Micheal Edgley International Pty Ltd v Ashtons Nominees Pty Ltd trading as Ashtons Circus Australias Oldest Circus (Reg)

[1979] FCA 92

MICHEAL EDGLEY INTERNATIONAL PTY. LTD. v. ASHTON'S NOMINEES PTY. LTD. TRADING
AS ASHTON'S CIRCUS (REG.) AUSTRALIA'S OLDEST CIRCUS. (1979) 38 FLR 135
Trade Practices

COURT

FEDERAL COURT OF AUSTRALIA

GENERAL DIVISION
Fisher J.(1)

CATCHWORDS

Trade Practices - Interim injunction - Onus on applicant - Misleading advertisement - Trade Practices Act 1974 (Cth.), ss. 52, 53 (c), (d).

HEADNOTE

The applicants had entered into an agreement to present in Australia the "Monte Carlo Circus". The respondent carried on business as a circus promoter, which at the material time was performing in Adelaide. The respondent in an advertisement referred to the "Monte Carlo Circus" and associated its performers with it.

The applicants commenced proceedings against the respondent claiming a declaration that the respondent had contravened s. 52 and s. 53(c) and (d) of the Trade Practices Act 1974, an injunction restraining the respondent from infringing those sections in the advertising of the circus presented by it, and damages.

The applicants sought interlocutory injunctions to restrain the respondent's advertising.

Held: (1) Interim injunctions should be granted.

(2) The onus lay on the applicant to establish a prima facie case of contravention of the sections or one of them in the sense explained by the High Court in Beecham Group Ltd. v. Bristol Laboratories Pty. Ltd. (1968), 118 CLR 618.

(3) In establishing a prima facie case the applicants must show that they have some real and significant prospect that if the evidence remains as it is at the time of the application, they will succeed at the trial.

Commercial Bank of Australia Ltd. v. Insurance Brokers' Association of Australia (1977), 16 ALR 161, and Victorian Egg Marketing Board v. Parkwood Eggs Pty. Ltd. (1978), 33 FLR 294, applied.

Relevance of possibility that a quasi-passing action is motivated by applicants' desire to protect their business rather than interest of consumers discussed.

Whether a statement of the truth may constitute misleading or deceptive conduct considered.

HEARING

Adelaide, 1979, August 29, 30; September 12. #DATE 12:9:1979

APPLICATION.

The material facts appear in the judgment.

D. G. Jarvis and W. V. Connelly, for the applicants.

B. Lander and N. W. Martin, for the respondent.

Solicitors for the applicants: Mollison Litchfield & Co.

Solicitors for the respondent: Baker McEwen & Co. R. McK. ROBSON

JUDGE1

September 12.

At the conclusion of argument an interim order was made. Subsequently Fisher J. delivered the following interim judgment. (at p136)

JUDGE2

FISHER J. In this matter Michael Edgley International Pty. Ltd., Bullen Intercontinental Pty. Ltd. and Ringling Bros. - Barnum & Bailey Combined Shows Inc., ("the applicants") commenced proceedings against Ashton's Nominees Pty. Ltd. trading as "Ashton's Circus - Australia's Oldest Circus", ("the respondent") on 22nd August, 1979, claiming a declaration that the respondent had contravened ss. 52, 53 (c) and 53 (d) of the Trade Practices Act 1974, an injunction restraining the respondent from infringing those sections in the advertising of any circus presented by it, and damages. The application was endorsed with a claim for interlocutory relief, the hearing date for which was given as 4th September, 1979. (at p136)

1. Upon being served with the proceedings the respondent filed a notice of motion seeking a stay or dismissal of the claim for interlocutory relief on the ground that it disclosed no reasonable cause of action. However, when this notice of motion came on for preliminary hearing on Monday 27th August, 1979, the respondent indicated that it primarily desired an earlier hearing of the applicants' interlocutory application as the advertising of its circus which was currently performing in Adelaide was being prejudiced by knowledge of this application for a restraining order. The parties agreed that the hearing of the applicants' interlocutory application be brought forward to Wednesday 29th August, 1979. Counsel for the applicants gave notice at this stage of his intention to amend the endorsement claiming the interlocutory relief by widening the restraining order sought. Ultimately no formal amendment was made as the parties agreed that the court was not constrained by the terms of the endorsement from making such order, if any, as was ultimately established as appropriate at this stage. (at p136)

2. Numerous affidavits together with exhibits were filed and tendered by the parties. Not all the evidence deposed to in the affidavits was to my mind relevant to the issues before me at this stage and there was some conflict on many important facts. In the circumstances that none of the evidence was tested by cross-examination it is more than usually desirable that I refrain at this stage from making unnecessary findings. Such findings that I do feel obliged to make are of course not final, but are only made on the evidence as it now stands. Moreover, much of the evidence is in a form which may well, if objected to, be ruled inadmissible upon the final hearing. (at p136)

3. The principles upon which I should exercise my discretion to grant interim relief are well settled in this Court. I refer in particular to the judgment of the Chief Judge of this Court in World Series Cricket Pty. Ltd. v. Parish (1977) 16 ALR 181, at pp 186 et seq . (at p136)

4. It was at the hearing in this matter not disputed that the onus lies on the applicants to make out a prima facie case of contravention of the sections (or one of them) in the sense explained by the High Court of Australia in Beecham Group Ltd. v. Bristol Laboratories Pty. Ltd. (1968) 118 CLR 618 . I refer to the following passage: "The Court addresses itself in all cases, patent as well as other, to two main inquiries. The first is whether the plaintiff has made out a prima facie case, 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: Preston v. Luck (1884) 27 ChD 497, at p 506 ; Challender v. Royle (1887) 36 Ch D 425, at p 436 . How strong the probability needs to be depends, no doubt, upon the nature of the rights he asserts and the practical consequences likely to flow from the order he seeks" (1968) 118 CLR, at p 622 . It is also incumbent on the applicants to show that on consideration of the balance of convenience the respondent should be restrained pending final hearing. (at p137)

5. In establishing a prima facie case, in the relevant sense, it is, contrary to the submission of counsel for the respondent, in my opinion, not necessary for the applicants to persuade me that, on the present state of the evidence, it is more likely than not that they will ultimately succeed. Rather the applicants must show that they have some real and significant prospect that if the evidence remains as it is at the moment, they will succeed at trial. The test of "a fair chance of success" was adopted by Bowen C.J. in Commercial Bank of Australia Ltd. v. Insurance Brokers' Association of Australia (1977) 16 ALR 161, at p 168 and taken up by Brennan J. in Victorian Egg Marketing Board v. Parkwood Eggs Pty. Ltd. (1978) 33 FLR 294 and to me seems very appropriate in the present circumstances as indicating how strong the probability needs to be. (at p137)

6. As mentioned above the applicants contend that the respondent has, in advertising the performances of its circus currently in Adelaide, contravened ss. 52, 53(c) and 53(d) of the Act. The relevant portions of these sections are as follows:
   
   

"52(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of

sub-section

(1).

"53 A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in

connexion with the promotion by any means of the supply or use of goods or services - . . .

(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

(d) represent that the corporation has a sponsorship, approval or affiliation it does not have." (at p138)

1. It was not disputed that the respondent was a corporation for the purposes of the Act and that the presentation of it's circus came within the definition of services in s. 4(1) of the Act. (at p138)

2. The facts relevant to this application appear, on the evidence which is at this stage before me, to be as follows. The applicants are all engaged in the entertainment industry, the first two in Australia ("the Australian applicants") and the third-named applicant ("Ringling Bros.") in the United States of America. In the month of April 1979 the Australian applicants entered into an agreement with Ringling Bros. to present in Australia for fourteen weeks commencing about 1st January, 1980, the circus known as "The Festival International du Cirque de Monte Carlo Spectacular" ("the Monte Carlo Circus"). The terms of the agreement, and in particular the mode of billing of the Monte Carlo Circus which includes the fact that it is "under the High Patronage of H.S.H. Prince Rainier III" appear in a letter from Ringling Bros. dated 18th April, 1979. Pursuant to these terms the Australian applicants have already paid $200,000 to Ringling Bros. and expect to be obliged to meet further expenses between $4,000,000 to $5,000,000 in fulfilling their obligations under the agreement. The applicants placed some emphasis on this payment and the obligation in respect of further expenses as indicating that the balance of convenience was in their favour. (at p138)

3. The evidence of the applicants indicates that quite separately from the performances of the Monte Carlo Circus, which is currently touring the United States of America, an annual competition known as Festival International du Cirque de Monte Carlo ("international festival") is held (and has been held each year for the past five years) in Monte Carlo. Artists from all over the world compete in the international festival and those whom the judges select as the best take part in an evening gala performance of the conclusion of the competitions. Some of the artists who are selected to perform in that evening performance are subsequently invited to join the Monte Carlo Circus. It is apparent therefore that there is considerable difference between performing in the competitions of the international festival at Monte Carlo and performing as a member of the Monte Carlo Circus. The forthcoming tour of the Monte Carlo Circus has already been advertised in Australia and brochures referring to it have been supplied to persons on the mailing list of the applicant Michael Edgley International Pty. Ltd. (at p138)

4. The respondent carries on the business of circus promoter and the Ashton family has in one way or another been involved in the presentation of circus in Australia since 1832. It is currently conducting a circus in Adelaide. Eight of the persons currently performing with the respondent's circus in Adelaide have appeared in an international festival at Monte Carlo, one of them at the fourth festival in December 1977 and the remaining seven at the fifth festival in December 1978. It is not claimed by the respondent that any of these eight performers had been invited to join or had performed in the Monte Carlo Circus as opposed to performing in the international festival at Monte Carlo. (at p139)

5. The applicants complain of the manner in which the respondent is advertising in Adelaide the association of its performers with the Monte Carlo Circus. This advertising has appeared in the newspapers in various forms, and in addition reference is made in the respondent's programme for the current performances and its announcements of individual performers. Before me attention was primarily concentrated on an advertisement which appeared in the News newspaper on 9th August, 1979, the relevant portion of which is in the following form:
   
   

"ASHTON'S CIRCUS

Present their eight stars from

MONTE CARLO CIRCUS

*Marcel Peters - 'Lord of the Lions'

1977 Monte Carlo Circus

*Lorraine Ashton

1978 Monte Carlo Circus Festival with

*Tammy & Tanya* *Gary and Marty*

1978 Monte Carlo Circus Festival with

*Chino & Cifuentus* Prince Rainer (sic), Princess Grace and their family, Tele Savalis and Cary Grant were delighted to meet the ASHTONS from AUSTRALIA who have been invited back for the

1979 MONTE CARLO CIRCUS"

The applicants contend that it is misleading in the circumstances and prima facie a contravention of the Act to represent that their eight stars are from the "Monte Carlo Circus", to describe Marcel Peters as associated with the "1977 Monte Carlo Circus" and to refer to the other performers as associated with the "Monte Carlo Circus Festival". They also complain that the final paragraph of the above extract from the advertisement is misleading in that it suggests that Ashton's Circus has, in the words of s. 53(c) and (d) "sponsorship or approval of or affiliation with" Prince Rainier and Princess Grace, and that "the Ashtons" have been invited to join the Monte Carlo Circus. In general I am inclined on the evidence before me at this stage to agree with the contentions of the applicants. It follows that they have in my opinion satisfied the test of "a fair chance of success". There is, if the evidence remains as it is, a real and significant prospect that the applicants will establish contraventions of ss. 52, 53(c) and 53(d) of the Act or some one or more of these sections on this evidence. (at p140)

1. Counsel for the respondent opposed the making of an interim order on the ground that the applicants' cause of action was essentially one of passing off and that there was no evidence that the proceedings were taken for the protection of consumers. Doubtless it is correct to say that the applicants were substantially motivated by self-interest in initiating the action. They seek to protect, it can be assumed, their business interests. However, the essence of the conduct of the respondent and the gist of the applicants' complaint is that the advertisements and announcements are likely to deceive members of the public in their capacity as consumers, that is, as potential circus goers. I can agree with the contention of counsel for the applicants that if the respondent continues to advertise in the form abovementioned there is a likelihood of confusion in the minds of the public. Some may be led to believe they are viewing the Monte Carlo Circus or at least a circus closely associated therewith. (at p140)

2. Counsel for the respondent submitted that there would be no such confusion because in substance and in truth there was no difference between what I have called the Monte Carlo Circus and the international festival at Monte Carlo. This argument is based upon the close similarity between the full name of the circus, namely "The Festival International du Cirque de Monte Carlo Spectacular" and that of the annual international festival, namely "Festival International du Cirque de Monte Carlo 1976". That may be so, but there is evidence to the effect that, however similar the titles may be, there is a distinction between performing in the circus in Monte Carlo and on tour, and performing in the competitions held under the latter name at Monte Carlo. On the evidence before me, none of the respondent's performers had been members of the circus, though they had performed in the competitions. (at p140)

3. Upon my indicating to counsel for the respondent that I was of opinion that the applicants had made out a prima facie case in the relevant sense, I was not pressed with the submission that I should not make an interim order on the ground that the balance of convenience, or more correctly, inconvenience, favoured the respondent. Rather I was urged by its counsel not to make an order restraining completely the use of the words "Monte Carlo". Counsel for the applicants desired that I proscribe in the interim order use of each of the words "Monte Carlo", "Monaco", "Prince Rainier" and "Princess Grace". (at p140)

4. There was much discussion of the appropriate form of order after I intimated that one should be made. I was requested to make it forthwith and to deliver my reasons subsequently, if either party sought them. It is fair to say that the form of the order ultimately made was the consequence of much debate and careful consideration by the parties of the practical aspects of the matter. The substantial question was whether the respondent should be permitted to advertise that certain of its performers had appeared in the international festival at Monte Carlo, as contrasted with the circus. Counsel for the applicants pressed me with the submission that even to state what was the truth in respect of these performers could lead to confusion. Members of the public might well be unable to distinguish between the international festival at Monte Carlo and the Monte Carlo Circus, and thus be lead to believe that the respondent was presenting the latter circus. (at p141)

5. Ultimately I may be satisfied that, in a certain context, even to state the truth may be misleading, and I was pressed with authorities to this effect. However I am of opinion that on the present state of the evidence and at this stage of the proceedings I should not restrain the respondent in this regard. At this stage I am of opinion that the respondent should be permitted to advertise its performers' association with the international festival without giving such statement excessive prominence. If there is, in the opinion of the applicants, likelihood of confusion, this is in consequence of the close similarity of names, for which persons in Monte Carlo and not the respondent are responsible. Moreover, at least in part, the remedy lies in the hands of the applicants who can by their advertising and promotion over the next few months ensure that the public appreciates that it is the Monte Carlo Circus, or a substantial number of members thereof, which they are presenting to the public early in 1980. (at p141)

6. At the hearing I made the following orders, the reasons for which I am now publishing after the applicants through their counsel give the usual undertaking as to damages:
   
   1. The respondent be restrained pending the hearing of this application from using the words "Prince Rainier" "Princess Grace", "Monaco" or "Monte Carlo" in advertising or promoting whether by newspaper, radio, television, printed matter, programme or otherwise any circus presented by the respondent or in announcing any performers appearing in any such circus or in describing their acts, save that: (a) the respondent may in each such advertisement or promotion make one reference to its performers having appeared at the international festival held at Monte Carlo and in respect of each announcement may make one reference to a performer having so appeared and to the years in which they so appeared; (b) the size type used for the word "Monte Carlo" shall be no larger than the words "International Festival" and no larger than thirty per cent of the largest size type used for the words "Ashton's Circus"; (c) the respondent may notwithstanding pars. (a) and (b) hereof distribute until 31st December, 1979, or until the current stocks are exhausted whichever is the earlier, programmes in the form of exhibit "DGP 16" to the affidavit of David Geoffrey Petersen sworn 21st August, 1979; (d) in using size type for the words "Monte Carlo" in programmes hereafter printed size type no larger than that currently used for such words in the programme in the form exhibit "DGP 16" to the affidavit of David Geoffrey Petersen sworn 21st August, 1979, shall be used.
   
   2. The question of costs is reserved.
   
   3. The parties may have liberty to apply to dissolve this order or otherwise on forty-eight hours notice. (at p142)

ORDER

Orders accordingly.