Heritage Building Society Limited v Brooks Consultancy Services Pty Ltd

[2002] FCA 410

FEDERAL COURT OF AUSTRALIA

Heritage Building Society Limited v Brooks Consultancy Services Pty Ltd
[2002] FCA 410

HERITAGE BUILDING SOCIETY LIMITED v BROOKS CONSULTANCY SERVICES PTY LTD AND REMI MORGAN BURNS PTY LTD
Q 33 OF 2002

DRUMMOND J
BRISBANE
8 MARCH 2002

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q 33 OF 2002

BETWEEN:

HERITAGE BUILDING SOCIETY
APPLICANT

AND:

BROOKS CONSULTANCY SERVICES PTY LTD
FIRST RESPONDENT

REMI MORGAN BURNS PTY LTD
SECOND RESPONDENT

JUDGE:	DRUMMOND J
DATE OF ORDER:	8 MARCH 2002
WHERE MADE:	BRISBANE

UPON the applicant by its Senior Counsel giving the usual undertaking as to damages

THE COURT ORDERS THAT:

1.The time for service of this application and supporting affidavits be abridged to enable this application to be heard instanter.

2.The respondents, and each of them, by their directors, officers, servants, agents or otherwise howsoever be restrained from using the name “Heritage Asset Planning” or any colourable variation of that name in connection with the conduct of a seminar on 12 March 2002 at the Mercure Hotel Burke & Wills, 554 Ruthven Street, Toowoomba unless:

(a)attendees at the seminar are provided upon their arrival at the seminar with a notice in writing marked:

“IMPORTANT NOTICE

Heritage Asset Planning HAS NO ASSOCIATION, direct or indirect, with Heritage Building Society” (‘the Notice’)

by providing a copy of the Notice to such attendees as either a separate document printed on A4 paper or as the document placed on the top of any documents provided to attendees;

(b )a copy of the notice in print no smaller than a font size of 5 centimetres is posted at all public entrances to the room at which the seminar is to be held;

(c)at the commencement of the seminar the following announcement is read:

“This is an important announcement.  Heritage Asset Planning has no association, direct or indirect, with Heritage Building Society.  Heritage Building Society Limited has taken exception to the use of the name Heritage by us in a form which it says is misleadingly similar to its logo and trademark.  Heritage Building Society has commenced proceedings in the Federal Court in relation to the matter.”

3.The respondents, and each of them, by their directors, officers, servants, agents or otherwise howsoever be further restrained from using the name “Heritage Asset Planning” or any colourable variation thereof in connection with the conduct of any other seminar in Toowoomba unless:

(a)attendees at the seminar are provided upon their arrival at the seminar with a notice in writing marked:

“IMPORTANT NOTICE

Heritage Asset Planning HAS NO ASSOCIATION, direct or indirect, with Heritage Building Society” (‘the Notice’)

by providing a copy of the notice to such attendees as either a separate document printed on A4 paper or as the document placed on the top of any documents provided to attendees;

(b)a copy of the notice in print no smaller than a font size of 5 centimetres is posted at all public entrances to the room at which the seminar is to be held;

(c)at the commencement of the seminar the following announcement is read:

“This is an important announcement.  Heritage Asset Planning has no association, direct or indirect, with Heritage Building Society.  Heritage Building Society Limited has taken exception to the use of the name Heritage by us in a form which it says is misleadingly similar to its logo and trademark.  Heritage Building Society has commenced proceedings in the Federal Court in relation to the matter.”

4.The respondents use their best endeavours to cause an advertisement, having a size of no less than 80 square centimetres, to be published in each of the 9 March, 11 March and 12 March 2002 editions of The Toowoomba Chronicle newspaper, containing the following words:

“IMPORTANT PUBLIC NOTICE

Heritage Asset Planning HAS NO ASSOCIATION, direct or indirect, with Heritage Building Society.

Members of the public may have received promotional material from Heritage Asset Planning and been invited to a forthcoming seminar arranged by Heritage Asset Planning.

Heritage Building Society Limited has taken exception to the use of the name Heritage by us in a form which it says is misleadingly similar to its logo and trademark.  Heritage Building Society has commenced proceedings in the Federal Court in relation to the matter.

- Heritage Asset Planning”

with such advertisement to appear on one of the first ten pages of each edition.

5.The application, including the application for interlocutory relief in paragraphs 2 and 3 of Part B of the application, be adjourned to Friday, 15 March 2002.

6.Each respondent have liberty to apply in relation to the injunctions granted this day.

7.A copy of these orders be served forthwith by the solicitors for the applicant upon the respondents by causing a copy of the same to be facsimiled to the registered office of each respondent.

8.The costs of and incidental to today’s hearing be reserved.

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

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q 33 OF 2002

BETWEEN:

HERITAGE BUILDING SOCIETY LIMITED
APPLICANT

AND:

BROOKS CONSULTANCY SERVICES PTY LTD
FIRST RESPONDENT

REMI MORGAN BURNS PTY LTD
SECOND RESPONDENT

JUDGE:	DRUMMOND J
DATE:	8 MARCH 2002
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1. In this action, the Heritage Building Society seeks urgent interlocutory relief against the respondents in relation to their conduct in connection with the name “Heritage Asset Planning”.

2. The Heritage Building Society is an old established business in Toowoomba that has traded under that particular name for at least 20 years.  It has expanded its operations into south-east Queensland and beyond in more recent years.  It has also, for a considerable period of time, in addition to traditional building society services, offered a range of financial services which include financial planning advice. 

3. The first respondent, in a seminar arranged by the second respondent to be held in Toowoomba on 12 March 2002, proposed to offer financial planning advice to people attending that seminar using its newly adopted name, Heritage Asset Planning. 

4. There is, in at least the Toowoomba area, a substantial trade connection such that a large number of people in the Toowoomba area would associate an organisation calling itself Heritage Asset Planning and offering financial advice seminars with the Heritage Building Society, which is well known in Toowoomba and has provided just that kind of advice activity for some time.

5. There is, I think, a clear basis for saying that there is passing off, quite apart from trade mark infringement which may also be able to be established.

6. For the reasons I have given, the applicant has laid a clear foundation for a claim for urgent interlocutory relief on short notice of the kind outlined in pars 4 and 5 of Part B of the application. 

7. Exhibit 1, as I understand it, shows that the second respondent is prepared to acknowledge the force of the applicant’s claims, at least to the extent of agreeing to offer undertakings along the lines of pars 4 and 5 of Part B of the application.  There is no evidence before me as to the attitude of the first respondent but, given the notice that the first respondent has had of this application, albeit very brief, and the strength of the applicant’s case, there does not seem to be any reason why I should limit interlocutory relief to the terms outlined in pars 4 and 5 of Part B.

I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Drummond.

Associate:

Dated:            8 April 2002

Counsel for the Applicant:	Mr P Applegarth
Solicitor for the Applicant:	Clewett Corser & Drummond
Date of Hearing:	8 March 2002
Date of Judgment:	8 March 2002