Munchies Management Pty Ltd v Belperio

[1989] FCA 413

C A T C H W O R D S

TRAog M K S and TRADE M E S - old established business name - use of name abandoned - use by new company - different locations and styles of business - name not distinctive - whether interlocutory injunction should be granted.

Prudential Finance Holdings Limited & Anor

v.    Network Finance h Insurance S e r v i c e s t y Ltd

Qld ~ 4 8	of fl8g
--	PINCUS J.

B R I S B ~ E

JULY 1989

IN THE FEDERAL COURT OF AUSTRALIA	)
QUEENSLAND DISTRICT REGISTRY	) QLD G48 of 1989

GENERAL DIVISION 1

BETWEEN: PRUDENTIAL FINANCE HOLDINGS LIMITED

First Applicant

AND: PRUDENTIAL FINANCE LIMITED

Second Applicant

AND: NETWORK FINANCE & INSURANCE SERVICES PTY LTD

Respondent

MINUTES OF ORDER

JUDGE MAKING ORDER:	PINCUS J.
DATE OF ORDER:	28 JULY 1989
WHERE MADE:	BRISBANE
THE COURT ORDERS THAT:

1.   the application for interlocutory relief be dismissed;

2.    the costs of and incidental to the application be the respondent's costs in the proceedings.

NOTE :	Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA	1
QUEENSLAND DISTRICT REGISTRY	1  QLD G48 of 1989
GENERAL DIVISION	)

BETWEEN: PRUDENTIAL FINANCE HOLDINGS LIMITED

First Applicant

AND: PRUDENTIAL FINANCE LIMITED

Second Applicant

AND: NETWORK FINANCE & INSURANCE SERVICES PTY LTD

Respondent

PINCUS J . 28 JULY 1989

REASONS FOR JUDGMENT

This is another instance of an attempt to prevent a respondent using a business name which the applicant has never used, or no longer uses. The applicants seek interlocutory relief only, but counsel for the parties devoted considerable attention to the strength of the applicants' case and it is necessary to say

something on that subject.

The applicants are substantial enterprises connected with the famous Prudential insurance group. The respondent is a small suburban company. For some 23 years, up to 23 May 1988, the first applicant was called "Network Finance Limited" and for some three years to the same date, the second applicant was called "Network Financial Services Limited". The applicants say they have carried on business as financiers and providers of financial services and advice, but the respondent's managing director, Mr

A.G. Morfoulis, says that as far as he knows the applicants are

not involved in financial broking nor in acting as agents for insurance companies. It seems to me likely that the applicants'

main business is the provision of finance - money lending and the

like.

The applicants carry on business in a building in Queen Street known as Network Finance House.

It is not stated why the applicants changed their names as they did on 23 May 1988, from "Network" to "Prudential".	They
publicised the changes extensively.

Some six months after that change, the respondent, which had been "R. & G. Finance Underwriters Pty Ltd", changed its name to "Network Finance h Insurance Services Pty Ltd". Its business -

although, I must say, this is not very clear from its advertising

- is not money lending but finance broking. It does not lend

money but makes applications for finance to companies which do so,	and arranges the making of a loan agreement between a customer and	a finance company. Nearly all its business comes from used car
dealers. In addition, the respondent acts as agent for insurance companies, arranging motor vehicle insurance and other insurances, presumably in connection with the provision of finance. I would take it that the applicants also arrange insurances.
There once might have been thought to be but slim support for proceedings of this kind, but there is now a substantial volume of authority in favour of protection, in some circumstances, of names which have been either permanently or temporarily abandoned: see, for example, Berkeley Hotel Co. Ltd v. Berkeley International (Mayfair) Ltd I19721 RPC 237, Ballarat Products Ltd v. Farmers Smallgoods Co. Pty Ltd [l9571 VR 104, Elders IXL Ltd v. Australian Estates Pty Ltd (1988) 78 ALR 171 and ACI Australia Ltd V. Glamour Glaze Pty Ltd (1988) 10 ATPR 40-868. Only in the last two cases was there, as here, no likelihood of the applicant's using the name in question again.
Accepting that it is possible to succeed in a case of the kind just mentioned, it appears to me likely that there will be a tendency to be cautious in granting relief in respect of abandoned names. As a practical matter, use of such a name must have a less misleading tendency than use of the current name of a business. Here, it seems to me quite unlikely that people who were used to dealing with, or otherwise familiar with, the name "Network Finance" as used by the applicants would be misled by the respondent's conduct. The respondent carries on its business, not in the central business district, but in the outer suburb of Springwood and apparently advertises in a newspaper circulating in
that area. It uses in its advertisements the full name "Network Finance and Insurance Services Pty Ltd", all the words being in the same type; it promises to continue to advertise in that way. Its business is not of the same kind as that of the applicants, since it does not itself provide money. It uses a name which it claims to have something of a descriptive character. While not convinced of the descriptiveness, I am satisfied that the name "Network" is not particularly distinctive, but is used by a variety of businesses in Brisbane, as the telephone directory shows.
As to discretionary aspects, it is my opinion that it is improbable that the applicants will suffer any loss or damage pendente lite as a result of the respondent's continued use of its name. Although the respondent has been using its name since December last, there is no evidence of anyone's being misled or even confused, temporarily or otherwise.
In this rather unpromising application, it would seem to me a wrong exercise of discretion to grant interlocutory relief; the balance of convenience appears to me to favour the respondent and the application for interlocutory relief will be dismissed. The costs will be the respondent's costs in the proceedings.

; certify tba+ this and the 13 prece,jlll,

Paws are a true copy of th- reasons for

judgment herein of His Honour

Mr. Justice P. lncus // 11

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