application made on 3 November

1989 will be costs in the proceedings.

By consent, I also order that any further documents to be served upon the respondent in these proceedings may be served by pre-paid post addressed to H Thomson at his last known residential address presently being 12 Abberfeldy Street, Kenmore.

Unless either side wants a mention date, I will simply order that the matter be set down for mention on a date to be fixed by the registrar.

I certify that this and the eight

preceding pages are a true copy of the

reasons for judgment herein of His Honour

Hr. Justice Pincus.

Associate

Dated Y 4"Mk /ff J