Gollel Holdings Pty Ltd v Kenneth Maurer Funerals Pty Ltd

Re: GOLLEL HOLDINGS PTY. LTD. and ALLEN MATTHEWS PTY. LTD.
And: KENNETH MAURER FUNERALS PTY. LTD. and KENNETH MAURER & BRUCE MAURER
No. G202 of 1987
Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Einfeld J.(1)

CATCHWORDS

Trade Practices - Misleading and deceptive conduct - Application for interlocutory injunction - Balance of convenience - Right of person to use own name - Whether delay by the plaintiffs disentitles them to statutory injunction - Other discretionary considerations.

Trade Practices Act 1974 ss. 52, 80

HEARING

SYDNEY

#DATE 27:5:1987

Counsel and solicitors for the applicants: Mr. N. Cotman instructed by Gordon & Johnstone

Counsel and solicitors for the respondents: Mr. D. Russell instructed by McCaw Johnson

ORDER

That pending final determination or until further order the respondents and each of them be restrained from authorising, requesting or ordering the inclusion in the next edition of the Sydney White Pages (Telephone Directory) of the entries in the Schedule hereto.

That pending final determination or until further order the respondents forthwith request Telecom to delete the said entries from and not to include them in the next edition of the Sydney White Pages (Telephone Directory).

That pending final determination or until further order the respondents and each of them be restrained from replacing the said entries with entries in the next edition of the Sydney White Pages (Telephone Directory) under the name of Bruce Maurer promoting or advertising or designed to promote or advertise the funeral direction services of the first respondent.

That the respondents pay the applicants' costs of this application for interlocutory relief.

That the parties produce to a directions hearing before me at 9.30 am on Friday, 29 May 1987, their proposed timetable for the remaining interlocutory steps in the proceedings for final relief.

SCHEDULE OMITTED (REFER TO HARD COPY)

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

JUDGE1

In or about 1940, Mr. Bruce Maurer commenced to operate in the business of a funeral director on the lower north shore of the Sydney metropolitan area. It appears that he carried on business in that capacity until about 1965 when he went bankrupt. The trustee in his bankruptcy then incorporated a company called Bruce Maurer Pty. Limited to purchase Mr. Maurer's funeral business, including its goodwill and its business name B. Maurer Funerals ("the business name"). One of the second respondents, Mr. Bruce Maurer, remained an employee of that company until 1976 when he became an employee and a co-director with his son, Kenneth Maurer the other second respondent, in a company called Kenneth Maurer Pty. Limited, the first respondent. This company also conducted a business of funeral directors and has remained in that business in North Sydney from 1976 to the present time.

The trustee in bankruptcy apparently continued to operate Bruce Maurer Pty. Limited until 11 November 1981 when a company called Searls Funeral Services Pty. Limited ("Searls") purchased its assets and goodwill, including the business name. It appears that Searls then sold some assets to the applicants, including the business name which was first registered in the name of the applicants on 21 June 1984. The applicants have continued to conduct the same business ever since, the only other relevant facts being that

(a) the ownership of the applicant companies appears to have changed in the second half of 1986;

(b) the company Bruce Maurer Pty. Limited appears to have disappeared from the scene altogether and may now be nothing more than a shell;

(c) the applicants are also the registered owners of other business names, including B. Maurer (Crows Nest) Funerals, Bruce Maurer Funerals and Bruce Maurer (All Hours) Funerals ("the other names") - although the telephone directories since 1976 may not always have been entirely in tandem with all the business name registrations in force at the relevant time.

The evidence discloses that by the time the applicants purchased the business name and registered the other names, Mr. Bruce Maurer himself had been a full-time or part-time employee of the first respondent for some eight years. In recent times he has been at best a part-time employee and since falling into some ill health, his actual contact with the business has diminished considerably. My impression is that it is now negligible. Indeed, in his tax return for the year ended 30 June 1986, he gave a postal address at Wingham in northern NSW and described his occupation as "Funeral Director/Retired".
The applicants continue to offer their services as funeral directors to the public under the name of Bruce Maurer Funerals from premises at Pacific Highway Crows Nest, whereas the first respondent offers its services from a nearby address in Miller Street North Sydney. This application for interlocutory injunctive relief by the applicants in substance seeks to prevent the first respondent from holding itself out in the next edition of the Sydney White Pages (Telephone Directory) as offering the services of Mr. Bruce Maurer as a funeral director because, so it is alleged, such advertising amounts to misleading or deceptive conduct in contravention of section 52(1) of the Trade Practices Act ("the Act"). An urgent hearing of this application was granted so that the matter could be determined before entries for the next edition of the white pages close on Friday, 22 May 1987.
The white pages directory is not the only place where the respondents advertise their funeral direction services. There are in evidence examples of their advertising of their services in several recent editions of the Yellow Pages (Classified Telephone Directory), as well as in the Catholic Weekly, and there is evidence of other quite extensive advertising in newspapers and public places, especially in suburbs north of Sydney Harbour. Although at one time I entertained with the parties the possibility that this interlocutory application might be treated as a final hearing, this did not eventuate in view of the imminent deadline for the white pages and because the entries in the telephone directory differ in many respects from this other advertising. I therefore direct no attention at all to any other advertising other than that proposed to be included in the next edition of white pages.
To what appears likely to be the considerable financial benefit of Telecom, the respondents have in recent years filled the white pages of the telephone book with a veritable avalanche of entries. The form and number of entries contained in the current edition, which are said to be the form in which the same entries would appear in the next directory, followed upon the offer by Telecom about three years ago of large bold type entries where required by the customer. The applicants' claim that these entries represent misleading and deceptive conduct under the Act is said to entitle them, pursuant to section 80 of the Act, to injunctive relief to prevent this misleading advertising from continuing.
Leave to serve short notice of this application having been granted, the matter came on for hearing on the afternoon of 18 May 1987, was continued for a short time on 20 May and concluded on 21 May. Although the facts are within relatively short compass, the legal principles involved are not nearly as simple. Ordinarily, I should have preferred to consider my decision at more leisure, but the exigencies of time make it essential that I give judgment immediately. For that reason, I will limit this judgment only to the matters apparently essential for the resolution of the application for interlocutory injunctions.
According to the applicants, the evidence demonstrates that the respondents have inserted in the current white pages no less than six entries of Mr. Bruce Maurer's presence and availability at the same address in North Sydney as that at which the first respondent conducts its business. In contrast with his minimal actual role, the applicants say that all but one of these entries hold out Mr. Bruce Maurer as a funeral director or as a significant figure in the business of his son's funeral direction business.
Under the letter "M" (page 231 of Volume 2 (L-Z)) the first entry of any funeral direction services in the name of Maurer appears in very bold type as: MAURER BRUCE. That entry also contains in bold but smaller type the name "KENNETH MAURER FUNERALS PTY LIMITED" followed by the words in bold type of the same size ("ALL HOURS"). The address is given as "263 Miller Street North Sydney" and the telephone numbers, which appear also in bold type, are given as "92 1510 and 920 5813". In block but not bold type, there appears underneath the expression "(ALL HOURS)", the words "MAURER AND SON BRUCE AND KEN MAURER PERSONALLY". From the words "MAURER BRUCE" down to "BRUCE AND KEN MAURER PERSONALLY", there is a bracket indicating that all of these people, services and facilities are available at the two telephone numbers quoted. There then appears the word "Directors", followed by the names of "Bruce Maurer" first and "Ken Maurer" second, allocating to each man one of the two telephone numbers to which I have earlier adverted.
That entry is contained between two thick black lines. Underneath the second of the two lines, there is an entry (in the ordinary form of most other entries in the telephone book) "Maurer Bruce" at the same address, this time offering for Mr. Bruce Maurer the telephone number allocated to Mr. Kenneth Maurer in the first entry. There is no such separate entry for Mr. Kenneth Maurer.
The next entry is "MAURER BRUCE (ALL HOURS)" in large bold block type with the same address at North Sydney and the same two telephone numbers. A bracket extends around this entry indicating that the whole of the services of Mr. Bruce Maurer may be obtained at either of those two numbers at all hours of the day and night. In answer to my query as to what is meant by this rather strange entry, counsel for the respondents advised with commendable but revealing frankness that this was intended to convey to the public that Mr. Bruce Maurer is a funeral director and that he is available as such at all hours. The evidence shows that all the Bruce Maurer entries are paid for by the first respondent and that the entries are in the telephone directory in this form with the express consent and approval of both second respondents.
The next entry in the telephone book is the applicants' business "MAURER BRUCE FUNERALS". That entry is in the same size block capitals as the Bruce Maurer entries inserted by the first respondent, and carries the additional words "(ALL HOURS)" in block but smaller capitals and the address and telephone number of that business at Pacific Highway, Crows Nest.
About a third of a column later, there appear two other relevant entries. The first is "MAURER KENNETH" in the same size block capitals as two of the previous three advertisements of the respondents and the one advertisement of the applicants. Underneath this heading appear the words in brackets and in block capitals, though a smaller size, "KENNETH MAURER FUNERALS PTY LIMITED" under which appears the words "(ALL HOURS) FUNERAL DIRECTORS" (slightly abbreviated) with the same North Sydney address previously included in the respondents' advertisement of Mr. Bruce Maurer's services. This entry is fully bracketed as being available on the same two telephone numbers as appeared for Mr. Bruce Maurer earlier in block print. That entry is enclosed by thick black lines under the lower of which is an entry in smaller block capitals "MAURER KENNETH FUNERALS PTY LIMITED FUNERAL DIRECTORS" with the same address at North Sydney as before, bracketed together to indicate availability at the same telephone numbers. There follows the word "Directors" under which appear the names of "Bruce Maurer" and "Ken Maurer" on separate lines with the same two telephone numbers as have appeared in the other advertisements, but this time in the reverse order than when they first appeared in the advertisement of Mr. Bruce Maurer's services.
In furtherance of this fascinating exercise, the entries under "B" (page 369 of Volume I (A-K)) of the current white pages contain the following:

1. In smaller block capitals: "BRUCE MAURER (ALL HOURS)" under which appears "(KENNETH MAURER FUNERALS PTY LIMITED)" with the Miller Street address and the two previously identified telephone numbers in plain print.

2. This is followed by the two names "Bruce Maurer (Director)" with the telephone number 92 1510 and "Ken Maurer (Director)" with the telephone number 920 5813. In case in their desperate perambulation through the telephone directory for funeral direction services, readers had not managed to ascertain by this stage that the services of the second respondents were available at those numbers, there has then been added the entry "If unanswered, call" with the same two telephone numbers bracketed together. What the hapless customers do when, as is patently inevitable, lack of response follows such fallback resort to the same numbers, is not indicated.

3. There then follows the applicants' entry, enclosed within thick black lines, "BRUCE MAURER FUNERALS" in large block capitals, under which appears in small block capitals "(ALL HOURS)" with the Crows Nest address and the appropriate telephone number.

The respondents presented evidence, for the purpose of the interlocutory proceedings, that at the time Mr. Bruce became employed by the company Bruce Maurer Pty. Limited being operated by the trustee of his bankrupt estate and under the name of Bruce Maurer Funerals, he convenanted with that company not to carry on the business of a funeral director within the County of Cumberland for a period of ten years after ceasing to work for the company. In consideration of that convenant, he is said to have been paid the sum of 10,000 pounds, which he received in the form of 20,000 shares of 10 shillings each in the company. If accepted, it would also establish that during the period in which he was a shareholder, he received a 17% dividend each year on those shares in addition to other rewards. When he resigned in 1976, allegedly, for reasons of ill health, it is said that with the assistance of the board members of the company he sold his shares to the existing shareholders for the sum of $40,000.
The respondents also produced evidence which reveals that this titanic "Battle for the Telephone Book" is not of recent origin. The 1976 white pages had three relevant entries, all in block capitals:

1. "MAURER BRUCE (ALL HOURS)" with an address and telephone number at Pymble, apparently the then residence of Mr. Bruce Maurer.

3. There then follows the applicants' entry, enclosed within thick black lines, "BRUCE MAURER FUNERALS" in large block capitals, under which appears in small block capitals "(ALL HOURS)" with the Crows Nest address and the appropriate telephone number.

The respondent presented evidence, for the purpose of the interlocutory proceedings, that at the time Mr. Bruce Maurer became employed by the company Bruce Maurer Pty. Limited being operated by the trustee of his bankrupt estate and under the name of Bruce Maurer Funerals, he covenanted with that company not to carry on the business of a funeral director within the County of Cumberland for a period of ten years after ceasing to work for the company. In consideration of that covenant, he is said to have been paid the sum of 10,000 pounds, which he received in the form of 20,000 shares of 10 shillings each in the company. If accepted, it would also establish that during the period in which he was a shareholder, he received a 17% dividend each year on those shares in addition to other rewards. When he resigned in 1976, allegedly, for reasons of ill health, it is said that with the assistance of the board members of the company he sold his shares to the existing shareholders for the sum of $40,000.
The respondents also produced evidence which reveals that this titanic "Battle for the Telephone Book" is not of recent origin. The 1976 white pages had three relevant entries, all in block capitals:

1. "MAURER BRUCE (ALL HOURS)" with an address and telephone number at Pymble, apparently the then residence of Mr. Bruce Maurer.

2. "MAURER BRUCE PTY LIMITED" at the same Pacific Highway Crows Nest address and with the same telephone number as the applicants' enterprise still has.

3. "MAURER KENNETH FUNERAL DIRECTOR" (slightly abbreviated) with an address at Epping.

The 1977 directory considerably expands Telecom's rise to riches as a result of this dispute because it contains five relevant entries, using the largest block capitals which Telecom was then able to offer its clients:

1. "Maurer BRUCE (All Hours)" - the only block capitals here being for the word "Bruce" - at the Pymble address and telephone number where Mr. Bruce Maurer is said then to have resided.

2. "MAURER BRUCE" in block capitals, followed by "(Kenneth Maurer Funerals Pty. Limited)" in ordinary letters, followed by "(ALL HOURS)" in block capitals at the Pymble address and telephone number. Under this expression there appeared the words "If unanswered call" with one of the telephone numbers which still attaches to the Miller Street North Sydney address.

3. "MAURER BRUCE FUNERALS" in block capitals with the Crows Nest address and telephone number containing the additional entry "After hours" and the same telephone number.

4. "MAURER BRUCE PTY LIMITED Funeral Directors" (slightly abbreviated) with the Crows Nest address and the same telephone number, and the additional entry "After hours - (Res)" with the same telephone number.

5. "MAURER KENNETH" in block capitals, followed by "(Kenneth Maurer Funerals Pty. Limited)" in ordinary letters, followed by "FUNERAL DIRECTOR (ALL HOURS)" in block capitals at the same North Sydney address and telephone number as at present.

6. "MAURER KENNETH FUNERALS PTY LIMITED FUNERAL DIRECTORS (ALL HOURS)" all in block capitals at the same North Sydney address and with the same telephone number.

In true saga tradition, the story continues. There were further variations in the 1978 and 1979 directories, apprently designed to jockey for the first alphabetically ordered use of the name Bruce Maurer. There have been no relevant variations from 1980 to the present.

The evidence also discloses that the respondent Bruce Maurer has an entry in the telephone book applicable to the area involving Taree, Port Macquarie, Kempsey and Lord Howe Island, where he is stated to be a farmer at Killabakh Creek. The applicants submit that this is evidence of the fact that Mr. Bruce Maurer is not bona fide or genuinely involved in the business of his son at all and that the company is quite falsely using his name to attract the business and goodwill which it is said he has built up over a period of forty years or more in the funeral direction business.
There is also evidence that a telephone call from the applicants' marketing manager, Mr. Gatenby, on 5 May 1987 to one of the numbers attached to Mr. Bruce Maurer's name in the telephone book, extracted the answer that Mr. Maurer was not there at the time and that the telephonist did not know when they were "expecting him down next". She apparently offered Mr. Ken Maurer in substitution for his absent father.
I am satisfied prima facie that Mr. Bruce Maurer is not a farmer by occupation/employment or engaged in a relevant farming enterprise to the exclusion of his availability for other work. I am also satisfied that he is and has for many years been well known in the funeral industry and to the public at large as a funeral director. For the purposes at any rate of these interlocutory proceedings, I accept his evidence that perhaps 5% of his son's business may be attributed to the fact that he is shown as being associated with it, and that perhaps a third of all business in funeral direction comes from what is somewhat quizzically called "repeat business". As "repeat business" must presumably embrace on occasions the passage of many years, I accept that a long history in this business might be helpful, if not essential, to the development of considerable goodwill.

However, because on the present evidence Mr. Bruce Maurer appears to live a partially and voluntarily nomadic existence sleeping wherever conveniently takes his fancy from time to time, I do not think that it can legitimately be said that he resides at Miller Street North Sydney in the ordinary sense. In that context, his availability at all hours appears more to depend upon the capacity of the person answering the telephone numbers there to contact him if necessary to secure the business in prospect for the first respondent, or preferably, to redirect callers to his son.
This, however, does not particularly operate to the disadvantage of the truth or otherwise of the advertising in the telephone directory. There are today many enterprises which advertise their services 24 hours a day, when in fact all that is received on the telephone at unsocial or non business hours is a machine which promises an early response by the party being sought and permits the recording of the caller's interest. The general public in 1987 would not, I think, interpret an advertisement offering a personal enterprise as available at all hours of the day and night as meaning that the person is sitting by the phone personally, waiting for calls 24 hours a day seven days a week. Moreover, the ordinary entries of most normal citizens in the telephone directory which do not limit or define their availability at the number in question, might indicate that the persons can be contacted at that number either at all times or at most times, without any further definition of their availability. If it is a business address or an obvious indication of a place other than the home of the person, the general public might well assume that the most likely times at which the person could be contacted at that number is in business hours. If it is an apparently private address, the generl public might assume that the best time to speak to the person concerned is after or before working hours or at weekends.
The basic prima facie facts in this matter were not in dispute at the interlocutory hearing. The first respondent is a corporation engaged in trade or commerce. All the entries in the telephone book under scrutiny are part of and seek to advance its commercial enterprise. There therefore appear to be four questions that need to be determined:

1. Is the advertising by the respondent on pages 231 of the second volume and 361 of the first volume of the current telephone directory misleading or deceptive (or likely to mislead or deceive within the meaning of section 52 of the Act?

2. If so, have the applicants made out a ground for interlocutory relief in relation to the next edition of the telephone directory?

3. What is the effect of the circumstances that advertising similar to the current entries has been taking place in one form or another for the last eleven years?

4. Are there any other considerations of a discretionary character which are relevant to the determination of this application?

MISLEADING OR DECEPTIVE CONDUCT

In Beecham Group Limited v. Bristol Laboratories Pty. Limited (1968) 118 CLR 618, the High Court said that a Court when contemplating the grant or refusal of interlocutory relief should direct itself to both the prima facie strength of the plaintiff's claim and the balance of convenience. The High Court said at 622 that 'prima facie' was here meant "in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief". In World Series Cricket Pty. Limited v. Parish (1977) 16 ALR 181 at 189, the learned Chief Judge of this Court, while counselling that at the interlocutory stage, it is "inadvisable to express detailed or concluded views on the evidence relating to the issues in dispute", qualified or explained the High Court's exposition by observing that "the strength of the case which the plaintiff must make out will depend upon the nature of the right which he is seeking to assert and the consequences which will flow from the making of the interlocutory order." His Honour went on (at 186):

" . . . if the plaintiff has a fair chance of success (and what will be required will vary according to the nature of the case), the court will proceed to look to the balance of convenience."

With these caveats, I must consider this first question in the light of the meaning of the words in section 52(1):

" . . . conduct that is misleading or deceptive or is likely to mislead or deceive."

In Parkdale Custom Built Furniture Pty. Limited ats Puxu Pty. Limited (1981-2) 149 CLR 191 at 198, Gibbs C.J. said:

"The words of s.52 require the Court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive. Those words are on any view tautologous. One meaning which the words "mislead" and "deceive" share in common is "to lead into error". If the word "deceptive" in s. 52 stood alone, it would be a question whether it was used in a bad sense, with a connotation of craft or overreaching, but "misleading" carries no such flavour, and the use of that word appears to render "deceptive" redundant. The words "likely to mislead or deceive", which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone."

The former Chief Justice went on to say that the persons to be considered as the objects of the misleading advertising against whose reactions the advertising should be viewed are "reasonable members of the class" of consumers likely to be affected by the conduct. In the nature of the funeral direction business, it seems to me that these consumers will normally be the general public who are about to or suddenly find themselves faced with the death of someone dear to them. Gibbs C.J. continued:

"The conduct of a defendant must be viewed as a whole. It would be wrong to select some words or act, which, alone, would be likely to mislead if those words or acts, when viewed in their context, were not capable of misleading. It is obvious that where the conduct complained of consists of words it would not be right to select some words only and to ignore others which provided the context which gave meaning to the

particular words."

Mr. Justice Mason at page 204 described the object of Part V of the Act in which section 52 appears as being "to protect the consumer by eliminating unfair trade practices". To his Honour the words "misleading" and "deceptive" as applied to conduct in trade and commerce are "reasonably plain". Mason J. (as his Honour then was) was of the view that section 52 is intended to prohibit "the trader from engaging in misleading or deceptive conduct, even if it means that one trader cannot in particular cases compete with another trader . . .".
In section 52 cases which involve the use of similar names, as in the present case, Hornsby Building Information Centre Pty. Limited ats. Sydney Building Information Centre Limited (1977- 78) 140 CLR 216 provides guidance to the general approach to be adopted. In Taco Company of Australia Inc. & Anor v. Taco Bell Pty. Limited & Ors. (1982) 42 ALR 177 at 201, Deane and Fitzgerald JJ. quoted with approval the observations of Stephen J. in Hornsby Centre at 228 that it is "of particular importance (in such cases) to identify the respect in which there is said to be any misleading or deception" and that "to determine whether there has been any contravention of section 52(1) it is necessary to enquire why . . . misconception has arisen". Their Honours also approved the remarks of Mr. Justice Brennan in World Series Cricket (supra) that "a statement which conveys no meaning but the truth cannot mislead or deceive or falsely represent; although a statement which is literally true may nevertheless convey another meaning which is untrue and be proscribed accordingly." (See also Hornsby Centre at 227-8.)
Deane and Fitzgerald JJ. in Taco proceeded as follows (at 202):

"Irrespective of whether conduct produces or is likely to produce confusion or misconception, it cannot, for the purposes of s.52, be categorized as misleading or deceptive unless it contains or conveys, in all the circumstances of the case, a misrepresentation. The difficulty which will commonly arise in a s.52 case is in determining whether the conduct contains or conveys, in all the circumstances, a misrepresentation and in assessing the significance to that question of evidence that one or more persons were in fact led into error. In extreme, but not necessarily infrequent, cases, it may be correct to hold that, as a matter of law, conduct said to contravene s.52 is incapable of conveying the untrue meaning alleged or any other false meaning. Such cases aside, whether or not conduct amounts to a misrepresentation is a question of fact to be decided by considering what is said and done against the background of all surrounding circumstances."

After dealing with the tests to be used in relation to the identification of the relevant persons at whom the conduct was directed and the standard which ought to be attributed to them in judging the conduct under consideration, Deane and Fitzgerald JJ went on to say at line 42:

" . . . evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself conclusively establish that conduct is misleading or deceptive or likely to mislead or deceive. The Court must determine that question for itself. The test is objective . . ."

In taking up the unjunction in Hornsby Centre that the reason why the proven misconception has arisen is relevant, their Honours said:

"The fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of misleading or deceptive conduct on the part of the respondent."

Presumably because such evidence of actual misleading is not necessary, this principle can be extended to the so-called reasonable member of the public who might have to answer to his or her state of confusion in the light of the misleading or deceptive conduct concerned.
As presently advised, I have little doubt that the relevant reasonable man or woman in our community reading the telephone directory in search of a funeral director operating under the name of Bruce Maurer, would be much more likely to finish in the hands of the first respondent than at the address or with the telephone number of the applicants' business Bruce Maurer Funerals. At this stage of the case it seems to be inescapable that all this advertising by the respondents since 1976 has been so directed and designed. Indeed, they did not seek to deny in evidence that this was their intention and as I have previously said, their counsel virtually admitted as much in argument. Nonetheless, the respondents submitted that in their advertising they have done everything possible to distance themselves from the applicants' business. In my opinion that claim is very hollow indeed. It is quite inconceivable that in the ordinary course of human experience, a business would advertise itself under the given name of a present or former part-time employee or other minimal participant of the business, if that were so. The presence of the entries of the respondents under the letter "B" seems to me to have been deliberately designed for the purpose of attracting business that might otherwise be that of the legal owners of the name Bruce Maurer Funerals. On the evidence as it presently stands, the entry "MAURER BRUCE (ALL HOURS)" in very large block capitals is seemingly nonsensical, if it is not taken as intended to persuade members of the public that Mr. Bruce Maurer is carrying on the occupation of a funeral director and in that occupation is available at that address and telephone number at all hours. His counsel's admission that that was its meaning was sensible because that is what as presently advised I think it would actually do. In the context in which the entries occur in the telephone directory, it seems to me that a reasonable member of public would draw no other conclusion.
The respondents mounted a vigorous vocal attack on the applicants during the hearing. It was suggested that the applicants had themselves indulged in deceptive conduct by having one of its managers, Mr. McCann, contact Mr. Bruce Maurer by telephone and try to trap or "verbal" him into some admission of non involvement in his son's business the day after his colleague, Mr. Gatenby, had sworn the affidavit on which reliance is placed by the applicants in these proceedings. It was also said that the action was commenced by the applicants to exert commercial pressure on the respondents to buy back Mr. Bruce Maurer's name. So far as I can see, there was and is no evidence of these matters. Neither of them was investigated during the hearing or put to Mr. Gatenby in cross examination. It was further said that the effect of the granting of this injunction would be to confer on the applicants what was described as "a statutory monopoly" on the name of Bruce Maurer as a funeral director. This is a reference to the decision of this Court in Chase Manhattan Overseas Corporation & Ors v. Chase Corporation & Anor (1986) 70 ALR 303. The circumstances in which Mr. Justice Lockhart used that expression at page 305 in that case seems to me to bear no similarity, nor is his Honour's use of the term available as any form of analogy, to the present case, so far as the evidence before me indicates. As this is an interlocutory proceeding, it will suffice for the present if I merely say that as presently advised, I do not accept those submissions.
There arose in the course of argument, concepts concerning Mr. Bruce Maurer's right to use his own name in the funeral directing business. Again, in view of the time available, I will not analyse the legal principles at any length on this subject. A number of cases have discussed this question, including Tussaud v. Tussaud (1944) ChD 678; Fine Cotton Spinners & Doublers' Association Limited & Anor. v. Harwood Cash & Co. Limited (1907) 2 ChD 184; Turton v. Turton (1889) 42 ChD 128; John Brinsmead & Sons Limited v. Edward George Stanley Brinsmead & Others (1913) 30 RPC 489; 29 TLR 237 and Baume & Co. Limited v. A.H. Moore Limited (1958) 1 Ch 907. From these cases it appears that a person may be restrained from using even his own name if it is used in circumstances which naturally and plainly refer to some other person, unless proper words are used to distinguish him from that other person. In other words, a person has no absolute right to use his own name in advertising of goods and services. These principles appear to have been laid down or accepted as correct by Buckley L.J. in Brinsmead (supra). They extend to embody the concept that there is no difference between a man's use of his own name or his use of some other appellation in considering deceptive conduct. If he makes a statement which is true but which carries with it a false representation inducing the belief that his goods are someone else's goods, it is a passing off restrainable by injunction. He cannot rely upon the fact that a statement is literally and accurately true if notwithstanding its truth it carries with it a false representation.
There being no dispute that the entries were inserted and paid for by the first respondent, the relevant entries, in my opinion, amount to conduct which is misleading or deceptive or likely to mislead or deceive, contrary to section 52(1) of the Trade Practices Act.

2. GROUNDS FOR INTERLOCUTORY RELIEF
In World Series Cricket (supra) at 186, the learned Chief Judge of this Court commented that the High Court in determining whether an interlocutory injunction should go in the Beecham case under the Patents Act 1952, invoked, as his Honour put it, "principles developed in equity to determine how it should exercise its statutory jurisdiction". I have already dealt with one of those principles, viz. the establishment of the prima facie strength of the plaintiff's claim. A second matter dealt with by the High Court in Beecham was the balance of convenience. It was submitted here on behalf of the respondents that this concept includes delay and the conduct of the parties but no authority was quoted in support of that proposition. I do not conceive that balance of convenience generally imports such connotations (see Spry: Equitable Remedies 3rd edition at 383; Meagher, Gummow and Lehane: Equity, Doctrines and Remedies, 1st edition at 2171), although in the time I have available, I am not able to deal with this subject exhaustively.
In my understanding of the balance of convenience derived from experience and my reading of the authorities, the major issues relevant to a case such as this include:

(a) the hardship to either party from the matter being determined against their respective contentions;

(b) the potential or actual availability to the applicants of alternative relief to achieve their aims and the corresponding hardship should they be required to pursue them now;

(c) the adequacy for the applicants of an award of damages or other relief at the final hearing;

(d) the effect of maintaining the status quo as against the benefits or detriments to either party if it is disturbed;

(e) the knowledge or ignorance of the respondents that they have or might have been acting in breach of the rights of the applicants;

(f) any relevant hardship or inconvenience to non parties or the public in general.

It is not appropriate, nor is there time, for me to analyse each of these principles as they apply to this case. It is sufficient to record my clear view that the balance of convenience operates here to favour the granting of appropriate interlocutory injunctions.
If, in fact, the apparently offending advertising does not operate as a deception or a misleading of the public, the respondents will lose little or nothing, and the applicants will gain little or nothing. If, however, the advertising in the white pages is misleading or deceptive, then it should be stopped because it is prima facie unlawful, and any financial or commercial advantage gained by the respondents should not be permitted to continue.
The applicants submitted several times in the course of the hearing that there was no objection on their part to Mr. Bruce Maurer being advertised as a participant in the business of the first respondent. They defined their objection as limited to his being held out as a funeral director carrying on such business under his own name, when the fact is that he is not carrying on business at all. With the limits appropriate to an interlocutory hearing, I accept that argument and see no reason to interpret the balance of convenience in favour of the refusal of relief.

3. THE EFFECT OF DELAY
The respondent relied upon the adoption by the High Court in Beecham (supra) and its apparent acceptance by Bowen C.J. in World Series Cricket (supra) of the appropriateness of the use of equitable principles in applications for statutory injunctions to place reliance upon the equitable principles of laches and acquiescence historically used to deny equitable relief in appropriate circumstances. There are two sets of delays here. One is the delay stretching from 1976 to the present time, during all of which years some prima facie misleading advertising has taken place by one or more of the respondents. The second delay is since 1984 when the applicants had themselves become the owners of the business names Bruce Maurer Funerals. Even as to this three-year delay, the applicants submit that because the actual principals of the applicant companies have only been in office for a few months, there has been virtually no delay by them.

That there has been delay cannot be seriously gainsaid. It appears from the evidence that the solicitors for Bruce Maurer Pty. Limited (when that company was formed and in the hands of the trustee in bankruptcy) moved in 1976 to draw attention to a confusing sign on the front of the Miller Street North Sydney premises of the respondent. A summons was issued out of the qquity Division of the Supreme Court of NSW on 14 December 1976, seeking an injunction to stop the advertising by Mr. Bruce Maurer of himself (or of his son's company subsumed under his name) as operating the business of funeral directors. Neither the letter which preceded that summons, nor the summons itself, makes any reference to the telephone directory entries.
There appears to be some confusion or uncertainty in the authorities as to whether the same doctrines of laches, delay and acquiescence as applied in equity also apply when the injunctions arise out of a statutory provision. Spry on Equitable Remedies, 3rd edition, page 428-9 says that:

"If the subject matter is one as to which injunctions have previously been granted by courts of equity, it may be a proper inference that ordinary considerations applied by courts of equity remain applicable under the new statutory power, subject to any statutory intention that special equitable doctrines should not apply or that other particular matters should or should not be taken into account."

The author goes on to say that:

"If the subject matter is new in the sense that rights are being created that had no prior equivalents that were protected by injunctions, it is likewise necessary to establish as a matter of construction whether particular considerations generally taken into account by courts of equity or particular alternative

considerations are material. It may be expected that only in the presence of a clear legislative intention would it be held that such matters as hardship and the balance of convenience should not be taken into account, although it may readily be inferred in some contexts that particular matters such as the interests of the public should be accorded greater weight than they would be accorded in other contexts."

The applicants here submit that at any rate in the context of the Trade Practices Act in its evident aim of protection of the public, delay will hardly if ever be relevant to the appropriateness of final relief. They say that if it is not so available, then it cannot be available in respect of interlocutory relief. The applicants submit that they cannot be fitted with or encumbered by the delays of others and in any event, the delays involved here are overwhelmed by the deliberately misleading conduct, the public interest in being protected from further unlawful conduct of this kind and by the absence of any identified hardship on the part of the respondents. Prima facie and for the purposes of interlocutory relief, I accept these submissions. It is not necessary to decide expressly whether equitable principles are appropriate in relation to an application for an injunction under section 80(2) in respect of a potential or actual section 52(1) breach, because it seems to me that even if, as a matter of law, the principles are not directly applicable, the same or similar questions arise in the discretion which the Court has to issue or not to issue the injunction sought. It seems to me that the respondents have had eleven years of benefit from prima facie deceptive conduct and that the preponderance of the public interest is that they should not have another year to benefit from this conduct if, in fact, they gain any benefit from it at all.

4. OTHER DISCRETIONARY CONSIDERATIONS
For these reasons, it seems to me that all the relevant considerations point in favour of the grant of interlocutory relief. Although the applicants have identified no actual damage in terms of being able to quantify the amount of business they have lost as a result of this misleading and deceptive conduct in the past, there is evidence that in the nature of the funeral direction business the name and the reputation of a business is important in both attracting new business and in engendering repeat business. The evidence to which I have earlier adverted concerning this matter also indicates that the name of Bruce Maurer in the funeral directing business is attracting of special custom. Together with the commonsense that must be applied to the circumstances, this evidence persuades me that there is a loss or probable loss, even though at the present interlocutory stage it is unable to be quantified precisely. The continuation of the conduct identified is likely to add the damage already sustained. The orders I propose to make, and the entries I therefore propose to permit, will allow for any person genuinely seeking Mr. Bruce Maurer's personal services to gain them.
I therefore make the following orders:

Noting the usual undertaking to the Court by the applicants as to damages, I order:

1. That pending final determination or until further order the

respondents and each of them be restrained from authorising, requesting or ordering the inclusion in the next edition of the Sydney White Pages (Telephone Directory) of the entries in the Schedule hereto.

2. That pending final determination or until further order the

respondents forthwith request Telecom to delete the said entries from and not to include them in the next edition of the Sydney White Pages (Telephone Directory).

3. That pending final determination or until further order the

respondents and each of them be restrained from replacing the said entries with entries in the next edition of the Sydney White Pages (Telephone Directory) under the name of Bruce Maurer promoting or advertising or designed to promote or advertise the funeral direction services of the first respondent.

4. That the respondents pay the applicants' costs of this

application for interlocutory relief.

5. That the parties produce to a directions hearing before me at

9.30 am on Friday, 29 May 1987, their proposed timetable for the remaining interlocutory steps in the proceedings for final relief.

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

[1987] FCA 264

27 MAY 1987