Motorcharge Pty Ltd v Motorcard Pty Ltd

[1982] FCA 112

Re: MOTORCHARGE PTY. LTD.
And: MOTORCARD PTY. LTD. (1982) 64 FLR 153
No. WAG13 of 1982
Trade Practices - Injunction

COURT

IN THE FEDERAL COURT OF AUSTRALIA

WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
Toohey J.(1)

CATCHWORDS

Trade Practices - interlocutory injunction - credit card facilities - similar names, comparable activity - descriptive words - geographical range - established reputation - market - restraint of use of name only - Balance of convenience.

Trade Practices Act 1974 ss.52(1), 53(d)

Trade Practices - Consumer protection - Motorcharge business in Western Australia - Motorcard business in eastern States - Words descriptive of business activities - Both businesses providing credit facilities for petrol service stations and customers - Whether public was likely to be misled or deceived by use of similar business names - Whether Motorcharge had established reputation - Whether geographical range of business names was relevant - Markets - Balance of convenience - Trade Practices Act 1974 (Cth), s. 52(1).

Injunction - Interlocutory injunction - Geographical limitation of order - Whether public was likely to be misled or deceived by use of similar business names - Balance of convenience - Exercise of court's discretion - Trade Practices Act 1974 (Cth), ss. 52(1), 80.

HEADNOTE

The applicant company, Motorcharge Pty. Ltd. (Motorcharge), was incorporated in Western Australia on 25th March, 1981, with registered offices in three eastern States. Motorcharge had carried on the business of providing credit and facilities to petrol service station operators and their customers in Perth since June 1981.

In January 1982, directors of Motorcharge visited Sydney and Melbourne to promote Motorcharge facilities to oil companies and service station operators. Motorcharge was paid a fixed commission of 2.5 per cent by ninety-one operators and four dollars a month by 4,037 customers who held credit cards and participated in the scheme.

The respondent company, Motorcard Pty. Ltd. (Motorcard), was a Victorian company which had been acquired in February 1982 by D. who had incorporated a company in about August 1980 to conduct a business providing two computer operated facilities, one to deduct insurance payments from pay packets and the other to provide credit cards in the motor industry. About the end of November 1980, D. registered the name "Motorcard Services" in New South Wales, Victoria and South Australia. D. planned to put Motorcard into full operation in three eastern States in the middle of 1982.

Motorcard proposed to finance credit facilities for the purchase of fuel and other products from petrol service stations, for which each customer would pay Motorcard a monthly fee of four dollars. The service station operators would pay Motorcard a variable commission on "non-fuel" sales and a fixed annual fee would be negotiated with the operators for fuel sales.

On 11th May, 1982, two national newspapers publicized Motorcard's activities and on 17th May, 1982, Motorcharge sought an interlocutory injunction in the Federal Court of Australia to restrain Motorcard from using the words "Motor Card" in the promotion or conduct of its business. Alternative restraints sought ranged from one limited to Western Australia, to one limited to New South Wales and Western Australia, to a restraint with no geographical limitations.

The applicant alleged, inter alia, that the respondent's proposed use of the words "Motor Card" in its name and in connexion with its business constituted conduct which contravened the provisions of s. 52(1) of the Trade Practices Act 1974 (the Act). The respondent contended that in the circumstances each party had done no more than select a name descriptive of its business and that each party had chosen ordinary English words for its name which indicated an essential difference in the nature of the two businesses, namely, "charge" suggested a credit facility related to a particular undertaking, while "card" suggested a credit facility not confined to one business.

Held: (1) As a result of its activities since June 1981, the applicant had established, at least in Western Australia, a reputation by the name Motorcharge for the system of credit facilities it had introduced. However, despite the applicant's activities in New South Wales and Victoria, the court was not satisfied that its system had acquired a reputation in either of those States.

B.M. Auto Sales Pty. Ltd. v. Budget Rent A Car System Pty. Ltd. (1976) 51 ALJR 254, applied.

Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Ltd. (1978) 140 CLR 216; Snoid v. Handley (1981) 54 FLR 202, referred to.

(2) The applicant had established in relation to its activities in Western Australia that the carrying on of business by Motorcard in that State under that name would be likely to mislead or deceive members of the public.

Per Toohey J. - Without an injunction Motorcard may accelerate the extension of its activities, in which event Motorcharge would suffer from the resultant inevitable confusion that would be the "end result or consequence of misleading or deceptive conduct".

McWilliam's Wines Pty. Ltd. v. McDonald's System of Australia Pty. Ltd. (1980) 49 FLR 455, referred to.

(3) The balance of convenience would be against the grant of an interlocutory injunction in Victoria.

Per Toohey J. - Parties choose their own markets, often with reference to particular States, and it may be necessary to consider the geographical range of an applicant's activities and reputation.

Dairy Vale Metro Co-operative Ltd. v. Brownes Dairy Ltd. (1981) 54 FLR 243; Snoid v. Handley (1981) 54 FLR 202, referred to.

(4) Accordingly, the court would grant an interlocutory injunction until trial of the action or further order (1) restraining the respondent company from using the words "Motor Card" in the promotion or conduct of its business in Western Australia; (2) restraining the respondent company from distributing in Western Australia any advertisement or promotional statement in which the words "Motor Card" appeared.

HEARING

Perth, 1982, May 19;

Darwin, 1982, May 28. #DATE 28:5:1982

APPLICATION.

The applicant sought an interlocutory injunction pursuant to s. 80 of the Trade Practices Act 1974 (Cth) alleging, inter alia, contravention of the provisions of s. 52(1) of the Act.

R. S. French, for the applicant.

P. L. Seaman Q.C. and M. B. Plunkett, for the respondent.

Cur. adv. vult.

Solicitors for the applicant: Warren McDonald French Harrison.

Solicitors for the respondent: Lohrmann Tindal & Guthrie.

J. D. WHITEHEAD

Orders accordingly.

JUDGE1

The business of financing credit facilities has moved into the world of service station operators.

The applicant Motorcharge Pty. Ltd. was incorporated in Western Australia on 25 March 1981. In September it was registered as a foreign company in South Australia, Tasmania, Australian Capital Territory and Northern Territory. It has registered principal offices in Victoria, Queensland and New South Wales. It is a company of some substance. Its issued capital is 250,000 one dollar shares, fully paid. Shareholders' loans exceed $1,000,000. Its shareholding is in the hands of four companies; since November Lombard Australia Limited has held 50% of the shares.

Since June 1981 Motorcharge has carried on the business of providing credit card facilities, credit cards and credit control to petrol service station operators and their customers. The system, as described in the affidavit of Garry Edward Cooper sworn 18 May 1982 and in other material filed in these proceedings, operates in this way. Motorcharge enters into an agreement with a service station operator to provide a credit facility and to that end installs a terminal at the service station. Customers of that service station who wish to participate in the scheme receive a credit card, enabling them to buy petrol and other products on credit. Transactions are recorded upon a cassette tape in the terminal through a keyboard which enters details of the transaction. An impulse reader on the terminal then electronically "reads" the credit card so as to record a number identifying the customer with the particular transaction. Every two days a representative of Motorcharge collects cassettes from the operator and the information recorded is transferred to a master tape which is then processed through an electronic data processing bureau into a detailed statement of transactions for the service station concerned. Each time the representative calls at the service station he pays to the operator an amount equal to the total credit turnover for the last statement less 2.5% of that amount. Each 30 days Motorcharge produces to the individual customer a statement showing his transactions and the amount payable. Each card holder pays a fee to Motorcharge of $4.00 a month. Thus the operator benefits from an early payment of his credit transactions, the customer has the advantage of credit facilities and Motorcharge gets its profit from the 2.5% commission paid by the operator and the monthly fee of $4.00 paid by the customer.

In the light of later events giving rise to these proceedings, it is important to note two other features of the scheme. One is that a Motorcharge credit card is issued in respect of a particular vehicle and a specified card-holder and relates to one service station only. A person who has more than one vehicle may obtain more than one card but still in respect of a specified service station. The other feature is that the commission of 2.5% is applicable whatever the product, be it fuel, oil or even repairs. At the time of the hearing there were 91 service station operators using the Motorcharge system and 14 who had agreed to its installation. All those terminals were in the Perth metropolitan area though an agreement had been made for the installation of one terminal in Manjimup and negotiations were taking place for the installation of others in Bunbury. There are 4,037 persons or companies holding Motorcharge cards and 9,126 vehicles in respect of which cards have issued. The apparent discrepancy in these figures is explained by the fact that some card-holders are fleet owners and are issued with one card for each vehicle in the fleet using the system.

Motorcharge has begun to promote its system beyond Western Australia but I shall say more about that when considering the relative activities of the parties to these proceedings.

The respondent Motorcard Pty. Ltd. is a Victorian company, starting life as a shelf company under the intriguing but inappropriate name of Seventieth Ecstasy Pty. Ltd. That company was acquired in February 1982. Those connected with Motorcard, had as early as the beginning of 1980, been contemplating the idea of a computer providing credit card facilities. It was the brain child of Brian James Delaney, its present managing director, whose original concept was of a computer providing two facilities, one for the deduction of insurance payments from pay packets and the other for the provision of credit cards in the motor industry. That may seem an unlikely combination; Mr. Delaney explained that he was interested initially in deductions for insurance payments but that the installation of a computer for such a limited activity would be uneconomical, hence the need to couple it with something else. He tried to register the name Autocard as a business name in Victoria but the name Autocharge was already registered. He then considered the name Fuelcard but since the operation he had in mind related to all automotive requirements, that name seemed unsuitable. In about August 1980 he incorporated Payroll Deductions Services of Australia Pty. Ltd. ("P.D.S.") to conduct a business giving effect to both concepts. P.D.S. acquired a computer and began its programme of payroll deductions on 1 September 1980, first in Melbourne, then in Sydney and then in Adelaide. About the end of November 1980 the board of P.D.S., on Mr. Delaney's advice, decided to use the name Motorcard and thereafter upgraded its computer facilities, registered the name Motorcard Services in New South Wales, Victoria and South Australia and generally began to sell the concept to service stations in Victoria. After market surveys and the like, P.D.S. decided, in Mr. Delaney's words, "to put Motorcard into full operation on the 10th May 1982 in Victoria, 1st July 1982 in New South Wales and on the first week in August in Queensland".

It will be necessary to say something more of Motorcard's activities within and without Victoria. It will also be necessary to make a closer examination of the two systems. For the present however it is enough to say that Motorcard proposes to finance credit facilities for the purchase of fuel and other products from service stations. It will do so through a credit card which the customer presents to the service station. There is no computer terminal at the service station, transactions being recorded on paper vouchers rather similar to those used in the "bankcard" system. Each week a Motorcard representative collects the vouchers and payment is made monthly. The customer pays a monthly fee of $4.00 to Motorcard. The operator pays a commission on what was referred to as "non-fuel sales", the commission varying according to the amount of turnover. For fuel sales no commission is payable but a flat fee is negotiated between Motorcard and the service station operator.

Motorcard's activities attracted the attention of the media and on 11 May 1982 two national newspapers, The Australian and The Financial Review, published details of an interview with Mr. Delaney, the former under the heading "Credit cards for motorists" and the latter under the heading "Credit card for the motorist".

On 17 May Motorcharge filed in the Federal Court, Western Australia District Registry, an application for an injunction against Motorcard. The injunction sought is one restraining the respondent from using in the promotion or conduct of its business the words "Motor Card". It is framed in alternatives, ranging from a restraint with no geographical limitation, through one limited to New South Wales and Western Australia, to one limited to Western Australia. The matter came on for hearing as an application for an interlocutory injunction. It was brought on at short notice and my availability was limited. Nevertheless it proved possible through the industry and co-operation of counsel and those instructing them to complete the hearing over a very long day. Many questions of law and of fact were canvassed. A number of affidavits were filed and a number of deponents cross-examined on those affidavits. I shall confine these reasons to a consideration only of those issues that need to be determined for the purpose of this application. In particular, there are some areas of factual dispute that only a trial of the action can resolve.

The approach to be taken by the Court when there is an application for an interlocutory injunction was discussed by the High Court in Beecham Group Ltd. v. Bristol Laboratories Pty. Ltd. (1968) 118 CLR 618 and in decisions of this Court including World Series Cricket Pty. Ltd. v. Parish (1977) 16 ALR 181, Commercial Bank of Australia Ltd. v. Insurance Brokers Association of Australia (1977) 16 ALR 161, Transport Workers Union of Australia v. Leon Laidley Pty. Ltd. (1980) 28 ALR 589 and Colgate Palmolive Pty. Ltd. v. Rexona Pty. Ltd. (1981) 37 ALR 391. Before such an injunction will be granted, the applicant must show a prima facie case, that is that as the evidence stands it has a fair chance of success. If a prima facie case is shown, the Court must then consider the balance of convenience. In the case of proceedings under s.52 of the Trade Practices Act 1974, as these are, convenience is not restricted to the parties themselves. There is the element of public interest to be taken into account.

The statement of claim pleads four causes of action arising from the use and the proposed use by the respondent of the words "Motor Card" in its name and in connection with its business. Those causes of action are -
1. Conduct in trade or commerce which is misleading or deceptive or likely to mislead or deceive contrary to s.52(1) of the Trade Practices Act.
2. A representation in trade or commerce in connection with the promotion of the use of services that the respondent has an affiliation it does not have, contrary to s.53(d) of the Trade Practices Act.
3. Passing off.
4. Unfair competition.

Without in any way abandoning the other causes of action, Motorcharge concentrated its argument on s.52(1) of the Trade Practices Act and it is to that aspect I now turn.

Motorcard's answer that there had been no contravention of s.52(1) had several bases. At the forefront was a submission that the name chosen by each of the parties was essentially descriptive of its activities and no more. Motorcard did not go so far as to suggest that as a matter of law the use of descriptive words in the name of a business could never be a cause of complaint that there had been deceptive or misleading conduct. But it contended that in the particular circumstances of this case each of the parties had done no more than select a name descriptive of the business that it was carrying on.

The drawback of selecting what he described as "an eloquently descriptive trade-name", was spelt out by Stephen J. in Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Ltd. (1977-1978) 140 CLR 216 at p.229.

"Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public . . . the possibility of blunders by members of the public will always be present when names consist of descriptive words . . . The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly on those words and might even deter others from pursuing the occupation which the words describe".

Motorcard's case for descriptiveness was based upon the fact that each party had chosen ordinary English words to constitute its name, recognising that in the case of the applicant it had blended two words into one. And, said the respondent, not only are those ordinary English words, but the names chosen indicate an essential difference in the nature of the two businesses. In commerce the term "charge" suggests a credit facility related to a particular undertaking, as in the case of charge accounts held by customers with particular stores. On the other hand a "card" suggests a credit facility not confined to one business. Thus Bankcards, American Express cards and Diners Club cards may be used to obtain goods on credit from a wide range of sources over a wide geographical area. Motorcharge confines its credit to a particular service station; Motorcard provides that facility to the customer dealing with any service station which is part of the system. And, the respondent submits, the use of the word "motor" in each name is no more than descriptive of the nature of the business to which the credit facility relates.

Mr. French, counsel for the applicant, submitted that the word "Motorcharge", though possessing a descriptive element, cannot be readily characterised as purely descriptive of the system. He distinguished the Hornsby Building Information Centre case on the ground that each of the competing names there under consideration did no more than describe the nature of the business, (a building information centre) and indicate its locality (in one case Hornsby, and in the other Sydney). Mr. French referred to Rolls Royce Motors Ltd. v. D.I.A. (Engineering) Pty. Ltd. (1981) ATPR 40-209 where Lockhart J. restrained the use of the name "Phantom" in connection with a motor vehicle. His Honour did so in a suit brought by Rolls-Royce Motors Ltd. which showed that "Phantom" was a word "which, in motor car circles has been associated with Rolls-Royce motor cars for over 50 years" (at p.42, 898). It is apparent from a reading of the judgment that it was not the name alone that lead to the granting of the injunction, but rather the name coupled with the emblem and grille on the offending motor vehicle. That is not to say that the use of the word "Phantom" alone might not have lead to the granting of an injunction, only that in the circumstances it was the overall "get up" that was complained of.

A recent decision that is more in point is Snoid v. C.B.S. Records Australia Ltd. (1981) 38 ALR 383 in which the Full Court of the Federal Court upheld in principle an injunction restraining, at the suit of a rock music band called Popular Mechanics, another band from using the name Pop Mechanix. The matter seems to have been approached on the basis of the reputation obtained by Popular Mechanics and the extent to which the respondent's name, in the context of popular music, might mislead or deceive. It does not appear to have been argued that the applicant, having selected two ordinary words to constitute its name (although that combination of words has become well known through the magazine Popular Mechanics), could not complain of misleading or deceptive conduct on the part of the respondent.

In my view the name "Motorcharge" is not simply descriptive. No doubt it gives a clue as to the nature of the business with which it is connected, suggesting some method of credit in connection with the motor industry. But it says little more than that; particularly when used as a composite term, it is capable of acquiring a reputation distinctive of the applicant's business activity. The real questions are whether "Motorcharge" has become distinctive of the applicant's business and whether the use of the name "Motor Card" is likely to mislead or deceive. See B.M. Auto Sales Pty. Ltd. v. Budget Rent A Car System Pty. Ltd. (1977) 51 ALJR 254.

I am satisfied that as a result of its activities since June last year Motorcharge has established, at least in Western Australia, a reputation by that name for the system of credit facilities it has introduced. I reach that conclusion for a number of reasons. In particular there are 91 service station operators using the Motorcharge system and 14 who have agreed to do so. There are 4,037 persons or companies holding Motorcharge cards. Motorcharge has promoted its activities by providing explanatory brochures to service station operators, oil companies and the W.A. Automobile Chamber of Commerce. On 21 August 1981 it prepared a press release relating to its activities, a press release which received publicity in a number of newspapers and journals published in Western Australia and elsewhere. In November 1981 it made known that Lombard Australia Limited had obtained a 50% interest in the applicant company and this too received publicity. In addition there has been other coverage in newspapers and television.

There has been some promotion of Motorcharge in New South Wales. In January 1982 Bernard Thomas Eastman, the managing director of the applicant, and Richard Malkin Bradley Reynolds, a director, went to Sydney to promote Motorcharge and there spoke to representatives of a number of oil companies and of the Service Station Association of New South Wales. In March this year Garry Edward Cooper, Motorcharge's business manager, went to Sydney where he remained for a few days. While there he addressed a meeting of members of the Service Station Association of New South Wales and made contact with major oil companies to explain the applicant's proposals. As well he spoke to some 25 service station operators and left with them and the organisations to which he spoke a quantity of promotional material.

After the Sydney visit, Mr. Eastman and Mr. Reynolds went to Melbourne where they saw representatives of major oil companies, explained the Motorcharge system and left promotional material.

Despite Motorcharge's activities in New South Wales and Victoria, I am not satisfied that its system has acquired a a reputation in either of those States. Cf. B.M. Auto Sales Pty. Ltd. v. Budget Rent A Car System Pty. Ltd. supra at p.258. Section 52(1) of the Trade Practices Act prohibits a corporation, in trade or commerce, from engaging in conduct that is misleading or deceptive or is likely to mislead or deceive. In the context of trade or commerce in a federal statute it may be thought artificial to consider the operation of s.52 with respect to particular States. But as I suggested in Dairy Vale Metro Co-Operative Ltd. v. Brownes Dairy Ltd. (1981) ATPR 40-215 at p.42,942:

"It is not a matter of State boundaries but rather of marking out the area of the respondent's conduct under examination by the Court. This does not exclude consideration of any reputation Dairy Vale's products may have gained elsewhere but unless those products are known to the public in Western Australia it is hard to see how that public may be misled or deceived."

It is the parties who choose their own markets and, as is often the case, they do so with reference to particular States. In the case in hand Motorcharge has built up its business in Western Australia and its activities outside that State have not yet gone beyond promoting some awareness of its system. On the other hand Motorcard has concentrated its activities in Victoria.

The need to consider the geographical range of an applicant's activities and reputation was recognised in Snoid v. C.B.S. Records Australia Ltd. supra where the injunction was confined to promotion and performances in Sydney and Canberra. There may be difficulties in formulating an injunction limited in geographical terms where the promotion of products takes the form of advertising in national newspapers. But it is a matter of formulation rather than of principle.

I turn now to the question whether the use by the respondent of the term "Motor Card" is, in the circumstances, conduct that is misleading or deceptive or is likely to mislead or deceive.

It is important to bear in mind that what Motorcharge seeks to restrain is the use of a name in connection with a particular commercial activity. It makes no complaint of the fact that Motorcard has entered the field of financing credit facilities in connection with the purchase of products from service stations. It does not seek to deter Motorcard from pursuing its activities so long as it does so under a name which is not likely to mislead or deceive the public. In that sense Motorcharge makes no claim to a monopoly. It recognises, as it must, that there are differences in the two systems. Its complaint is that the public will lose sight of those differences because of the use of similar names in comparable business activities. The essential differences between the two systems are clear enough. Motorcharge confines its credit facilities to a particular service station while Motorcard makes its facilities available within the system. In each case the customer pays a similar monthly amount but from the operator's point of view there is a marked distinction. Motorcharge charges the operator a fixed commission of 2.5% on turnover. Motorcard debits the operator with a variable commission on non-fuel products and a fixed annual sum on fuel sold. Each company uses a card and that card figures in its promotional activities. Each is similar in size. Motorcharge currently uses a card with a grey background and black lettering set into a yellow section of the card. It features the word "Motorcharge" with a logo representing an "M" to the left of the name and with "Lombard Finance", and that company's symbol, to the right. Motorcard uses a white card with the words "Motor Card" and logo, written in blue, against a bright yellow background. Put side by side one is not likely to confuse the two cards.

To lay too much stress upon the differences in the systems themselves is rather to miss the point of Motorcharge's complaint. The same is true, though to a lesser extent, with a comparison of the cards. This is not the case of a complaint that the "get up" or "livery" of a competitor is misleading or deceptive. In such a situation the matter may often be resolved largely by looking at the products themselves. The complaint may go further and relate to advertising and other promotional activities but even then it may in the end be a question of the visual similarity of the products.

Of course if one sat down and compared the two systems, there are important differences between Motorcharge and Motorcard. And anyone familiar with the system of Motorcharge, reading the articles in The Financial Review and The Australian would, on careful perusal, see that a different system was being discussed. But I do not think that is the approach to be taken. Rather it is this. Accepting that within Western Australia Motorcharge has acquired a reputation for a system of financing credit facilities in regard to service stations, are members of the public (service station operators and car owners) who read of Motorcard's activities likely to be misled or deceived into thinking that if they deal with Motorcard they are dealing with Motorcharge?

In my view they are likely to be so misled or deceived. Both companies are in the business of financing credit facilities in the motor industry. That is the reputation Motorcharge has established and the activities by which it is known. Although the systems differ, Motorcard is essentially in the same business. Motorcard is using a name "Motor Card", one word of which is identical with one half of Motorcharge's name. And although the notions of being able to charge something and having a credit card are not the same, that is not a difference likely to strike a member of the public when faced with the similarity of names and activities. In my view Motorcharge has established, in relation to its activities in Western Australia, that the carrying on of business by Motorcard in that State under that name is likely to mislead or deceive members of the public. The evidence of Jane Cargo, Patrick Edward Ryan Philip Anthony Dodds, David John Twort and Christopher Houghton Moralee suggests that it has already happened.

Where then does the balance of convenience point? There was evidence from Mr. Delaney that in May 1981 Michael Cotton, now one of Motorcharge's directors, spoke with Mr. Delaney in Melbourne. Mr. Cotton was employed by Perpetual Trustees W.A. Ltd., a company which now has a 20% shareholding in Motorcharge. Mr. Cotton told Mr. Delaney that he knew of the concept being developed by P.D.S. and asked if Mr. Delaney was interested in an association with a company with which Perpetual Trustees was connected, "whereby P.D.S. would limit itself to operations in the Eastern States and whereby a facility would be granted to card holders for the organisation which he was interested in to use our facility." At that time P.D.S., as Cotton was told, had registered Motorcard Services as business names. Mr. Delaney's evidence was not challenged. But Mr. Cooper said he had no recollection of being told of Mr. Cotton's visit to Melbourne. Mr. Eastman was aware of the visit at the time but his understanding was that the conversation had related to a payroll deduction system. He added: "The only other thing that was briefly mentioned about was something to do with the motor industry in so far as panel beating shops or something like that was concerned". As the evidence presently stands I am unable to conclude that Motorcharge commenced its activities with knowledge of Motorcard's interest in a similar operation or of the likelihood that Motorcard might in due course extend its activities to Western Australia.

I have already dealt with the extent of Motorcharge's operations in Western Australia. Motorcard has embarked upon an extensive promotional and advertising campaign, concentrated at this stage on Victoria. At the time of the hearing of this application on 19 May, P.D.S. had, according to Mr. Delaney, "decided to put Motorcard into full operation on the 10th May 1982 in Victoria, 1st July 1982 in New South Wales and on the 1st week in August in Queensland". No immediate steps are proposed in regard to Western Australia except to the extent that any national advertising may have some influence in that State. As to coming to Western Australia, Mr. Delaney said: "If the financial viability is such that Western Australia would form an attractive part of our national organisation then we would do it.". At the earliest it would be some months before Motorcard began any advertising or promotional campaign in that State and, what is important from the point of view of the balance of convenience, before it incurs any expenditure in that regard.

To injunct Motorcard by reference to activities in Western Australia will not cause it any immediate inconvenience. Inconvenience is likely to arise only at that time when in the ordinary course of events Motorcard would have sought to extend its activities westwards. The parties and their advisers showed considerable industry and co-operation in having the interlocutory proceedings heard at short notice and there would seem to be no reason why a trial of the action could not take place within three months or so. It may be said that if there is likely to be a trial before Motorcard seeks to extend its activities into Western Australia, it can hardly inconvenience Motorcharge if no interlocutory injunction is granted. In a sense that is true, but without an injunction Motorcard may accelerate the extension of its activities in which event Motorcharge stands to suffer from the confusion that must inevitably result. I speak of the confusion that is, "the end result or consequence of misleading or deceptive conduct" (Fisher J. in McWilliams Wines Pty. Ltd. v. McDonalds Systems of Australia Pty. Ltd. (1980) 33 ALR 394 at p.412)

Since I am of the opinion that Motorcharge has established a reputation for its system only in Western Australia and that the public elsewhere is not likely to be misled or deceived by the activities of Motorcard, it is unnecessary for me to consider the balance of convenience elsewhere. I would just say this. In view of the evidence of the activities of Motorcard in Victoria, including considerable expenditure on equipment and staff, promotion and advertising, and the very limited activity on Motorcharge's part in that State, the balance of convenience would be against the grant of an interlocutory injunction in Victoria.

In summary then I am of the opinion that there should be an injunction pending trial restraining Motorcard from using in Western Australia the name "Motor Card" in the promotion or conduct of its business. There should also be an injunction restraining Motorcard from distributing in this State any advertisement or promotional statement in which the words "Motor Card" appear. It may be that media coverage of Motorcard's activities elsewhere will percolate through to Western Australia but so long as that is not done at the instance of Motorcard it is unlikely that the terms of the injunction would be breached.

Upon the applicant giving the usual undertaking as to damages (which was given during the hearing), there will be an injunction until trial of this action or further order
1. restraining the respondent, its directors, officers, servants and agents from using or authorising or permitting the use in the promotion or conduct of its business in Western Australia of the words "Motor Card";
2. restraining the respondent, its directors, officers, servants and agents from placing in any newspaper or other publication customarily distributed in Western Australia any advertising or promotional statement in which the words "Motor Card" appear.

The costs of the application for an interlocutory injunction will be reserved. There will be liberty to the parties to apply.

I direct that by 4.30p.m. on Wednesday 2 June 1982 the parties lodge with the District Registrar a minute signed by counsel to give effect to these reasons. If there is any dispute as to the terms of the order I shall hear from counsel.