Hoover Co (Australia) Pty Ltd v Spackman
[1998] FCA 272
•2 MARCH 1998
FEDERAL COURT OF AUSTRALIA
TRADE PRACTICES - misleading and deceptive conduct - contravention of earlier Court order - whether entry in White Pages an “advertisement”
WORDS AND PHRASES - “advertisement”
Hersfield Development Corporation Pty Ltd v Melbourne and Metropolitan Board of Works [1982] VR 608 applied
Queensland Television Ltd v Australian Broadcasting Tribunal (1987) 17 FCR 246 applied
FAI Traders Insurance Co Ltd v Savoy Plaza Pty Ltd [1993] 2 VR 343 mentioned
HOOVER COMPANY (AUSTRALIA) PTY LIMITED V JULIE ANNE SPACKMAN & ORS
VG 732 OF 1996
JUDGE: HEEREY J
DATE: 2 MARCH 1998
PLACE: MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VG 732 of 1996
BETWEEN:
HOOVER COMPANY (AUSTRALIA) PTY LIMITED
(ACN 000 018 075)
APPLICANTAND OTHERS ACCORDING TO THE ATTACHED SCHEDULE
AND:
JULIE ANNE SPACKMAN TRADING AS HOOVAC APPLIANCE SERVICE;
HOOVAC WASHING MACHINE CLOTHES DRYER DISHWASHER REPAIR SERVICE;
HOOVEX WASHING MACHINE REPAIR SERVICE;
SOUTHCORP WASHING MACHINE CLOTHES DRYER AND DISHWASHER REPAIR SERVICE; AND
SOUTHCORP WASHING MACHINE CLOTHES DRYER DISHWASHER SERVICEJUDGE:
HEEREY J
DATE OF ORDER:
2 MARCH 1998
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
Answer the question:
Is the proposed telephone listing for the business “Hoover Washing Machine Repair Service” in the form attached to the letter of 23 February 1998 from Hicks & Oakley to Norton Smith & Co an advertisement for the purposes of Order 4 of the Order of His Honour Justice Burchett made on 17 February 1994 in the New South Wales District Registry of the Federal Court of Australia, in proceeding No. G274 of 1993?
Yes.
Order:
(b)The time for service of the applicant’s notice of motion filed 28 February 1998 be abridged.
(c)The seventh respondent pay the applicant’s costs of this day.
AND THE COURT notes the undertaking given by counsel on behalf of the seventh respondent that it will immediately instruct Telstra Corporation Limited that there be added to the proposed form of listing in “MOC91” the statement “Hoovex Washing Machine Repair Service is not an authorised agent or distributor of Hoover, in terms of par 4 of the Order of Burchett J of 17 February 1994.”
NOTE:SETTLEMENT AND ENTRY OF ORDERS IS DEALT WITH IN ORDER 36 OF THE FEDERAL COURT RULES.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VG 732 of 1996
BETWEEN:
HOOVER COMPANY (AUSTRALIA) PTY LIMITED
(ACN 000 018 075)
APPLICANTAND OTHERS ACCORDING TO THE ATTACHED SCHEDULE
AND:
JULIE ANNE SPACKMAN TRADING AS HOOVAC APPLIANCE SERVICE;
HOOVAC WASHING MACHINE CLOTHES DRYER DISHWASHER REPAIR SERVICE;
HOOVEX WASHING MACHINE REPAIR SERVICE;
SOUTHCORP WASHING MACHINE CLOTHES DRYER AND DISHWASHER REPAIR SERVICE; AND
SOUTHCORP WASHING MACHINE CLOTHES DRYER DISHWASHER SERVICEHEEREY J
JUDGE:
HEEREY J
DATE:
2 MARCH 1998
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
This notice of motion concerns an entry which the seventh respondent proposes to insert in the 1988 White Pages telephone directory. It is in the following form:
“HOOVEX WASHING MACHINE
REPAIR SERVICE41 Myrtle Glen Wvrly
WASHING MACHINE.. )
CLOTHES DRYER ..... ) 9560 9133
DISHWASHER )
SERVICE ........ ........ .. )
SPARE PARTS & FACTORY .....9560 9733”
The background to this matter is that the respondents or one or more of them have been carrying on business under the name Hoovex Washing Machine Repair Service since 1965. In 1993 the applicants, who are the proprietors in Australia of the Hoover trademark, brought proceedings No G 274 of 1993 in the Federal Court in Sydney against the seventh respondent. These were resolved by way of a consent order made by Burchett J on 17 February 1994.
Paragraph 1 of that order is as follows:
“1.The Respondent, whether by itself, its servants or agents or otherwise, be restrained from, in trade or commerce in Australia:
.
(a)advertising or promoting the sale or supply of any products or services under, or by reference to, or in association with the name or mark ‘Hoovex’ in conjunction with the name or mark ‘Hoover’ unless it is also in conjunction with the name or mark of at least one other manufacturer of washing machines, dishwashers and clothes dryers;
(b)advertising, promoting, supplying or selling any products under, or by reference to, or in association with name or mark ‘Hoover’ other than products manufactured by the Applicants which have not been altered, rebuilt or reconditioned, unless such products and any invoices or delivery dockets in relation to the same bear a clear and legible label to the following effect:-
‘This product has been altered, rebuilt, or reconditioned and may contain parts other than ‘Hoover’ brand spare parts.’
(c)advertising, promoting, supplying or selling any products or services under, or by reference to, or in association with a circle device containing the letter ‘H’, or under or by reference to any other mark substantially identical with or deceptively similar to the Hoover circle device used by the Applicants which is the subject of registered trade mark Nos B235639 and B235641 (the ‘Hoover circle device’).”
Paragraph 2 enjoins the respondent representing that its business is associated with the applicants’ business. Paragraphs from 3 and 4 are in the following terms:
“3.The Respondent forthwith take all necessary steps within its power to do all such things as may be necessary and within its power to prevent the advertising, promotion, sale or offering for sale or supplying of any of its services or products in Australia:
(a)under or in association with a circle device containing the letter “H”, whether alone or as part of any other name or mark; and
(b)advertising or promoting the sale or supply of any products or services under, or by reference to, or in association with the name of mark “Hoovex” in conjunction with the name or mark of at least one other manufacturer of washing machines, dishwashers and clothes dryers.
4.The Respondent include in all advertisements and promotions a statement as follows: -
‘Hoovex Washing Machine Repair Service is not an authorised agent or distributor of ‘Hoover’ brand products.’”
There was an order that the respondent pay the applicants’ costs.
The applicants contend that the proposed entry in the 1998 White Pages would contravene par 4 of Burchett J's order.
Since the date of Burchett J's order there has been quite extensive litigation between the parties in the Victoria District Registry of the Court in VG 732 of 1996. From time to time various injunctions have been granted. The matter was referred to mediation and on a recent directions hearing counsel informed me that the mediation had not resolved the disputes. Without of course inquiring into what took place at the mediation, I did ask if there was any particular sticking point and I was informed that the problem was the construction of par 4 of Burchett J's order and whether the proposed 1998 White Pages advertisement would contravene it. The applicants on 28 February 1998 filed a notice of motion seeking the following orders:
“1.An order that the following question be decided separately from any other question in the proceeding, namely:
A. Is the proposed telephone listing for the business ‘Hoovex Washing Machine Repair Service’ in the form attached to the letter of 23 February 1998 from Hicks & Oakley to Norton Smith & Co an advertisement or promotion for the purposes of order 4 of the Order his Honour Justice Burchett made on 17 February 1994 in New South Wales District Registry of the Federal Court of Australia, in proceeding number G274 of 1993.
2.An order that the question in A be determined on the hearing of this motion.
3. An order that the question in A be answered - yes.
4. An order that the time for service of the motion be abridged.
5.An order that the first, fifth, sixth, seventh, ninth, tenth and eleventh Respondents pay the Applicants costs of this application.
6.Such further or other order, including the granting of such further relief including any necessary injunctive relief, as the Court deems appropriate.”
It is accepted by the parties that this is an appropriate procedural mechanism to resolve this issue.
The term "advertisement" is defined by the Macquarie dictionary as:
“Any device or public announcement, as a printed notice in a newspaper, a commercial film on television, a neon sign etcetera designed to attract public attention, bring in custom etcetera.”
The term has been considered in a forensic context, including a statement by McGarvie J in Hersfield Development Corporation Pty Ltd v Melbourne and Metropolitan Board of Works [1982] VR 608 at 613 where his Honour noted that:
“It has been held that the ordinary meaning of the word ‘advertise’ is to make generally or publicly known or to give public notice of something.”
See also Queensland Television Ltd v Australian Broadcasting Tribunal (1987) 17 FCR 246 at 262-3. In Rothmans of Pall Mall (Aust) Ltd v Australian Broadcasting Tribunal (1985) 5 FCR 330 at 339 the Full Court, in dealing with a statutory prohibition of “an advertisement for, or for the smoking of cigarettes or cigarette tobacco,” observed that the test was an objective one. The Court said:
“That issue is to be objectively determined, the question being whether the material on its face and without reference to the actual intentions of those concerned with its production or transmission appears to be designed or calculated to draw public attention to or to promote the sale of or use of cigarettes or to promote the practice of smoking. The question is to be determined by reference to the nature of the material considered as a whole.”
In my opinion, the proposed entry in the White Pages is an advertisement. It notifies readers of the White Pages that the business of Hoovex Washing Machine Repair Service is carried on at 41 Myrtle Street, Glen Waverley, that the business can be contacted at the number given, and that the business provides servicing for washing machines, clothes dryers and dishwashers. It also indicates that the business provides spare parts and has a factory, thereby conveying to readers that it is a business of some substance and likely to be able to meet the needs of anybody requiring repairs or service to the domestic appliances mentioned.
I do not think the entry ceases to be an advertisement because on its face it says nothing about the quality of the service offered. It is a common feature of advertising today that the advertiser does not spell out explicitly that his goods or services are desirable or bring any particular advantages. Nor do I think that there is any valid comparison with entries of private addresses and telephone numbers in the White Pages. An entry simply notifying the reader of the White Pages that a person lives at a particular address and has a particular telephone number is not an advertisement. It is quite different, however, when a person or firm indicates (and in bold type) the nature of the business that it carries on.
Counsel for the respondents argued that "advertisement" in par 4 of the order had to be read in context with pars 1 and 3. It was said that "advertisements" in par 4 therefore meant an advertisement which “promoted the sale or supply of” any products or services. I do not think this argument really adds anything because for the reasons I have mentioned I think the proposed entry would promote the supply of the respondents' services since it would bring home the availability of such services to readers of the White Pages.
There was some argument as to the failure by the applicants to object to an identical advertisement which appeared in the 1994 and 1995 White Pages. Reference was made to a letter from the applicants’ solicitors dated 23 August 1996 to the respondents’ then solicitors which stated that the 1995 entry "complied with the court orders". The matter is by no means clear since the letter seems to have been written in the context of a dispute as to whether the terms of the settlement which resulted in the consent order were intended to exclude any restraint on advertising in the White Pages at all. At any event, the matter does not arise for consideration under the present notice of motion and if it is sought to rely on the subsequent conduct of the parties, the respondents would, I think, face the problem that such conduct is not receivable as an aid to construction: FAI Traders Insurance Co Ltd v Savoy Plaza Pty Ltd [1993] 2 VR 343.
There will therefore be an order that the question A in the notice of motion be answered: Yes. There will be orders that the time for service of the motion be bridged.
I think that there should be an order for costs. This issue has been permanently resolved. The ordinary rule that costs follow the event should apply. However, I do think that this was a discrete issue involving the seventh respondent and the construction of the terms of the earlier order which only applied to the seventh respondent so the costs will be only against the seventh respondent. As to senior counsel, I think that is a matter for the taxing officer. I should not trespass on that jurisdiction.
I note there is an undertaking that the seventh respondent will immediately instruct Telstra that there be added to the proposed form of listing in MOC91 the statement, "Hoovex Washing Machine Repair Service is not an authorised agent or distributor of Hoover," in terms of par 4 of the order of Burchett J of 17 February 1994.
I certify that this and the preceding six (6) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey
Associate:
Dated: 2 March 1998
Counsel for the Applicants: R C Macaw QC and Ms M Ryan Solicitor for the Applicants: Norton Smith & Co Counsel for the first Respondents: Ms A Ryan Solicitors for the first, fifth,seventh, ninth, tenth and eleventh Respondents: Hicks & Oakley Date of Hearing: 2 March 1998 Date of Judgment: 2 March 1998
SCHEDULE OF PARTIES
HOOVER COMPANY (AUSTRALIA) PTY LIMITED
(ACN 000 018 075) First Applicant
SOUTHCORP APPLIANCES PTY LTD
(ACN 008 292 395) Second Applicant
HOOVER APPLIANCES (AUST) LTD
(ACN 003 444 059)) Third Applicant
SOUTHCORP MANUFACTURING PTY LTD
(ACN 004 253 605 Fourth Applicant
SOUTHCORP HOLDINGS LIMITED
(ACN 007 722 643) Fifth Applicant
SOUTHCORP WHITEGOODS PTY LTD
(ACN 004 419 210) Sixth Applicant
TRADING AS SOUTHCORP APPLIANCES SERVICE DIVISION
JULIE ANNE SPACKMAN TRADING AS
HOOVAC APPLIANCE SERVICE;
HOOVAC WASHING MACHINE CLOTHES DRYER DISHWASHER REPAIR SERVICE;
HOOVEX WASHING MACHINE REPAIR SERVICE;
SOUTHCORP WASHING MACHINE CLOTHES DRYER AND DISHWASHER REPAIR SERVICE; and SOUTHCORP WASHING MACHINE CLOTHES DRYER DISHWASHER SERVICE
First Respondent
DOMICOR HOLDINGS B.V. Second Respondent
MAYTAG CORPORATION INC Third Respondent
BUSINESS MARKETING AUSTRALIA PTY LTD
(ACN 006 503 699) Fourth Respondent
STANLEY SPACKMAN Fifth Respondent
MARCIA JACOBSON Sixth Respondent
S.S. APPLIANCES PTY LTD
(ACN 004 738 694) Seventh Respondent
TELSTRA CORPORATION LIMITED
(ACN 051 775 556) Eighth Respondent
HOOVER, ACCESS TO WASHING MACHINE AND CLOTHES
DRYER SERVICE BY TESCO PTY LTD
(ACN 077 712 979) Ninth Respondent
TERENCE SPACKMAN Tenth Respondent
VULCAN DISHLEX, ACCESS TO DISHWASHER
SERVICE BY TESCO PTY LTD
(ACN 077 712 942) Eleventh Respondent
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