MacKenzie v MacKenzie - [2011] SADC 116

DISTRICT COURT OF SOUTH AUSTRALIA
(District Court Administrative Appeals Tribunal: Appeal Under Business Names Act 1996)
MACKENZIE & ANOR -V- MACKENZIE & ANOR
[2011] SADC 116
Judgment of His Honour Judge Brebner
28 July 2011
ADMINISTRATIVE LAW
Appeal against a determination of the Corporate Affairs Commission to register a business name pursuant to the Business Names Act 1996. Commission registered a business name which was said to be likely to be confused with or mistaken for another entity.
Held: Although the original decision maker made no error of fact or law his determination was plainly wrong.
Appeal allowed. Registration of business name rescinded.
Business Names Act 1996 (SA); District Court Act 1991 s42E(1), s42E(2)(a), s8(4)(b), 42E(2)(b) and s43E(3), referred to.

MACKENZIE & ANOR -V- MACKENZIE & ANOR
[2011] SADC 116

This is an appeal against a determination of the Corporate Affairs Commission to register a particular business name pursuant to the provisions of the Business Names Act 1996 (SA). (“the Act”).
At the conclusion of the hearing of the appeal, I allowed the appeal and gave reasons ex tempore. What follows is a settled version of those reasons.
The appellants, Mr and Mrs MacKenzie, operate a Housing and Construction Business which is based at Clare and which operates in the Clare region and the surrounding rural areas. The business trades as MacKenzie Homes and Commercial. Unsurprisingly, the business is often referred to by some of the inhabitants of the area as “MacKenzie Homes”. In 2004 the appellants registered the name “MacKenzie Homes and Commercial Pty Ltd” as a business name pursuant to the provisions of the Act.
The first respondent works at Nuriootpa. Nuriootpa is some 100 kilometres from Clare. In early 2009 he sought to register a business name. He filled out the appropriate form and submitted it to the appropriate officer of the Corporate Affairs Commission (“the Commission”). He nominated three names in order of preference. His third preference was “MacKenzie Quality Homes”.
Section 8(4)(b) of the Act provides that the Commission 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 an existing registered business name. It follows that the determination of any application to register a business name involves the making of a discretionary judgment and the appeal is thus an appeal against a discretionary judgment.
The officer of the Commission who considered the first respondent’s application determined that his first and second preferences were names which were likely to be confused with, or mistaken for, existing business names, but that his third choice, namely “MacKenzie Quality Homes”, was unlikely to be confused with or mistaken for the appellants’ registered business name of “MacKenzie Homes and Commercial Pty Ltd” and accordingly he registered the name “MacKenzie Quality Homes” as a business name and one of his superiors subsequently agreed with his determination.
The appellants appeal against this determination.
In essence, the appellants submit that the officer of the Commission erred in that he did not recognise the potential for confusion or mistake which would be created if the name “MacKenzie Quality Homes” was to be registered as a business name or, that if he did recognise that there was some potential for mistake or confusion, then he must have underestimated the degree of that risk.
On an appeal such as this the court must examine the decision of the original decision maker on the evidence before the original decision maker, the court may allow further evidence and the court can inform itself as it sees fit: District Court Act 1991 (SA) ss42E (1), 42E (2)(a).
In accordance with these principles, I have admitted affidavits of the first appellant, the officer who made the original determination and his supervisor and I obtained information from the parties during the course of the hearing. However, I have not found it necessary to go beyond the affidavit of the officer who made the original decision, the material which was before him and the affidavit of his supervisor.
The original decision maker was the officer of the Commission who made the determination to register the business name “MacKenzie Quality Homes”. It is plain from his affidavit that when he came to consider the question of whether the name “MacKenzie Quality Homes” could properly be registered, the only material which was relevantly before him was the application for registration including the name “MacKenzie Quality Homes” and the results of a search of the Commission’s records which indicated that the name “MacKenzie Homes and Commercial Pty Ltd” was already a registered business name.
It is also plain from his affidavit that he correctly recognised the guiding principle embodied in s 8(4)(b) of the Act and that he correctly turned his mind to the question of any potential for confusion or mistake and that in his judgment, and I quote from paragraph 12 of his affidavit, “that the names were sufficiently different and were not likely to be confused with or mistaken for one another.” It is equally plain from the affidavit of his supervisor that she too correctly recognised the relevant principles.
It follows that the original decision maker has made no error of fact in the sense that he has correctly identified the name sought to be registered and the name already registered and that he has made no error of law in the sense that he has plainly compared the two names bearing the relevant principle in mind.
In determining an appeal such as this, I must act according to equity, good conscience and the substantial merits of the case without regard to technicalities and legal forms and I must give due weight to the original determination, and the reasons for it, and I must not depart from it except for cogent reasons: District Court Act 1991 (SA) ss 42E (2)(b), 43E(3).
As the original decision maker has made no error of fact or law, it follows that his determination must be given significant weight. This being so, the only cogent reason which would allow me to depart from his determination would be if I came to the conclusion that on the material before him, as supplemented by the additional material that is before me, his determination was completely unreasonable and thus plainly wrong.
I accept the submission of counsel for the Commission, Dr Lake, that one cannot be overly critical of those who determine applications to register business names because the only information they have available to them is the name sought to be registered and any similar names which have been previously registered and that they will usually have little or no information about the nature of the businesses concerned other than that which might be implicit in the names themselves. In my view, this serves to underline the care and caution which must be exercised in determining whether one name is likely to be confused with, or mistaken for another.
I also accept Dr Lake’s submission, based on previous decisions of this court, that one must look at the words which comprise the names and that no person has exclusive rights to use words which describe a particular type of business.
In my view, when one looks at the words one must also consider what the ordinary person is likely to make of them and whether it is thus likely that any mistakes might be made, or whether any confusion might arise if the name in question were to be registered.
When one looks at the words, one can see that the name “MacKenzie” and the word “Homes” appears in both names. One name goes on to add the word “Commercial” and in the other, the word “Quality” precedes the word “Homes”.
There are thus similarities and differences. In my view the similarities are stark and the differences are subtle. Although the names might be capable of suggesting that the two entities are engaged in businesses of a different nature, the interpretation which first springs to mind is that they are both engaged in the same kind of business, namely the construction of homes, and that MacKenzie Homes & Commercial are also engaged in the business of construction of commercial premises.
In my view, when considering whether a particular business name can properly be registered, the practical effect of the registration of that name must be looked at in order to determine whether there is any likelihood of resultant confusion or mistake. In this regard, and ignoring the evidence about the name by which MacKenzie Homes & Commercial is commonly known, and simply looking at the words of the two names, the possibility that both entities could become known in trade circles, or indeed in the general community, as “MacKenzie Homes” is not without its significance.
Thus, in my view there is more than a mere theoretical possibility that if registration were to be confirmed, the name “MacKenzie Quality Homes” would become confused with “MacKenzie Homes & Construction” and that the two entities might be mistaken for one another and indeed it is my view that it is highly likely that relevant confusion or mistake would eventually occur if the registration were to be allowed to stand.
It therefore follows that in my view the original decision to register the name “MacKenzie Quality Homes” was plainly wrong and the appeal must be allowed.
Although I have not taken it into account in determining the outcome of the appeal, I am fortified in this view by the fact that relevant confusion or mistake has in fact occurred and I am of the view that it is likely to re-occur even if the first respondent carries out his intention to change locations.
I rescind the decision to register the name “MacKenzie Quality Homes” and I substitute for that decision a determination that the application to register the name “MacKenzie Quality Homes” as a business name is rejected.
I will hear the parties as to costs.