Giftpan Enterprises Pty Ltd v Corporate Affairs Commission
[2010] SADC 78
•15 June 2010
DISTRICT COURT OF SOUTH AUSTRALIA
(District Court Administrative and Disciplinary Division: Appeal Under Business Names Act 1996)
In the Matter of AN APPEAL UNDER S16 OF THE BUSINESS NAMES ACT 1996
GIFTPAN ENTERPRISES PTY LTD v CORPORATE AFFAIRS COMMISSION & ORS
[2010] SADC 78
Judgment of His Honour Judge Cuthbertson
15 June 2010
TRADE AND COMMERCE
Administrative Law - Business Names Act 1996 (SA) - registration of business name - whether "likely to be confused with or mistaken for" an already registered business name.
Business Names Act 1996 (SA) s 8; District Court Act 1991 (SA) s 42E, referred to.
Barrie Drake v Commissioner of Corporate Affairs & Ors [1999] WASC.1049 ; Boughey v The Queen (1986) 161.CLR.10; Woollard and Australian Electoral Commission (2001) 32.AAR.492; Subiaco's Past Players and Officials Association Incorporated and Commissioner for Consumer Protection [2009] WASAT.2; Cardell Insurance Agencies Pty Ltd & Ors v Corporate Affairs Commission [2003] SADC.137, considered.
GIFTPAN ENTERPRISES PTY LTD v CORPORATE AFFAIRS COMMISSION & ORS
[2010] SADC 78
Judge Cuthbertson
Administrative Division
The Proceedings
The Appellant is the owner of the business name “Villa Homewares & Gifts”.
The First Respondent is the body responsible for the day-to-day administration of the Business Names Act 1996 (SA).
The Second Respondent is the owner of the business name “Palmvilla Home & Gifts”.
On the 26th of August the Second Respondent applied for registration of the business name “Palmvilla Home & Gifts” under the Business Names Act.
On 27th of August 2009 the First Respondent approved the registration.
The Appellant, being the owner of the business name “Villa Homewares & Gifts”, complains that the registration should not have been allowed and asserts that the name is likely to be confused with or mistaken for its already registered business name.
On the 15th of October 2009 the Appellant appealed to the Administrative and Disciplinary Division of this Court against the decision of the Office of Consumer and Business Affairs, the First Respondent, granting registration of the business name “Villa Homewares & Gifts”.
The Relevant Legislation
Business Names Act 1996 (SA)
7—Certain business names to be registered
(1)A person must not carry on business in this State under a business name unless—
(a)the business name consists of the name of the person; or
(b)the business name is registered under this Act in relation to that person.
Maximum penalty: $5 000.
Expiation fee: $315.
8—Registration or renewal of registration of business names
(3)On receipt of a sufficient application for registration or renewal of registration, the Commission must—
(a)register or renew the registration of the business name (as the case may require); and
(b)issue a certificate of registration in such form as the Commission considers appropriate.
(4)However, the Commission—
(a)must not, except with the consent of the Minister, register a business name—
(i)that appears to the Commission to be undesirable; or
(ii)that is a name of a kind that the Minister has directed the Commission not to accept for registration;
(b)must not, subject to any directions of the Minister, register a business name that is the same as, or that is, in the Commission's opinion, likely to be confused with or mistaken for—
(i)a registered business name; or
(ii)a business name the registration of which has expired during the preceding two months; or
(iii)the name of a body corporate;
(c)must not register or renew the registration of a business name if the applicant (or one of the applicants) would, because of a conviction for an offence, be prohibited under Part 5 from carrying on business under that name.
The Relevant Legal Principles
The Appellant contends as owner of the already registered business name “Villa Homewares & Gifts” that there is a likelihood that that name will be confused with “Palmvilla Home & Gifts” and that, accordingly, pursuant to s 8(4) of the Business Names Act 1996, the Commission ought not to have registered the business name as it ought to have been of the opinion that the new business name is “likely to be confused with or mistaken for (i) a registered business name “namely Villa Homewares & Gifts.”
Section 16 of the Business Names Act provides as follows:
16—Right of appeal
(1)Subject to this section, a person aggrieved by an act or decision of the Commission under this Act may appeal to the District Court against that decision.
(2)An appeal under this section must be lodged with the District Court within 21 days after the act or decision being appealed against.
The Appellant has appealed to the District Court pursuant to that provision. The appeal is to be dealt with pursuant to the provisions of s 42(E) of the District Court Act 1991.
42E—Conduct of appeal
(1)The Court must, on an appeal, examine the decision of the original decision-maker on the evidence or material before the original decision-maker but the Court may, as it thinks fit, allow further evidence or material to be presented to it.
(2)The Court, on an appeal—
(a)is not bound by the rules of evidence but may inform itself as it thinks fit; and
(b)must act according to equity, good conscience and the substantial merits of the case without regard to technicalities and legal forms.
(3)The Court must, on an appeal, give due weight to the decision being appealed against and the reasons for it and not depart from the decision except for cogent reasons.
The Evidence Before the Court on the Appeal that I accept
The Appellant has two stores under the name of “Villa Homewares & Gifts” and has spent the past fifteen years building the businesses. The businesses are well known and highly respected in the local district. The local district is the Barossa Valley. I can take judicial notice of the fact that the Barossa Valley is a discrete geographical area some 40 km north of Adelaide and that it is a wine growing area with three major towns, Tanunda, Nuriootpa and Angaston.
The Second Respondent sought registration of the business name “Palmvilla Home & Gifts” by application on the internet to a site “Apply Online”, kept by the First Respondent.
The proposed name must be entered into the search field and the program at the site “Apply Online” runs the name through a large number of validation checks and performs various searches against the South Australian Business Names Index and the National Names Index, a database maintained by the Australian Securities and Investment Commission.
The search gives the applicant one of three possible results, “Pass” or “Refer” or “Fail”.
A “Fail” result means that the program considers the proposed business name the same as an already registered business name or body corporate name. It will not permit the applicant to apply for the particular name.
A “Pass” result means that the “Apply Online” program considers the proposed business name open for registration and permits the applicant to proceed to register the name online.
A “Refer” result means that the application needs to be referred to a Client Services Officer. The program advises the applicant that he may proceed with applying for that name but it requires a Client Services Officer to review the application and make a decision about whether the application is to be granted or refused.
The particular application by the Second Respondent gave a “Refer” result.
This meant that a judgment is required as to the registration as the program is not sufficiently sophisticated to make a judgment as to whether the particular name sought to be registered is “likely to be confused with or mistaken for” a registered business name.
The practice of the First Respondent is that upon an email notification being received and giving a “Refer” result, a Client Services Officer is required to log onto the system and look at the results of the search which indicates those names which the computer program has deemed similar to the name “Palmvilla Home & Gifts”.
The Client Services Officer is also required to carry out a manual search on the name and variations of the name on the South Australian Business Names Index.
The system did not permit the identification of the particular Client Services Officer that reviewed the application made by the Second Respondent.
I therefore infer from the approval of the Second Respondent’s application that a Client Services Officer must have reviewed the application and have been of the view that the name “Palmvilla Home & Gifts” was not likely to be confused with or mistaken for an existing registered business name or body corporate name.
Approval for the registration of the name “Palmvilla Home & Gifts” occurred on the 27th of August 2009.
By letters dated the 4th of September 2009 and the 21st of September 2009 the Appellant asked that the permission for registration of the name “Palmvilla Home & Gifts” be reconsidered.
The letter of the 4th of September 2009 complained that:
…another store with a very similar name, in the same proximity, would be intentionally trading on our good reputation, and therefore believe (sic) that the new name registration has been inadvertently and incorrectly assigned.
Apparently the First Respondent did not receive this earlier correspondence.
It would appear that the issue of the registration was reconsidered by the First Respondent and by a letter dated the 6th of October 2009 the supervisor of registration of the First Respondent advised as follows:
I acknowledge the issue stated in your letter, however; I advise that OCBA continues to be of the opinion the business name Palmvilla Home & Gifts was correctly registered and is not likely to be confused with or mistaken for the registered business name Villa Homewares & Gifts.
Case for the Appellant
The case for the Appellant was argued and supplemented by evidence from Dr G Crafter.
The business of Villa Homewares & Gifts is located in Tanunda which is approximately 8 or 9 km from Nuriootpa where Palmvilla Home & Gifts is situated. Dr Crafter points out that both are within the Barossa Valley and as he puts it “…the whole valley is considered to be one.” (See T p10) In support of his application Dr Crafter quoted what he regarded as instances of mistake and confusion. An advertising executive for the local paper approached a representative of the Appellant and said “There’s a new place that is just opening and called Villa something.” (See T p11)
It is also asserted that “lots of other people” in the community said things like “Gee that must be a bit worrying for you having a place opening up with a very similar name like that.” (See T p11)
Of course, I note that the assertions do not necessarily support the case for mistake or confusion because they demonstrate if anything that “lots of other people” were able to discern the difference albeit that they noted a similarity in the name.
When Dr Crafter rang a phone number in the local paper to contact Palmvilla he was put onto a winery. When he said, “I’m sorry, I was looking for Palmvilla Home & Gifts” the person at the other end of the phone said “You mean, Villa Home & Gifts, I’ve got the number here.” (See T p11)
The real issue is not whether other people were confused, although that fact is a consideration.
The question is not one to be determined by reference to evidence of actual confusion or mistake but by reference only to the likelihood of confusion or mistake. This is an objective test. Of course, evidence of actual confusion is a factor to be taken into account but it is not determinative. (See Owen J in Barrie Drake v Commissioner of Corporate Affairs and Ors [1999] WASC 1049)
Dr Crafter makes the point that it would have been prudent to have been able to identify the particular officer who made the decision to permit registration so that that person’s reasoning could be identified and subjected to scrutiny. The mere fact that the computer program indicated a “Refer” status implies that there was a potential problem.
Dr Crafter also complains that the problem becomes more acute where the allegedly similar sounding names are names of businesses being conducted in a small geographical area or a unified geographical and economic entity as the Barossa Valley is. The Appellant submits that I should take into account that the similarities occur in respect of business names of businesses both trading in the Barossa Valley. The Appellant trades in Tanunda. “Palmvilla Home & Gifts” trades in Nuriootpa about 8 or 9 km north of Tanunda on the road from Adelaide. The Appellant makes the point that the three major towns are linked in that people in that residents visit all three towns and conduct their business across all three towns.
In addition to the argument that the respective names are likely to be mistaken the Appellant claims a flaw in the decision making process. The flaw that is complained of is that it is apparent that the First Respondent cannot establish the identity of the person actually making the decision to permit the registration of the business name “Palmvilla Home & Gifts”. Accordingly it is not possible to subject to scrutiny the reasoning process of the particular officer who made the decision that the name was not likely to be mistaken with any other name.
There is a further flaw, in my view. As pointed out by Dr Crafter there is no guarantee that the computer directly compares the postulated name for registration, “Palmvilla Home & Gifts” with the already registered name “Villa Homewares & Gifts”. When an employee of the First Respondent comes, therefore, to deal with the question of similarity of names it is possible he may not have, for comparison purposes, the name “Villa Homewares & Gifts”. If this is the case the employee would not be able to make a direct comparison for the purposes of his decision on whether to permit the registration of the proposed new business name, nor would he be able to consider that the rival names both related to businesses in a tight and small geographic and economic community.
In my view, at the end of the day, it matters not that the decision-making process may have been flawed in a case of this nature. This is because it is possible for me objectively to compare for myself the two names and determine on an objective basis whether there is a likelihood of mistake.
The Second Respondent’s Case
The Second Respondent’s representative, Mr Dunn, told me that the business was named after the family property “Palm Villa” which has borne that name for 97 years. It is a property at Mount Torrens. Mr Dunn asserts that his clients have not shown confusion in the two businesses. He asserts that the only phone call that they incorrectly received was one from Dr Crafter. They sell different items, primarily home ornaments and gifts and that style of thing.
Should the Appeal be Allowed?
I accept all of the above put by both sides in so far as it relates to issues of fact. The Appellant and the Second Respondent were both represented by lay individuals. They often made assertions from the bar table that really should have been the subject of evidence. I will accept and act on these assertions, as well as sworn evidence, as I was of the view that all parties were doing their best to be truthful and I am not bound by the rules of evidence as I am entitled to be informed as I think fit. (See District Court Act s 42E)
The question is whether “Villa Homewares & Gifts” is likely to be confused with, or mistaken for, “Palmvilla Home & Gifts”.
“Likely” in s 8(4)(G) of the Act means, in my opinion, ‘a "real and not remote" -- chance regardless of whether it is less or more than 50 per cent…’ (see Boughey v The Queen (1986) 161 CLR.10 at 21)
This is no more than an exercise in judgement. In my view the name “Palmvilla” is different to the name “Villa”. In my view there is no real danger of confusion or misunderstanding for an average English speaking person. It is true that a description of a business as being “Palmvilla Home & Gifts” might, to a person who is familiar with “Villa Homewares & Gifts” provoke that person to say “Do you mean Villa Homewares & Gifts?”
That does not, however, suggest mistake or confusion. Rather it suggests that a person might understand the difference in the two words and seek clarification.
Further, the names start with different letters and therefore are likely to be at different locations in a telephone directory or other directory based on an alphabetical order. Essentially, the point is that “Villa” is a different word to “Palmvilla”. The words do not sound similar as one has an entirely additional syllable to it.
Although other cases can only be a guide, as each matter is to be determined on its own facts, it is worth noting how other courts and tribunals have dealt with these issues.
In Barrie Drake v Commissioner for Corporate Affairs & Ors [1999] WASC 1049; the Full Court of the Supreme Court of WA considered the issue of whether the name “Drake Engineering” should have been registered given the prior registration of a name “Drakes Engineering Inspection Services” pursuant to the Western Australian equivalent legislation.
In that case the Full Court of Western Australia held that the names were not “so similar that they were likely to cause confusion in the public mind”. (See p4) It should be pointed out that in that case the court relied, in addition, on the fact that the two businesses were totally dissimilar.
In Re Woollard and Australian Electoral Commission (2001) 32.AAR.492 the Administrative Appeals Tribunal constituted by their Honours Justices Gray, French and Nicholson JJ had to consider the question of an application for a review of the refusal to register a political party “liberals for forests” under the Commonwealth Electoral Act (1918).
On appeal, it was held that there was no real risk that the name “liberals for forests” would be confused with or mistaken for the name “Liberal Party of Australia” or the name “Liberal”.
In Subiaco’s Past Players and Officials Association Incorporated and Commissioner for Consumer Protection [2009] WASAT 2 the State Administrative Tribunal of Western Australia had to consider, under the Associations Incorporation Act 1987 (WA) the question of resemblance between the names “Subiaco’s Past Players and Officials Association” and an applicant for registration, “SFC Lions Past Players and Supporter’s Association”.
The Tribunal held in that case that the relevant confusion, as required in order to prevent registration, did not exist.
In Cardell Insurance Agencies Pty Ltd and Ors v Corporate Affairs Commission [2003] SADC 137 this court held that the names “Australian Seniors Insurance Agency” and “Australian Pensioners Insurance Agency Pty Ltd” did not pass the test that they were likely to be confused or create confusion pursuant to s 8 of the Business Names Act.
Of course, in a case of this nature, decisions in other cases can only be a very general guide. They do, however, confirm me in my view that the business name Palmvilla Home & Gifts is not likely to be confused with or mistaken for the name Villa Homewares & Gifts. As I have pointed out both names start with a different word and a different letter. The second word of each name is different as well.
As I am of the view that there is no real likelihood of confusion or mistake I am unable to reach the view that there are cogent reasons to depart from the decision appealed from.
Accordingly, pursuant to s 42(F) of the District Court Act I affirm the decision appealed against.
I will hear the parties as to any ancillary orders.
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