National Roads and Motorists Association Ltd v Construction, Forestry, Maritime, Mining and Energy Union
[2019] FCA 1491
•11 September 2019
FEDERAL COURT OF AUSTRALIA
National Roads and Motorists’ Association Limited v Construction, Forestry, Maritime, Mining and Energy Union [2019] FCA 1491
File number: NSD 1065 of 2019 Judge: GRIFFITHS J Date of judgment: 11 September 2019 Catchwords: TRADE MARKS – infringement proceeding under ss 120(1) and (3) of the Trade Marks Act 1995 (Cth) – where a trade union is using a sign depicting the applicant’s brand or logo as part of an industrial campaign against the employer – where the employer is a wholly owned subsidiary of the applicant – whether the union’s sign is being used as a trade mark – no use of the sign as a trade mark
CONSUMER LAW – claims of misleading or deceptive conduct arising from representations made during the course of an industrial campaign – whether impugned conduct is “in trade or commerce” – principles derived from Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594 considered – conduct not “in trade or commerce”
TORTS – claims of injurious falsehood arising from statements and representations made during an industrial campaign – malice – necessity to establish actual damage – no malice or actual damage
Legislation: Competition and Consumer Act 2010 (Cth) ss 4, 6, Sch 2 ss 2, 18 and 29
Fair WorkAct 2009 (Cth) ss 345 and 349
Fair Work (Registered Organisations) Act 2009 (Cth)
Judiciary Act 1903 (Cth) s 78B
Trade Marks Act 1995 (Cth) ss 10, 17, 120 and 185
Trade Practices Act 1974 (Cth) ss 4 and 52
Work Health and Safety Act 2011 (Cth)
Fair Trading Act 1987 (NSW)
Fair Trading Act 1999 (Vic) s 9
First Council Directive 89/104/EEC art 5
European Parliament and Council Directive 2015/2436 art 10
Trade Mark Act of 1946 s 43, 15 U.S.C. § 1125(c)(1)(2012)
Marrakesh Agreement Establishing the World Trade Organization. Opened for signature 15 April 1994. 1867 UNTS 3 (entered into force 1 January 1995). Annex 1C (‘Agreement on Trade-related Aspects of Intellectual Property Rights’) art 16
Paris Convention for the Protection of Industrial Property. Opened for signature 20 March 1883 (entered into force 7 July 1884) art 6bis
Cases cited: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205
AMI Australia Holdings Pty Ltd v Fairfax Media Publications Pty Ltd [2010] NSWSC 1395; [2011] Aust Torts Reports 82-077
Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 259 FCR 514
APLA Limited v Legal Services Commissioner of New South Wales [2005] HCA 44; 224 CLR 322
Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd [2016] FCAFC 22; 329 ALR 522
Astra Recourses Plc v Full Exposure Pty Ltd [2012] FCA 1061
Australian Securities and Investments Commission v Accounts Control Management Services Pty Ltd [2012] FCA 1164
Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641
Beecham Group plc v Colgate-Palmolive Pty Ltd [2004] FCA 1335; 64 IPR 45
Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838; 66 IPR 254
C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; 299 ALR 752
Carnival Cruise Lines Inc v Sitmar Cruises (1994) 120 ALR 495
Clubb v Edwards [2019] HCA 11; 366 ALR 1
Commonwealth Bank of Australia v Kojic [2016] FCAFC 186; 249 FCR 421
Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594
Fasold v Roberts (1997) 70 FCR 489
Firewatch Australia Pty Ltd v Country Fire Authority [1999] FCA 761; 93 FCR 520
Giraffe World Australia Pty Ltd v Australian Competition and Consumer Commission [1998] FCA 1560; (1999) ATPR 41-669
Google Inc v Australian Competition and Consumer Commissioner [2013] HCA 1; 249 CLR 435
Haines v Australian Broadcasting Corporation (1995) 43 NSWLR 404
Houghton v Arms [2006] HCA 59; 225 CLR 553
Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Jones v Dunkel (1959) 101 CLR 298
Knight v Victoria [2017] HCA 29; 261 CLR 306
Madden v Seafolly Pty Ltd [2014] FCAFC 30; 313 ALR 1
Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd [1976] 2 NSWLR 124
McCloy v New South Wales [2015] HCA 34; 257 CLR 178
Meadow Gem Pty Ltd v ANZ Executors & Trustee Co Ltd (1994) ATPR (Digest) 46-130
MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236
Neville Mahon v Mach 1 Financial Services Pty Ltd [2012] NSWSC 651; 96 IPR 547
Orion Pet Products Pty Ltd v Royal Society for the Prevention of Cruelty to Animals (Vic)Inc [2002] FCA 860; 120 FCR 191
Palmer Bruyn & ParkerPty Ltd v Parsons [2001] HCA 69; 208 CLR 388
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; 149 CLR 191
Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379
Plimer v Roberts (1997) 80 FCR 303
Proctor & Gamble Australia Pty Limited v Energizer Pty Limited [2011] FCA 1347
Ratcliffe v Evans [1892] 2 QB 524
Re application by Pfizer Products Inc [2004] ATMO 25; 61 IPR 165
Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020; 93 FCR 365
Roberts v Bass [2002] HCA 57; 212 CLR 1
San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842; 50 IPR 321
Seafolly Pty Ltd v Madden [2012] FCA 1346; 297 ALR 337
TCN Channel Nine Pty Ltd v Ilvariy Pty Ltd [2008] NSWCA 9; 71 NSWLR 523
The Hershey Company v Friends Of Steve Hershey 33 F. Supp. 3d 588 (D. Md. 2014)
The Shell Company of Australia Pty Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407
Tobacco Institute of Australia Ltd v Woodward (1993) 32 NSWLR 559
Unilan Holdings Pty Ltd v Kerin [1992] FCA 211; 35 FCR 272
Universal Film Manufacturing Co (Australasia) Ltd v New South Wales (1927) 40 CLR 333
V Secret Catalogue, Inc v Moseley 605 F. 3d 382 (6th Cir. 2010)
Village Building Co Ltd v Canberra International Airport Pty Ltd [2004] FCA 133; 134 FCR 422
Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661
Westpac Banking Corporation v Wittenberg [2016] FCAFC 33; 242 FCR 505
Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89
Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; 154 FCR 97
Wotton v State of Queensland [2012] HCA 2; 246 CLR 1
Frank Schechter, “The Rational Basis of Trade Mark Protection” (1927) 40 Harvard Law Review 813
Mark Davidson and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off, 6th ed, 2016 [85.800], [85.795]
Maurice Gonsalves and Patrick Flynn, “Dilution Down Under: The Protection of Well-Known Trade Marks in Australia” [2006] European Intellectual Property Review 174
Michael Handler, “Trade Mark Dilution in Australia?” [2007] European Intellectual Property Review 307
Halsbury’s Laws of Australia vol 10 [145-835]-[145-845]
Date of hearing: 2, 5 and 6 August 2019 Registry: New South Wales Division: General Division National Practice Area: Commercial and Corporations Sub-area: Regulator and Consumer Protection Category: Catchwords Number of paragraphs: 221 Counsel for the Applicant: Mr R Cobden SC and Mr P Flynn Solicitor for the Applicant: Gilbert + Tobin Counsel for the Respondent: Mr M Gibian SC and Mr A Slevin Solicitor for the Respondent: Slater & Gordon Lawyers ORDERS
NSD 1065 of 2019 BETWEEN: NATIONAL ROADS AND MOTORISTS' ASSOCIATION LIMITED (ACN 000 010 506)
Applicant
AND: CONSTRUCTION, FORESTRY, MARITIME, MINING AND ENERGY UNION
Respondent
JUDGE:
GRIFFITHS J
DATE OF ORDER:
11 SEPTEMBER 2019
THE COURT ORDERS THAT:
1.The originating application dated 5 July 2019 be dismissed.
2.The applicant pay the respondent’s costs, as agreed or taxed.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
TABLE OF CONTENTS
A. INTRODUCTION
[1]
B. SOME BACKGROUND MATTERS
[3]
C. NRMA’S CASE SUMMARISED
[12]
(a) Trade marks infringements
[15]
(b) Elements common to both ss 120(1) and (3) of the TM Act
[18]
(i) Substantially identical with or deceptively similar to the trade mark
[19]
(ii) Use of the Offending Logo “as a trade mark”
[20]
(iii) Trade mark infringement under s 120(1)
[30]
(iv) Trade mark infringement under s 120(3)
[31]
(v) The criteria for the application of s.120(3)
[34]
Section 120(3)(a): the NRMA trade marks are well-known in Australia
[34]
Section 120(3)(b): the MUA uses as a trade mark a sign which is substantially identical with, or deceptively similar to, the NRMA trade marks in relation to unrelated goods or services
[35]
Section 120(3)(c): because the trade mark is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark
[38]
Section 120(3)(d): for that reason, the interests of the NRMA are likely to be adversely affected
[47]
(b) Misleading or deceptive conduct
[49]
(i) Is the conduct in trade or commerce?
[50]
(ii) The safety representation
[52]
(iii) The non-permanency representations
[56]
(iv) The wages representation
[61]
(v) The derogatory representations
[62]
(vi) The licence representation
[63]
(c) Injurious Falsehood
[65]
Malice
[68]
Actual damage
[74]
(d) Implied Freedom of Political Communication
[83]
D. THE MUA’S CASE SUMMARISED
[87]
E. CONSIDERATION AND DETERMINATION
[92]
(a) Trade marks infringements
[93]
(b) Elements common to both ss 120(1) and (3) of the TM Act
[96]
(i) Substantially identical or deceptively similar
[97]
(ii) Use of the Offending Logo “as a trade mark”
[111]
(iii) Trade mark infringement under s 120(1)
[115]
(iv) Trade mark infringement under s 120(3)
[116]
(b) Misleading or deceptive conduct
[130]
(i) Is the conduct in trade or commerce?
[131]
(ii) Some other matters concerning the ACL
[155]
A. The safety representation
[159]
B. The non-permanency representations
[170]
C. The wages representation
[173]
D. The derogatory representations
[177]
E. The licence representation
[181]
(c) Injurious Falsehood
[182]
(i) Malice
[191]
(ii) Actual Damage
[209]
(d) Implied Freedom of Political Communication
[220]
F. CONCLUSION
[221]
GRIFFITHS J:
A. Introduction
These proceedings, which came on urgently, arise in the context of a lengthy industrial dispute between the parties. The National Roads and Motorists’ Association Limited (NRMA) claims that the Construction, Forestry, Maritime, Mining and Energy Union (CFMMEU) (principally via its branch, the Maritime Union of Australia (MUA)), has engaged in trade mark infringements, misleading or deceptive conduct and committed the tort of injurious falsehood. The industrial dispute relates to the wages and conditions of employees of the My Fast Ferry business (MFF) (previously named Manly Fast Ferry). The NRMA acquired MFF in early January 2018. The business is operated by a wholly-owned subsidiary of the NRMA, Noorton Pty Ltd (Noorton).
By consent, the Court heard and determined as a separate and preliminary matter the issue of liability, leaving to another day, if necessary, the issue of damages and any other relief.
B. Some background matters
The NRMA is a mutual, being a company entirely owned by its members. From its establishment, one of the core values associated with the NRMA brand has been safety.
The NRMA, including through its subsidiaries, presently provides services in the following broad areas: membership and motoring services, including the core offering of roadside assistance; transport services, including the operation of Thrifty Car Rental; tourism services, including the operation of holiday parks and resorts across Australia; and marine services, including the MFF. NRMA has a particular reputation for promoting and being associated with safety, traditionally road safety, but has more recently been able to diversify beyond its core motoring business to deliver and develop tourism and transport assets.
The NRMA’s brand reputation (as independently measured by the Reputation Institute) is formidable; the brand is consistently in the top 10 most trusted brands in Australia in the Roy Morgan Net Trust Score survey and as at October 2018, is rated as Australia’s seventh most trusted brand.
As part of the NRMA’s acquisition of the MFF business, it acquired MFF’s interest in a seven year contract signed on 1 April 2015 between Transport for New South Wales and Manly Fast Ferry Pty Ltd to provide a high-speed ferry service between Circular Quay and Manly and vice versa. The New South Wales Government plays a significant role in regulating the route, the timetable requirements of the service, its fare structure (including capping the fares) and access to wharf arrangements. The MFF business also operates a range of sightseeing, whale watching and special event cruises around Sydney Harbour. Vessels in the fleet are branded with the NRMA device mark, which is a registered trade mark.
The CFMMEU is a registered organisation under the Fair Work (Registered Organisations) Act 2009 (Cth). On 27 March 2018, the MUA amalgamated with the CFMMEU and effectively became the MUA Division of the CFMMEU. For convenience, in the main I will simply refer to the MUA. Mr Paul Garrett has been Branch Assistant Secretary to the MUA since 2003.
Since around September 2018, the NRMA (via Noorton) and the MUA have been in dispute about the wages and conditions upon which, in particular, the “on water” staff of MFF are engaged.
The NRMA’s claims include that the MUA has used the NRMA’s word mark, one of the NRMA’s device marks, and a logo that incorporates it, and made false or misleading statements which are detrimental to, and designed to injure, the NRMA and its brand. The negative publicity campaign includes express statements and imagery which the NRMA claims convey the representation that it is an unsafe ferry operator, as well as other allegedly false or misleading statements relating to various aspects of the employment conditions of MFF staff and their treatment by the NRMA. On 2 November 2018, at the NRMA’s Annual General Meeting (AGM), NRMA members were handed pamphlets by members of the MUA containing statements criticising NRMA, and also bearing the NRMA trade mark positioned to form the hull of a sinking ferry (the Offending Logo). The NRMA device mark and the Offending Logo are as follows:
As will shortly emerge, the Offending Logo has usually been accompanied by text which includes the words “Don’t let wages sink to the bottom of Sydney Harbour”. The NRMA’s claims under the Trade Marks Act 1995 (Cth) (TM Act) include claims of infringement by the MUA’s use of the word mark “NRMA” in the Offending Logo. One of the important NRMA word marks, is the following trade mark (the NRMA 437 TM Registration):
The Offending Logo also appeared on placards and pamphlets which were carried or handed out by MUA members during further industrial action taken by the MUA, as well as on black T-shirts worn by MUA members and on an online petition.
In June 2019, the MUA’s negative publicity campaign against the NRMA escalated. In late June 2019, following the wearing of the black T-shirts and the handing out of pamphlets bearing the Offending Logo, Mr Rohan Lund (NRMA’s CEO) received emails from some MFF customers (including an NRMA member) and communications from some NRMA board members evidently elicited by the MUA’s activities.
C. NRMA’s case summarised
On 5 July 2019, the NRMA commenced these proceedings by originating application and statement of claim. The proceedings were returnable before the Court on 11 July 2019 for the hearing of the NRMA’s claim for interlocutory relief. On that day, the Court listed the matter for an urgent final hearing on 5-6 August 2019. Before then, the NRMA filed an amended statement of claim (ASOC). It should be noted that because the MUA raised the implied freedom of political communication in its defence, notices were issued under s 78B of the Judiciary Act 1903 (Cth), but no notice of intervention was received.
The NRMA filed affidavits by Mr Lund, Ms Catherine Horan (General Manager, Human Resources (Corporate)), Ms Sarah Ashton (General Manager – Safety, Operational Risk and Quality), Ms Joyti Sallan (HR Consultant), Mr Timothy Heberden (an expert witness), Ms Gemma Piper (General Counsel and Company Secretary) and Ms Siabon Seet (Solicitor). All but Ms Piper and Ms Seet were cross-examined. Mr Lund was cross-examined at some length.
It is convenient to outline each of the three causes of action raised by the NRMA.
(a) Trade marks infringements
In its ASOC the NRMA identified the following instances of use of the Offending Logo by the MUA for the purposes of the trade marks infringement causes of action:
(a)on pamphlets (the Pamphlets) as follows:
· Pamphlet 1 – circulated at the NRMA’s AGM on 2 November 2018;
·Pamphlet 2 – circulated at holiday parks owned by the NRMA in December 2018;
· Pamphlet 3 – circulated on MFF vessels from on or around 1 April 2019;
· Pamphlet 4 – circulated on MFF vessels around 2019;
· Pamphlet 5 – circulated on MFF vessels around 14 June 2019;
(b)on placards (the Placards) by members of the MUA on the following occasions:
·6 March 2019 strike – Offending Logo used on placards as shown in Sky News clip;
·3 April 2019 strike – Offending Logo used on placards as depicted in Facebook live stream;
·14 June 2019 strike – Offending Logos used on placards as depicted in a video on the MUA’s Facebook page;
·20 June 2019 strike – 7news.com.au article dated 26 June 2019 referring to strike showed the Offending Logo used on placards; and
·29 June 2019 strike – Offending Logo used on placards carried by MUA members during the strike action;
(c)on T-shirts:
·on or around 14 June 2019, MUA members wearing T-shirts bearing the Offending Logo (Logo T-Shirts) were working on the MFF vessels; and
·on or around 11 June 2019, pamphlets containing the Offending Logo were placed on seats and tables in MFF vessels presumably by employees wearing Logo T-Shirts;
·on 13 June 2019, the MUA Twitter account retweeted a photo of individuals wearing T-shirts bearing the Offending Logo;
·at the 14 June 2019 strike, MUA members wore Logo T-Shirts;
·at the 20 June 2019 strike, MUA members wore Logo T-Shirts, as shown in a 7news.com.au article dated 25 June 2019; and
·at the demonstration at the NRMA’s offices at Sydney Olympic Park on 20 June 2019, demonstrators wore Logo T-Shirts; and
(d)on an online petition hosted on a website located at the URL (the Megaphone Website).
NRMA puts its trade mark infringement case in two ways: under ss 120(1) and 120(3) of the TM Act. Section 120(1) covers “traditional” or “historical” trade mark infringement. It involves use of a sign as a trade mark that is, or is substantially identical with or deceptively similar to, the registered owner’s mark, on goods or services explicitly covered by the registration. There is a single, narrow claim by the NRMA of s 120(1) infringement. It involves the question of whether the MUA, through its members handing out Pamphlets and wearing Logo T-Shirts, engaged in the provision of “services consisting of information about journeys”, thereby infringing the NRMA 437 TM Registration word mark which registers the letters “NRMA” in relation to the provision of “Class 39: Travel agency, services consisting of information about journeys, vehicle towing service, vehicle pilot service” (emphasis added).
The NRMA’s broader and alternative s 120(3) claim, raises different considerations, some of which are relatively untested (see further below). The s 120(3) involves claims of infringement of both the NRMA’s word marks and the NRMA’s device mark (above at [9]). The difference between the ss 120(1) and 120(3) claims is that the former requires use of the infringing sign or mark in relation to goods or services in respect of which the trade mark is registered. The latter, on the other hand, only requires that the interests of the registered owner are likely to be adversely affected.
(b) Elements common to both ss 120(1) and (3) of the TM Act
In either case, the impugned use has to be:
(a)use of a sign that is substantially identical with, or deceptively similar to, the trade mark; and
(b)use of the sign “as a trade mark”.
(i) Substantially identical with or deceptively similar to the trade mark
The NRMA’s position on this requirement may be outlined as follows.
(a)For the purposes of s 120(1), the Offending Logo is substantially identical with or deceptively similar to the NRMA word mark – it incorporates the NRMA’s word mark in its entirety and has no other words, and thus the NRMA word is the “dominant cognitive cue” in each mark (Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 at [56]) , and a total impression of similarity emerges from a comparison between the two marks, indicating that the marks are “substantially identical” (Carnival Cruise Lines Inc v Sitmar Cruises (1994) 120 ALR 495 at [62]). At the very least, they are deceptively similar, in that the Offending Logo so nearly resembles the other mark that it is likely to deceive or cause confusion (see s 10 of the TM Act).
(b)For the purposes of s 120(3), the Offending Mark is substantially identical with or deceptively similar to the NRMA registered word marks and device marks (which are set out in Sch 1 to the ASOC). It points in particular to the device mark which appears on MFF vessels (a copy of which is at [9] above). In support of this contention, the NRMA highlights the following aspects of the Offending Logo: the font-style of the letters; the joining of the letters “M” and the “A” at their base; “smoke” coming out of the smoke stack which is reminiscent of, and evocative of, the wings of the NRMA device; and the overall interlineation of the letters NRMA in the stylised font within a broader logo, including a semi-circle at the bottom.
(ii) Use of the Offending Logo “as a trade mark”
The NRMA identifies the MUA’s activities in handing out Pamphlets, which purport to be information to the public about the MUA’s industrial action in relation to the MFF, as use of the Offending Logo as a trade mark. The NRMA contends that the MUA has chosen not merely to use its own logo on those Pamphlets, but to place the Offending Logo in an equally or more prominent position. The NRMA submits that the Offending Logo is effectively the “brand” of the MUA’s campaign. The NRMA relies on two authorities in support of this submission.
In Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; 154 FCR 97, the Full Court (Heerey, Allsop and Young JJ) said at [77]:
Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin…
In Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838; 66 IPR 254, Emmett J said at [48], when determining that MAXCLEAN had been used as a trade mark:
The prominence and positioning of the MaxClean sign on the packaging of the toothbrush and in promotional material, together with the font size, styling, colour and shading of the MaxClean sign, suggests even greater significance than the “Colgate” brand. Other products, of both Colgate and its competitors, position distinguishing names that are properly characterised as sub-brands in the same place as the MaxClean sign appears in relation to Colgate on the packaging and leaflet. The distinctive styling, colouring and shading has a graphic element akin to a logo. The distinctive blue and white colouring, with a halo effect of white shading around the words, is also indicative of use as a trade mark, rather than as a merely descriptive phrase. Although the “C” appears in upper case, there is no space between the “X” and the “C”. That suggests an invented word intended for use as a trade mark.
The NRMA submits that the following are strong indicia that the Offending Logo is being “used as a trade mark" on the Pamphlets:
(a)The Offending Logo is extremely prominent on the Pamphlets. Prominence is a factor indicative of trade mark use (Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2013] FCA 8; 299 ALR 752 at [33]).
(b)The Offending Logo is not merely words, but is (in the words of Emmett J in Colgate at [48]), a “graphic element akin to a logo”, which is strongly indicative of trade mark use.
(c)Strong elements of the NRMA device marks, themselves well-known trade marks, are deliberately distorted and used in the Offending Logo. This is indicative of trade mark use. It shows that the NRMA device marks were likely deliberately copied, and distorted, to form the Offending Logo—that is, the MUA’s intention to use the Offending Logo as a trade mark may be inferred from the fact that it copied, and references, a well-known trade mark to serve that function.
(d)While the MUA logo is also used on the Pamphlets, this does not negate use of the NRMA word mark and NRMA device marks as trade marks (Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 349). Indeed, the necessary information would have been conveyed merely by the text of the notice, together with a MUA logo. The MUA has made a deliberate choice to give the Pamphlets added impact by the use of the NRMA word mark and a distorted form of the NRMA device marks in a graphical form akin to a logo.
The NRMA submits that a sign or mark can appear and be used at the same time in relation to different goods and services, speaking at the same time to different recipients. It referred to a mark such as DAVID JONES (taking as an example uses in the cosmetics department) being used all at once in-store and on invoices in respect of retailing services, own-brand goods, advice services, make-up and beauty services, gift-wrapping services etc.
The NRMA submits that it is no answer that the MUA is a non-commercial body. The MUA itself uses signs or marks as trade marks in the course of its activities: it has its own portfolio of registered trade marks. It is inherent in filing and prosecuting an application for registration of a trade mark that the applicant and registered owner have an intention to use the mark as a trade mark and that it continue to use it to preserve validity. Further, the NRMA submits that it is plain that charitable or voluntary organisations may obtain the benefit of using trade marks or trade names in the same way as commercial enterprises, and use them in providing services gratuitously (citing the Red Cross as one of the most famous trade marks in the world). The NRMA submits that it would be a distraction to focus on the MUA’s status as a registered organisation under workplace laws to the exclusion of the many other indicia that it is using the sign “NRMA”, and the Offending Logo, as trade marks. The NRMA further submits that the MUA may be using “NRMA” and the Offending Logo in connection with different services being delivered to different people (see the David Jones example above), including as a badge of origin of one of the services being actually provided by the MUA to their members, being the campaign conducted by the MUA. The NRMA describes the services of industrially organising and campaigning as being at the core of the services the MUA provides to its members. It points to the fact that some of the MUA’s own marks are registered for “association services”.
The NRMA submits that the overall effect is that the MUA has appropriated the NRMA word mark and the NRMA device mark, and used the Offending Logo as a trade mark and badge of origin of the present campaign. In the context where any vessel on which the MFF is operated itself contains an NRMA device mark, the NRMA said that it is clear that at least “one aspect” of the MUA’s use of the Offending Logo is that the MUA seeks to indicate by use of the Offending Logo that it is the origin of the source of the information about the strikes in the Pamphlets. The NRMA submits that the Offending Logo brands the MUA’s campaign services as having originated from a person critical of the actions of the NRMA (namely, the MUA), by reference to, and distortion of, the NRMA trade marks.
The NRMA contends that these submissions apply a fortiori in relation to the use of the Offending Logo on the T-shirts, which display the Offending Logo (in proximity to the phrase “Don’t let wages sink to the bottom of the harbour”), where there is not even any MUA-branding apparent on the front of the Logo T-Shirts. By the use of the T-shirts the MUA seeks, by reference to the Offending Logo, to indicate that the campaign message on the T-shirt emanates from the MUA, and so uses the Offending Logo as a trade mark in relation to the campaign services it provides to its members. In its oral submissions, the NRMA submitted that where a logo is of the strong and graphic kind of the sinking ferry logo (referring to Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205), it is not appropriate to treat accompanying words as part of the mark.
The NRMA submits that the position is similar in relation to the Placards, which display the Offending Logo in close proximity to phrases such as:
·“NRMA and Manly Fast Ferry”;
·“It’s time to negotiate a fair deal with your workers”; and
·“Don’t let wages sink to the bottom of Sydney Harbour”.
The NRMA submits that the consistency of use of the Offending Logo across the Pamphlets, Logo T-Shirts and Placards confirms that the use of the Offending Logo is use as a trade mark – the Offending Logo has become the “brand” of the MUA’s campaign, being a service it is providing to its members.
(iii) Trade mark infringement under s 120(1)
The NRMA submits that the letters “NRMA” as used in the Offending Logo are substantially identical with (or deceptively similar to) the NRMA word mark. It relies on what Nicholas, Yates and Beach JJ said in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 259 FCR 514 at [177]-[178]:
[177]…If the employees of the second respondent were to hand out business cards or brochures in Australia that included the word ANCHORAGE used as a trade mark it would very likely be liable for trade mark infringement (unless the marks are cancelled) even if there was no possibility of the recipients of those documents being deceived or confused. This is because the respondents will have used as a trade mark a mark that is identical to the ANCHORAGE mark. The fact that the word ANCHORAGE as it appears on the business card or brochure might not deceive or confuse because it is accompanied by some form of statement making clear that it was the second respondent and its affiliates using the ANCHORAGE mark would be immaterial in an infringement action brought under s 120(1) of the Act.
[178]The rights enjoyed by the registered owner include the exclusive right to use the registered mark or any substantially identical or deceptively similar mark as a trade mark (subject to any relevant defences) in relation to the goods or services in respect of which the mark is registered (see s 20). This right is much broader than the right to prevent others from using an unregistered trade mark to engage in passing off. It represents one of the principal advantages that the Act confers on a registered owner of a trade mark. As Gummow J explained in Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 349:
[T]here may be a trade mark use and thus infringement in a case where the defendant adds words to indicate that it, rather than the plaintiff, is the trade origin of the goods or services in question. The addition of such words might negative the risk of passing-off. But this is one distinction which marks off an infringement action from a passing-off suit. Further, there may still be a trade mark use in a given case (such as the phrase in the Tub Happy case, “Exacto Cotton Garments — Tub Happy Cotton Fresh Budget Wise”), although another trade mark also is used by the defendant in the same packaging or advertisement.
(Citations omitted.)
(iv) Trade mark infringement under s 120(3)
While acknowledging that there are few authorities on s 120(3), the NRMA submits that:
(a)Section 120(3) was introduced to meet obligations imposed by Art 6bis of the Paris Convention for the Protection of Industrial Property, as supplemented by Arts 16(2) and 16(3) of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement). The Explanatory Memorandum to the Trade Marks Bill 1995 (Cth) at [98] refers only to the need to establish that the use complained of is likely to “adversely affect” the interests of the registered owner. Article 16(3) of the TRIPS Agreement refers to the likelihood of damage to the interests of the trade mark owner. It is “unclear whether there is a difference between the concepts of ‘damage’ and ‘adverse effect’” (Mark Davidson and Ian Horak, Shanahan’s Australian Law of Trade Marks and Passing Off, 6th ed, 2016 at [85.800]).
(b)The authorities suggest that “adverse effect” has a broader connotation than damage caused by diversion of sales (Beecham Group plc v Colgate-Palmolive Pty Ltd [2004] FCA 1335; 64 IPR 45 at [16]), and that it would seem to encompass damage to the reputation of the trade mark owner by injurious association and other heads of damages recognised in passing off actions, for instance, loss of opportunity to engage in brand extension. The NRMA says that this suggests that s 120(3) may go as far as to cover damage by dilution, but at the very least it encompasses reputational tarnishment.
As Sch 1 to the ASOC indicates, the NRMA owns many trade mark registrations, including the following subset of registrations: 588892 (NRMA word mark) for class 6 (goods); 588902 (NRMA word mark) for class 25 (goods); 332020 (NRMA word mark) for class 42 (services); 51110719 (NRMA word mark) for class 16 (goods); 588619 (NRMA word mark) for class 37 (services); 1222133 (NRMA word mark) for class 35, 41 and 43 (services); 508841 (NRMA device mark) for class 37 (services); 508842 (NRMA device mark) for class 39 (services).
The NRMA submits that the cause of action under s 120(3) has additional utility because if, contrary to the submissions above, the Court were to consider that whilst there had been use by the MUA of the Offending Logo as a trade mark, but such use by the MUA was not in relation to services “consisting of information about journeys”, s 120(3) may still be engaged.
(v) The criteria for the application of s.120(3)
Section 120(3)(a): the NRMA trade marks are well-known in Australia
The NRMA emphasises that the MUA did not dispute that its trade marks are well-known in Australia.
Section 120(3)(b): the MUA uses as a trade mark a sign which is substantially identical with, or deceptively similar to, the NRMA trade marks in relation to unrelated goods or services
Having regard to its terms, the NRMA submits that for the Offending Logo to infringe s 120(3), it must be used in relation to unrelated goods or services (s 120(3)(b)), i.e., goods or services that are not of the same description as, or are not closely related to, the goods or services of the NRMA registrations.
Thus, s 120(3) in effect covers the whole universe of services (and goods, not presently relevant) outside those delineated in the NRMA’s registered marks. The question according to the NRMA is more what services the MUA services are not, rather than what services they are. Many of the NRMA trade marks are registered for services which are not of the kind provided by the MUA. That is sufficient for s 120(3) to apply.
The NRMA submits that there is no difficulty in holding that services of several kinds being supplied by the MUA are relevant “unrelated services” for the purposes of s 120(3). It relies upon the US decision in The Hershey Company v Friends Of Steve Hershey 33 F. Supp. 3d 588 (D. Md. 2014), where the Maryland District Court granted a preliminary injunction restraining the distribution of campaign literature by (Maryland State) Senator Steve Hershey which bore a mark similar to the famous HERSHEY trade mark for chocolate. The Court found at 594 that:
Here, the Defendants used their design to promote a political candidate, disseminate political information, host campaign events, and solicit donations. Accordingly, the Defendants are using Hershey Trade Dress in connection with services.
Section 120(3)(c): because the trade mark is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark
The NRMA submits that the central concept behind s 120(3)(c) is that once a trade mark achieves a sufficient level of fame, or becomes “well-known”, its capacity to indicate a connection to the registered proprietor transcends the requirement that there be use in relation to goods or services of the same kind as those to which the registration relates. It claims that the NRMA word marks and the NRMA device are just such trade marks and that their distortion by the MUA into the Offending Logo are likely to indicate a connection to the NRMA, notwithstanding that the services provided by the MUA to their members and also to others are very different from the goods or services the subject of the registrations referred to at [32] above. The NRMA emphasises that it is important to note that the nature of the “connection” which must be shown under s 120(3) is not limited to confusion as to origin. The NRMA contrasts s 120(3) with s 120(2) and the proviso therein which provides that lack of confusion is a defence to an action under s 120(2). Section 120(3) provides no such defence. The NRMA acknowledges that, while the precise nature of the “connection” required under s 120(3) has not been the subject of any detailed judicial consideration, it points out that very similar language to that used in s 120(3) is used in s 185 of the TM Act, which allows for the registration of a defensive trade mark.
The NRMA also relies upon decisions of the Trade Marks Office which it claims have recognised the similarity between s 120(3) and s 185 of the TM Act and, recognising that similarity, have held that the “connection” for the purposes of s 185 is “open-ended”, in the sense that it is not limited to traditional types of consumer confusion as to the origin of goods or services (Re application by Pfizer Products Inc [2004] ATMO 25; 61 IPR 165 at 167-168). The traditional test for likelihood of confusion is that a “number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source” (Registrar of Trade Marks v Woolworths Limited[1999] FCA 1020; 93 FCR 365 at [50]). Thus, the NRMA submits that it would not be necessary for it to prove, in the present proceedings, that a consumer had been confused, in the sense of “caused to wonder whether it might not be the case”, that the material emanating from the MUA had actually emanated from the NRMA. A wider test of connection involving, for example, association or affiliation is sufficient.
The NRMA submits that US authority supports this construction of s 120(3). Under s 43 of the Trade Mark Act of 1946, 15 U.S.C. § 1125(c)(1) (2012) (Lanham Act), a plaintiff is entitled to injunctive relief if the defendant’s use of its trade mark “is likely to cause dilution… by tarnishment” of the famous trade mark. In the Lanham Act, “dilution by tarnishment” is defined in § 1125(c)(2)(C) as an:
association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
These terms were considered in the case of V Secret Catalogue, Inc v Moseley 605 F. 3d 382 (6th Cir. 2010). The US Court of Appeal for the Sixth Circuit considered that use of the mark VICTOR’S SECRET for an adult store was likely to tarnish the VICTORIA’S SECRET trade mark, and the semantic link between the two marks was sufficient to constitute the relevant “association”. The NRMA submits that “connection” should be read in a similar way in s. 120(3) and includes the making of a mental link or association between the services badged with the Offending Logo and the NRMA trade marks, and hence to the NRMA.
In its oral submissions, the NRMA contended that the requirement of “connection” was satisfied here by the reference in the MUA’s internal email to it “hacking” the NRMA logo. The NRMA submitted that even if there were many aspects to the MUA’s use of the NRMA marks, the presence of an offending use, namely hacking the NRMA’s brand, was sufficient to establish infringement.
In any event, the NRMA submits that the distinction does not loom large in the present case because, even on the narrowest reading of “connection”, it says the requirements of s 120(3) are satisfied. The use of the Offending Logo on the Pamphlets, Logo T-Shirts and other material is such that it is likely that a person would be “caused to wonder whether it might not be the case” that the NRMA (the registered owner) had sanctioned, approved, or otherwise been involved in, the distribution of the Pamphlets or the information contained in them. This constitutes a connection between NRMA and the services provided by the MUA in relation to which the Offending Logo is being used by the MUA as a trade mark.
The NRMA submits that there are two reasons why any text in the Pamphlets which may provide material to suggest that NRMA does not approve of them is no answer:
(a)the focus of s 120(3) is on the use of the “sign”, i.e. the Offending Logo, which is not answered by the use of other material such as text – an action under s 120(3) is not a passing off action in which all such material must be taken into account; and
(b)in any event, the context of a person viewing a Pamphlet will often encompass an ephemeral or fleeting viewing, for example, briefly reading a Pamphlet after getting off the ferry before placing it in the bin. In this regard, it submits that the dominant impression left when viewing the Pamphlet without studying it in detail is of the Offending Logo – that is, the NRMA word mark and the NRMA device distorted into a sinking ferry.
The NRMA says that its case under s. 120(3) is considerably stronger than that considered in San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842; 50 IPR 321, where the “connection” requirement was discussed at [38]:
The applicant submitted that there was a serious question to be tried that, because the applicant’s trade mark SAN REMO was so well known, the first respondent’s use of the words “San Remo” would be likely to be taken as indicating a connection between its coffee products and the applicant. The evidence establishes that the applicant has promoted and advertised the name “San Remo” extensively in television and magazine advertising and in supermarket promotional activities. According to Mr Knight, since 1990 the applicant has spent at least $8 m a year in consumer and trade marketing to develop and further the San Remo brand name. Having regard to the extent of this advertising and marketing and the fact that the applicant’s San Remo brand products have achieved a market share in excess of 40% of the national and Victorian State dry pasta markets, I consider that there is a serious question that trade mark No 564652 is sufficiently well known, for the purposes of s. 120(3)(c) of the Act, to the extent that the first respondent’s use of those words would be likely to be taken as indicating a connection between the first respondent’s coffee products and the applicant even though pasta and coffee are not goods of the same description.
In relation to the Logo T-Shirts, in considering the context of that use, the NRMA submits that it must be borne in mind that the persons wearing the Logo T-Shirts have been handing out one or more of the Pamphlets. In that context, the use of the Offending Logo on the T-shirts takes its colour from the use of the Offending Logo on the Pamphlets.
Section 120(3)(d): for that reason, the interests of the NRMA are likely to be adversely affected
As to what is meant by “adversely affected”, the NRMA submits that the connection with the adverse safety message conveyed by the Offending Logo (which is the NRMA word mark and the NRMA device distorted into a sinking ferry), is likely adversely to affect the NRMA’s interests whatever the full scope of “adversely affected”, given that a core element of its brand is its long-standing association with transport safety.
The NRMA submits that it is also clear that its interests are being adversely affected in other respects by reason of the connection which is indicated by the Offending Logo between the NRMA and the services being provided by the MUA. For the reasons explained in relation to the consumer law and injurious falsehood claims, the Offending Logo is being accompanied by representations which seriously misstate the position in relation to the NRMA’s workforce. Consumers who consider that the NRMA is connected to those false representations in the way described, i.e. that the NRMA has sanctioned, approved or otherwise been involved in, the distribution of that information, whether on the Pamphlets, the T-shirts, or the Placards, will view that extremely adversely to NRMA, including that some may view it as an admission of wrongful conduct by the NRMA. The NRMA relied on the evidence outlined above in relation to the emails which have been sent to the NRMA’s CEO, plus the recent escalation of the MUA’s campaign, as demonstrating that not only are the NRMA’s interests “likely” to be adversely affected as required by s. 120(3), but that they have, in fact, already been adversely affected. The NRMA submits that the Court should accept the expert evidence of Mr Heberden, an intellectual property valuer, which is to the effect that the MUA campaign has already damaged the NRMA brand and that, should it continue, there is a risk of a significant decline in value of the NRMA’s brand.
(b) Misleading or deceptive conduct
The NRMA submits that the Australian Consumer Law (ACL), at both a Commonwealth (Competition and Consumer Act 2010 (Cth) Sch 2 (CC Act)) and State level (see Pt 3 of the Fair Trading Act 1987 (NSW)), apply to the MUA. In the former case, it submits that the Commonwealth ACL applies because, even if the MUA is not a trading or financial corporation, that legislation applies to the extent that the representations complained of arise from the CFMMEU’s use of a telephonic service, namely the Internet, to publish material on the Megaphone Website, its media releases and the social media posts, relying on s 6(3) of the CC Act. As to the position under State legislation, the NRMA submits that the NSW ACL applies because the MUA is a person which carries on business in, or is otherwise connected with, NSW.
(i) Is the conduct in trade or commerce?
This is a central issue in the case. The NRMA’s primary position is that it is unnecessary to decide whether the activities of a trade union are “in trade or commerce” as long as the persons to whom the MUA made the representations are themselves “in trade or commerce”, relying upon authorities such as Houghton v Arms [2006] HCA 59; 225 CLR 553 and Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594 at 613 per Toohey J; TCN ChannelNine Pty Ltd v Ilvariy Pty Ltd [2008] NSWCA 9; 71 NSWLR 523 at [48]-[49] per Spigelman CJ and Astra Recourses Plc v Full Exposure Pty Ltd [2012] FCA 1061 at [26]-[31] per Besanko J.
The NRMA relies upon the following matters concerning the context in which the relevant representations were made to persons who themselves were acting in trade or commerce with the NRMA:
(a)Pamphlet 1 was provided to attendees at the NRMA’s AGM, which included persons who would be deciding whether or not to remain a member of the NRMA;
(b)Pamphlets 3, 4, 5 and the Logo T-Shirts intended to be seen by persons making a decision as to whether to travel on and be a customer of the MFF;
(c)Pamphlet 2 was provided to persons making a decision as to whether to patronise the tourist parks of the NRMA; and
(d)the media releases were directed to the public generally, to inform them in deciding whether to become or remain members of NRMA or to patronise any of the NRMA’s businesses, or to invest in them.
(ii) The safety representation
The safety representations are that NRMA is not a safe ferry operator and that its safety standards fall short and are not at an appropriate level. The NRMA submits that this representation is conveyed by each of the following matters (emphasis added):
(a)On or around 25 October 2018, Mr Garrett posted a comment on a Facebook post by the NRMA which stated:
Well done NRMA. Another ferry company that underpays workers and haves [sic] a very poor safety management system. Why is NRMA participating in ongoing wage theft?
(b)On or around 2 November 2018, the MUA posted a video on Facebook using the account @MUASydneyBranch which stated:
MUA rally at the NRMA AGM. Their company Manly Fast Ferry underpays and robs workers running with a shonky safety system.
(c)On or around 11 December 2018, the MUA posted a post on Facebook using the account @MUASydneyBranch which stated:
Sydney Harbour workers at NRMA company My Fast Ferry are being treated like second class citizens: 100% casual, underpaid and forced to work in unsafe conditions.
(d)Most importantly, the Offending Logo, as it appears on each of the Logo T-Shirts, and the Pamphlets, conveys the notion of a sinking and unsafe ferry.
(e)The Pamphlets containing the Offending Logo link to the Megaphone Website which contained the following statement:
“NRMA Sydney harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards”.
The NRMA submits that the representation is false because:
(a)The NRMA currently holds a valid Certificate of Survey issued by the Australian Maritime Safety Authority (AMSA) for all of the vessels in the MFF fleet, a certificate that all domestic commercial vessels are required to have to allow the vessel to be operated commercially in Australia.
(b)In February 2019, MFF was praised by AMSA regarding the steps implemented by MFF management in relation to safety.
(c)The MFF is regularly audited and inspected by AMSA in order to comply with the requirements for certification renewal. This process includes AMSA reviewing MFF’s Certificates of Survey, safety equipment, logs, drill records and drill frequency and safety systems documents, as well as observing crews conducting drills in accordance with MFF’s written safety policies and procedures. An email dated 15 May 2019 from a Marine Safety Business Partner at the NRMA records a recent random AMSA inspection.
(d)Since NRMA acquired the MFF business, NRMA has not received an improvement notice from SafeWork NSW.
(e)On 20 August 2018, the MUA issued right of entry notices under the Work Health and Safety Act 2011 (Cth) and boarded and inspected the NRMA vessels pursuant to those notices on 22 August 2018. No complaint was made to SafeWork NSW following the inspection in relation to any alleged safety concerns.
(f)The NRMA has developed a number of specific MFF safety policies and procedures, for which there can be no suggestion of inadequacy, including:
(i)The Marine Safety Manual which is also available in a digital form on all on-board vessel computers and corporate intranet sites;
(ii)The Generic Safety Management System;
(iii)Vessel Operations Manuals.
(g)All new MFF employees are required to complete comprehensive training, including in relation to the safety policies and procedures outlined above.
(h)Safety drills are regularly held on the MFF.
(i)The safety policies and procedures referred to above actively encourage all MFF employees to report any safety concerns they may have, or any safety issues they may see arise during their shift, to either the NRMA’s management or a member of NRMA’s designated safety team. The NRMA regularly sends safety updates by email to MFF employee.
(j)In the 2018/2019 financial year, NRMA also decreased its lost time injury frequency rate by 22%.
The NRMA submits that Mr Garrett’s attempt to gather observations and incidents together in his affidavit evidence and his characterisation of them are an attempt, with hindsight, to justify the safety representation no matter how minor or irrelevant and speculative the observations are.
In relation to all the representations of which it complains, including the safety representation, the NRMA submits that it is relevant to take into account the class to whom the representations were made, namely a broad class of passengers using the MFF ferries (as well as NRMA members). It emphasises that, having regard to this class of persons and the circumstances in which they were exposed to the conduct complained of, they would not have paid close attention to the text which accompanied the Offending Logo on the various relevant materials.
(iii) The non-permanency representations
The pleaded representations relating to the non-permanency of the workforce on the MFF are as follows:
(a)not one of the 90 jobs on the MFF fleet is permanent;
(b)the MFF fleet consists of an entirely casual workforce;
(c)the NRMA has not offered one permanent job to any of the 90 MFF fleet workers; and
(d)the NRMA is sinking or destroying job security on the MFF.
The NRMA makes the following submissions. These representations should not be viewed in isolation. They were plainly designed with the purpose of, and had the effect of, reinforcing the safety representations. The suggestion that not one of the jobs was permanent was plainly important to the MUA’s campaign, because of its absoluteness – in other words, it was not a representation that the workforce was substantially non-permanent. The import of the representations as a whole is that the NRMA is not interested in providing a permanent workforce or offering any job security.
These representations are said by the NRMA to arise from media releases and social media posts published by the MUA (emphasis added):
(a)The Facebook post made by the MUA on or around 11 December 2018:
Sydney Harbour workers at NRMA company My Fast Ferry are being treated like second class citizens: 100% casual, underpaid and forced to work in unsafe conditions.
(b)3 March 2019 media release:
The ferry skippers, all of whom are casual, are still yet to receive a complete wage offer from NRMA in the EBA negotiations, despite the company formally initialising the bargaining process on 24 September 2018.
(c)1 April 2019 media release:
(i)NRMA are twiddling their thumbs, instead of recognising that their staff have had enough of the years of nonsense, casual jobs and rates of pay which are below Award and frankly, the lowest in the ferry industry.
(ii)All ferry skippers who are taking the industrial action still remain casually employed.
(d)14 June 2019 media release:
MUA Sydney Branch Assistant Secretary Paul Garrett said ferry crews met yesterday, endorsing the work stoppage between 5pm and 11pm. The decision follows six months of negotiations with NRMA that have failed to see the company resolve the wage discussions or offer a single permanent job to the entirely casual workforce.
(e)27 June 2019 tweet posted by the MUA used the Twitter handle @MaritimeUnionAU stating:
Did you know? Not one of the 90 jobs on the NRMA-owned Manly Fast Ferry fleet is permanent. NRMA, Stop Sinking Job Security!
The NRMA submits that these representations were misleading or false when made, in that:
(a)business records indicate that as at 8 October 2018, two ferry masters were permanent employees, and had been since well before NRMA purchased the MFF;
(b)on 21 November 2018, the NRMA commenced a process inviting expressions of interest for permanent employment for casually employed deckhands of MFF;
(c)on 29 November 2018, MFF received an expression of interest from a MFF deckhand in converting to a permanent position, and the employee commenced his permanent employment with MFF on 1 February 2019;
(d)on 18 December 2018, the NRMA sent a further email to MFF staff in relation to the option of converting to permanent employment; and
(e)as of 1 July 2019, NRMA’s payroll record indicate that 8 of 155 employees of MFF are “full time”, i.e. permanent employees, including 1 deckhand and 2 Masters on MFF vessels.
As to Mr Garrett’s suggestion that it was for the NRMA or Noorton to inform him that there were permanent employees against the possibility, or fact, that he may propose to make false representations on that topic, the NRMA submits that there is no such transfer of obligation. It says that the MUA has chosen to make unequivocal and absolute representations for some seven months, apparently at the very least reckless as to their accuracy. Additionally, the representations have not been withdrawn.
(iv) The wages representation
As originally pleaded, the wages representation primarily related to statements by the MUA that “Manly Fast Ferry management have deliberately forced their workers to accept below minimum conditions, and robbing them of their rightful pay rates”. Resolution of this claim would have involved consideration of various industrial awards and their applicability to MFF staff. During the course of the hearing, however, the NRMA narrowed its case regarding the wages representation and confined it to a representation that the NRMA had deliberately forced its workers at MFF “to accept below minimum wages”, which the NRMA claims necessarily refers to the national minimum wage. Although it is not pleaded in the ASOC, the NRMA contends that this reading of the reference to “below minimum wages” is supported by statements which Mr Garrett made in an interview on 2GB Radio, including that the wages paid to MFF deckhands were “similar to what you get when you worked at McDonald’s”. When Mr Garrett was asked in the radio interview what was the rate of pay, he responded: “It’s under award. The figures are there – about 21/$22 an hour when the commensurate rate in the industry is about 30 to $35 an hour”.
(v) The derogatory representations
The pleaded derogatory representations are as follows:
(a)the NRMA does not treat its MFF employees with respect, decency and/or the dignity that they deserve;
(b)the NRMA treats its employees at MFF as second-class citizens; and
(c)the NRMA engages in conduct that is dishonest, improper and/or illegal.
The NRMA claims that these representations were conveyed by various statements which are set out in [26] of the ASOC, including statements regarding wages and conditions of MFF staff (such as that they were being robbed of their rightful pay rights and that the NRMA had engaged in “wage theft”, as well as a statement in Pamphlet 2 which described the NRMA’s conduct as “dodgy behaviour”).
(vi) The licence representation
The NRMA also complains the use of the Offending Logo on the Pamphlets, the Megaphone Website, the Logo T-Shirts and in a social media post also conveys the representation that the Offending Logo, or that part of it which comprises the letters “NRMA”, is being used by or with the licence of the NRMA.
On an issue raised by the Court on the misleading or deceptive conduct claims, namely whether there was in the particular circumstances of this case an analogous concept of some licence or indulgence for “puffery”, the NRMA referred to Bennett J’s observations in Proctor & Gamble Australia Pty Limited v Energizer Pty Limited [2011] FCA 1347 at [139] ff and emphasised the difference between a complaint of misleading or deceptive conduct which arises in the context of representations which compare competing goods, as opposed to statements of fact such as those complained of here, including the unequivocal claim that there were no permanent jobs at MFF.
(c) Injurious Falsehood
The NRMA accepts that the elements required to prove injurious falsehood are well established, as restated by Gummow J in Palmer Bruyn & ParkerPty Ltd v Parsons [2001] HCA 69; 208 CLR 388 at [52] (footnotes omitted):
The elements of the action for injurious falsehood usually are expressed in terms which derive from Bowen LJ’s judgment in Ratcliffe v Evans…generally, it is said that an action for injurious falsehood has four elements: (1) a false statement of or concerning the plaintiff’s goods or business; (2) publication of that statement by a defendant to a third person; (3) malice on the part of the defendant; and (4) proof by the plaintiff of actual damage (which may include a general loss of business) suffered as a result of the statement.
The injurious falsehood claim is based on the statements and representations made by the MUA about safety and permanency of employment. The NRMA submits that elements (1) and (2) are established by the same matters relied upon in respect of its ACL claims, save that Mr Cobden SC (who appeared for the NRMA together with Mr Flynn) made clear in his opening oral address that the NRMA did not suggest in its injurious falsehood case that the sinking ferry logo is a statement. The NRMA does, however, rely on the sinking ferry in the Offending Logo as part of the context which gives character to the MUA’s representations about safety.
As to elements (3) and (4) from Ratcliffe v Evans [1892] 2 QB 524 (malice and actual damage), the NRMA’s submissions may be summarised as follows.
Malice
The NRMA submits that knowledge of falsity, or reckless indifference as to the truth of statements, have consistently been held to justify an inference of malice in injurious falsehood cases. If this is present, it is no excuse that the relevant statement was made with a view to furthering the respondent’s own interests.
In relation to the safety representations, the NRMA submits that knowledge of falsity, or reckless indifference as to falsity, may be inferred from matters which include the following:
(a)The MUA issued right of entry notices under the Work Health and Safety Act 2011 (Cth) and boarded and inspected the NRMA vessels pursuant to those notices in August 2018. No complaint was made to SafeWork NSW following the inspection in relation to alleged safety concerns.
(b)The MUA was aware from 31 October 2018 that the NRMA gave its commitment regarding staff safety (which Mr Garrett had requested).
(c)As to Mr Garrett’s claim that the MUA was not intending to make the safety representations, the NRMA contends that this is inconsistent with internal documents, including an email which explicitly refers to hacking the NRMA logo.
As to the permanent employment representations, the NRMA submits that the MUA was aware from a letter dated 8 April 2019 from Mr Lund to Mr Garrett that there was an agreed shared commitment to permanent employment, as is reflected in the following statement:
I am pleased, however that there are agreed positions on the important issues regarding conversion of current employees to permanent employment, an appropriate level of commitment to future full time permanent employment, as well as a limitation on the use of casual employees within the business.
The NRMA claims that the MUA also had at least one document in its possession which showed that it knew that there was a permanent employee of MFF from 18 February 2019.
The NRMA submits that other matters which support a finding of malice include:
(a)The “Richard Fraud” Facebook page, which contains photoshopped and derogatory photographs of the MFF CEO, Mr Richard Ford. Mr Garrett commented on and “liked” some of the posts, suggesting it might be associated with the MUA.
(b)Vitriolic statements made at a 20 June 2019 demonstration at Sydney Olympic Park, where MUA members were chanting phrases including “Rohan Lund is a coward”, after MUA members advised that they wanted to hand deliver a copy of a petition to Mr Lund, and that Mr Lund was not at the Sydney Olympic Park office. I note, as an aside, the relevant part of Mr Lund’s affidavit relied on for this submission was not read.
(c)Statements in various documents and materials produced by the MUA, including videos which appeared on the MUA Facebook page.
(d)The fact that, upon the NRMA acquiring MFF, Mr Garrett and the MUA intended to attack the NRMA and, it may be inferred, to cause it collateral damage because of a lack of success in dealing with the immediate employer (Noorton).
(e)Statements made by Mr Paul Keating, Deputy Divisional Branch Secretary of the MUA, at a protest at Manly Wharf on 3 April 2019, when he stated:
I say to Sydneysiders boycott Manly Fast Ferries until wage justice is delivered;
and
We will boycott, and I say this to all Sydneysiders, boycott Manly Fast Ferries until this justice is served! Until we get the Enterprise Agreement. There is no other way, we must damage this company because they damage and exploit our members.
(f)Evidence by Ms Sallan that she overheard a conversation between Mr Garrett and Mr Ford in which Mr Garrett acknowledged that one deckhand had taken up the invitation for expressions of interest in a permanent role and had been converted to a permanent role.
Finally, the NRMA submitted that it was relevant to take into account the fact that a trade mark is “property”.
Actual damage
The NRMA relies upon four categories of evidence which it says show that it has suffered actual damage by reason of the representations:
(a)evidence the public is being actually misled about the NRMA’s business, from which it is a short step to inferring that NRMA will lose custom;
(b)direct evidence of the NRMA’s long-standing and valuable reputation being damaged;
(c)Mr Heberden’s expert evidence in relation to brand damage; and
(d)evidence that the NRMA is suffering a loss of custom on the MFF, which temporally coincides with and may be inferred to arise from the representations. This has caused a significant loss of profit to date and a projected future loss of profit.
In its oral submissions concerning actual damage, which were presented by Mr Flynn of counsel, the NRMA contended that while it accepted that there was a need to show actual loss, there was no need at this stage of the proceedings to quantify that loss. It was submitted that the decline in passenger numbers was sufficient for current purposes. Secondly, as to NRMA’s claim for injunctive relief, Mr Flynn submitted that it was sufficient for current purposes to proceed on the basis that even if actual financial loss had not yet manifested itself, it would be sufficient for the Court to find that if the contravening conduct continues such loss is an ongoing probability, citing Neville Mahon v Mach 1 Financial Services Pty Ltd [2012] NSWSC 651; 96 IPR 547 at [22] per McCallum J (as her Honour then was). Thirdly, as to the MUA’s contention that reputational damage is insufficient for the tort of injurious falsehood, the NRMA relied on Orion Pet Products Pty Ltd v Royal Society for the Prevention of Cruelty to Animals (Vic)Inc [2002] FCA 860; 120 FCR 191 at [198] per Weinberg J in support of its contention that, because the trade mark infringements related to the NRMA’s property, namely the effects on its trade marks, its complaint went beyond mere reputational damage. Mr Flynn candidly acknowledged that this proposition had not yet been “squarely considered on the authorities”. In this regard, the NRMA submitted that a finding of malice, if established by the evidence concerning the MUA’s intention to “hack the brand”, is relevant. The relevance lies in the fact that a Court having found malice through an intention to damage the NRMA’s property in its trademarks, would be slow to say that the intention had not been realised.
As to the public being actually misled, the NRMA submits that the emails from the public to the NRMA’s CEO (Mr Lund), provides evidence of MFF passengers, or members of the public, accepting as true representations or statements made in MUA Pamphlets.
The NRMA submits that there is direct evidence that the reputation of the NRMA is being damaged, as shown by the following comments apparently made by members of the public on the MUA Facebook page:
(a)“… obviously NRMA don’t [sic] give a rats [sic] arse about its workers, job security is everything to an Aussie worker. Safety should be everyones [sic] concern. NRMA pull your head in”;
(b)“Just like the Big Australian (BHP) ready to sack Australian workers and put the fear of losing everything. The NRMA is exactly doing the same to SYdney [sic] Fast Ferry workers, who want better working conditions …”; and
(c)“The NRMA has lost its standing as a reliable and trustworthy Australian company. They are behaving like an out of control multinational company …”.
Similar sentiments appear on the Megaphone Website:
(a)“I’m puzzled why the NRMA doesn’t resolve this dispute quickly, the crew of the fast ferries are clearly woefully underpaid given their responsibilities for passenger safety. NRMA is showing absolutely no leadership in this situation”; and
(b)“I signed because workers deserve better than to be exploited while doing a dangerous job in all weather conditions”.
Of the signatories to the MUA’s petition on the Megaphone Website, the NRMA points out that 880 out of 1,986 have identified themselves as NRMA members.
Further, it contends that the extent of the reputational damage is exacerbated by the fact that various statements made by the MUA have also been publicised in the media, including on 7news.com.au and in the Daily Telegraph newspaper.
The NRMA relies on Mr Heberden’s evidence as confirming that NRMA has likely already suffered damage to its brand and, should it continue, there is a risk of significant decline in the value of that brand. In Mr Heberden’s opinion, this would include damage suffered as a result of a decline in brand equity within certain stakeholder groups, including members, consumers, business partners and employees. According to Mr Heberden, the MUA’s conduct has the potential seriously to erode shareholders’ perceptions of the core attributes underpinning the value of the NRMA’s brand, namely trust, safety and reliability. Mr Heberden provides illustrative examples of reputational damage and brand value losses (at paras 45 to 46 of his report).
The NRMA also relies upon Mr Lund’s evidence that the MUA’s conduct has already had an adverse impact on MFF patronage. Mr Lund provides comments on the decline in passenger numbers, with reference to a confidential internal document recording those passenger numbers. It claims that the decline in passenger numbers has had a material and significant impact on the NRMA’s profits since January 2019, and is projected to have an ongoing significant impact on profits over the next 12 months.
(d) Implied Freedom of Political Communication
The NRMA points out that the MUA did not plead a constitutional defence in answer to the case of injurious falsehood, but only in relation to the claims made under the TM Act and the ACL.
Relying on the structured proportionality tests set out in McCloy v New South Wales [2015] HCA 34; 257 CLR 178 at [2] per French CJ, Kiefel, Bell and Keane JJ, the NRMA submits that the constitutional defence is not engaged here because:
(a)the subject-matter of the key communications is not a political or governmental matter;
(b)neither s 120 of the TM Act nor ss 18 or 29 of the ACL burdens the implied freedom of communication in their terms, operation or effect;
(c)but if (contrary to the above) there were any such burden, it meets the structured form of proportionality testing set out in McCloy because:
(i)the purpose of each of s 120 of the TM Act and ss 18 and 29 of the ACL, and the means adopted to achieve those purposes, are compatible with the maintenance of the constitutionally prescribed system of representative government, in the sense that they do not adversely impinge upon the functioning of the system of representative government; and
(ii)both the TM Act and the ACL are reasonably appropriate and adapted to achieve those legitimate purposes, in the sense that they are suitable (in the sense of having a rational connection with the source of the power), necessary (in the sense that there is no obvious and compelling alternative means of achieving the same end), and adequate in their balance between the purpose of the law and the implied freedom.
The NRMA submits that many of the relevant communications were not on a political or governmental matter so as to attract the implied freedom, citing Wotton v State of Queensland [2012] HCA 2; 246 CLR 1 at [20] per French CJ, Gummow, Hayne, Crennan and Bell JJ and Clubb v Edwards [2019] HCA 11; 366 ALR 1. It submits that neither of the relevant statutory provisions the subject of MUA’s defence relying upon the implied freedom burdened that freedom, citing APLA Limited v Legal Services Commissioner of New South Wales [2005] HCA 44; 224 CLR 322 and that, in any event, any burden passed the McCloy test.
It is unnecessary to further elaborate on these matters because, as will emerge, it is unnecessary and inappropriate to determine the constitutional issue in circumstances where the proceeding is determined on non-constitutional grounds.
D. The MUA’S case summarised
The MUA relied upon two affidavits by Mr Paul Garrett (Divisional Branch Assistant Secretary of the Sydney Divisional Branch of the MUA), who was cross-examined at some length.
The MUA emphasises that these proceedings involve an unprecedented attempt by a large corporation to use consumer and trade marks law to regulate the conduct and statements of a trade union and its members in the context of an industrial dispute.
In brief, the MUA submits that none of the NRMA’s claims should be accepted because:
(a)The conduct complained of was not engaged in “in trade or commerce” so as to be able to constitute contraventions of ss 18 or 29 of the ACL and, in any event, the NRMA has not established that the conduct was misleading or deceptive for the purposes of either provision.
(b)The MUA has not used any trade mark registered to the NRMA in connection with any goods and services in respect of which the NRMA trade mark is registered, nor in connection with other goods or services in a manner that would indicate a connection between the unrelated goods or services and the NRMA for the purposes of ss 120(1) or (3) of the TM Act.
(c)The NRMA has not established the tort of injurious falsehood in that it has not proven that the statements complained of are false, that the MUA was actuated by malice or that it has suffered actual loss as a result of the particular statements alleged to give rise to the tort.
As previously noted, the MUA relies upon the implied freedom of political communication as a defence in the event that Court was otherwise minded to uphold the NRMA’s claims regarding trade marks infringement and/or consumer law.
To avoid adding to what are already lengthy reasons for judgment, I will not set out in greater detail the MUA’s submissions in respect of the three causes of action. Many of those submissions are reflected in my reasons below for rejecting the NRMA’s legal claims.
E. Consideration and determination
It is convenient generally to adopt the headings used above in summarising the NRMA’s case.
(a) Trade marks infringements
At the outset, it is well to set out the relevant terms of ss 120(1) and (3) of the TM Act:
120 When is a registered trade mark infringed?
(1)A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
…
(3) A person infringes a registered trade mark if:
(a) the trade mark is well known in Australia; and
(b)the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
(i)goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or
(ii)services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and
(c)because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and
(d)for that reason, the interests of the registered owner are likely to be adversely affected.
The trade marks infringements raised by the NRMA are set out at [15] to [17] above. As noted earlier, the alleged infringement under s 120(1) is quite confined. It relates to the question whether the Pamphlets and Logo T-shirts on which the Offending Logo is displayed amounts to the MUA using as a trade mark a sign that is substantially identical with, or deceptively similar to, the NRMA 437 TM Registration (which mark comprises the letters “NRMA”) in relation to services consisting of information about journeys.
The NRMA’s claim of infringement under s 120(3) is broader. It relates to the NRMA trade marks generally (as set out in Sch 1 to the ASOC), which it says are well known in Australia. It claims that the MUA’s use of the Offending Logo is in relation to services that are not of the same description as the services in respect of which the NRMA trade marks are registered and are not closely related to goods in respect of which one or more of those trade marks is registered. But, because the NRMA trade marks are well-known in Australia, the NRMA says that the use of the Offending Logo is likely to be taken as indicating a connection between such services and the NRMA, thereby adversely affecting the NRMA’s interests.
(b) Elements common to both ss 120(1) and (3) of the TM Act
It is convenient to address the issue whether the MUA is using the NRMA’s trade mark or a sign substantially identical with it or deceptively similar to it, as a trade mark in relation to goods and services in respect of the NRMA 437 TM Registration (see [9] above), before addressing whether the use is as a trade mark.
(i) Substantially identical or deceptively similar
The concepts of “substantial identity” and “deceptive similarity” are independent criteria which invite different approaches. As Windeyer J said in The Shell Company of Australia Pty Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 at 414-415 (citations omitted):
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court's own judgment and partly on the burden of the evidence that is placed before it”… Whether there is substantial identity is a question of fact:…
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: “The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him…. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole”… And in Australian Woollen Mills Ltd v F.S. Walton & Co. Ltd. Dixon and McTiernan JJ. said: “ In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same”.
The ASOC identified four statements and four representations for the injurious falsehood case, namely, those pleaded at [26(a)-(d)] and [27(a)-(d)] of the ASOC (the injurious statements and injurious representations respectively). The injurious statements are as follows:
(a)“Not one of the 90 jobs on the NRMA-owned Manly Fast Ferry fleet is permanent”;
(b)“As MUA members go on strike, it is worth noting that the NRMA business is four years, two months and thirteen days into a Government contract with Transport for NSW to provide the high-speed Manly service, yet there has still not been one permanent job offered to any of the 90 ferry workers”;
(c)“MUA Sydney Branch Assistant Secretary Paul Garrett said ferry crews met yesterday, endorsing the work stoppage between 5pm and 11pm. The decision follows six months of negotiations with NRMA that have failed to see the company resolve the wage discussions or offer a single permanent job to the entirely casual workforce”;
(d)“NRMA Sydney harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards”; …
The injurious representations are as follows:
(a)the NRMA is not a safe ferry operator and its safety standards fall short and are not at an appropriate level;
(b)not one of the 90 jobs on the MFF fleet is permanent;
(c)the MFF fleet consists of an entirely casual workforce; and
(d)the NRMA has not offered one permanent job to any of the 90 MFF fleet workers.
The NRMA bears the onus of proving that the injurious statements and injurious representations were false. Unlike an action for defamation, the applicant has the obligation to prove falsity, which is not presumed but must be affirmatively established.
The historical origins of the tort of injurious falsehood can be traced back to the late 16th century in cases involving a challenge to the plaintiff’s title to land, which gave rise to the tort also being referred to as “slander of title” (Palmer Bruyn at [57] per Gummow J; Orion at [196]). The tort developed so as to cover the knowingly making of a false assertion that the plaintiff’s products (not limited to title to land), were inferior in circumstances where the mendacity was calculated to injure the person in his or her trade. Weinberg J also explained the differences between the tort and defamation at [198] of Orion (see also Palmer Bruyn at [58]).
In AMI Australia Holdings Pty Ltd v Fairfax Media Publications Pty Ltd [2010] NSWSC 1395; [2011] Aust Torts Reports 82-077, Brereton J explained at [30]:
In injurious falsehood, unlike in defamation, the plaintiff bears the onus of proving falsity [Palmer Bruyn, 406 [58]]. From time to time, AMI’s submissions slipped into the form that there was no evidence to support or justify an imputation, and therefore that it was false. This is not the way in which the tort of injurious falsehood works; unlike in defamation, where it is for a defendant to justify an imputation, in injurious falsehood the plaintiff must prove the imputation to be false. However, the absence of evidence to justify a falsehood is not without significance: where there is nothing to justify it, it may take very little to establish, on balance, that the imputation is false.
The injurious statements that are alleged to be false fall into two categories. First, the statements pleaded at [26(a) to (c)] of the ASOC relate to the claim that there were no permanent jobs within the MFF workforce and that the NRMA had not offered permanent jobs to the MFF workforce. The statements are said to be false on the basis that there were in fact three permanent employees and that Noorton had offered permanent employment to one employee in February 2019. This is all relevant to the absence of recklessness and malice for the purposes of injurious falsehood. The second category concerns the statement pleaded at [26(d)] of the ASOC, namely that “NRMA Sydney harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards”.
The injurious representations all fall within the first of those categories, namely that relating to the alleged non-permanency of the MFF workforce.
For the reasons given above in relation to the non-permanency representations the subject of the NRMA’s complaints concerning misleading or deceptive conduct under the ACL, I find that the injurious statements and injurious representations were made by the MUA and that they were false. An exception is drawn in relation to the NRMA’s claim that the statement “NRMA Sydney harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards”. That statement is not false. It is aspirational (see [165] above).
But that is insufficient to make good the NRMA’s claims of injurious falsehood. As noted, it has the onus of establishing that the falsehoods were made maliciously and that it suffered actual damage as a result of those falsehoods. I shall now explain why I am not satisfied that the NRMA has discharged its onus.
(i) Malice
Malice is an essential element of the tort. As Weinberg J observed in Orion at [200], malice “is never easy to define in the law of tort”. His Honour referred approvingly at [202] to a passage at paragraphs [145-835]-[145-845] in volume 10 of Halsbury’s Laws of Australia where it is stated that malice may not be inferred from the fact of publication, but will be inferred where a false publication was made with an intent to injure without just cause and with knowledge of the falsity or reckless indifference as to its truth or falsity (see also Roberts v Bass [2002] HCA 57; 212 CLR 1 at [91] per Gaudron, McHugh and Gummow JJ and the authorities referred to therein).
Significantly, however, it is insufficient to show that the false publication was made with a mere lack of care or with an honest belief in its truth. Malice is often understood to involve an intent to injure another without just cause or excuse or by some indirect, dishonest or improper motive. Malice involves that the statement was made mala fide or with a lack of good faith. A person who acts in good faith is not liable.
In Fairfax Media, Brereton J gave the following explanation at [31], with which I respectfully agree:
Again unlike in defamation, in injurious falsehood malice is also an essential element of the cause of action, to be proved by the plaintiff. While the notion of “malice” in the context of this tort is not easy to define [Schindler Lifts Australia Pty Ltd v Debelak (1989) 89 ALR 275, 291 (Pincus J)], it is a question of motive, intention or state of mind and it involves the use of an occasion for some indirect purpose or indirect motive such as to cause injury to another person [British Railway Traffic & Electric Co Ltd v CRC Co Ltd & London County Council [1922] 2 KB 260, 269; Browne v Dunn (1893) 6 R 67, 72; Dickson v Earl of Wilton (1859) 1 F&F 419, 427; (1859) 175 ER 790; Stuart v Bell [1891] 2 QB 341, 351; Shapiro v La Morta [1923] All ER Rep 378; Schindler Lifts Australia Pty Ltd v Debelak, 291]. The English Court of Appeal has said that the criteria for malice in injurious falsehood are the same as at common law for libel and slander [Spring v Guardian Assurance PLC [1993] 2 All ER 273, 288; reversed on other grounds Spring v Guardian Assurance PLC [1995] 2 AC 296]]. Its content has been variously described as “an intent to injure another without just cause or excuse” or “some indirect, dishonest or improper motive” [J Fleming, The Law of Torts, 9th ed (1998) LBC Information Services at 780; Palmer Bruyn, 423 [108] (Kirby J)], or “a purpose or motive that is foreign to the occasion and actuates the making of the statement” [cf Roberts v Bass (2002) 212 CLR 1, 30; [2002] HCA 57, [75] (Gaudron, McHugh & Gummow JJ)]. It involves that the statement was made mala fide or with a lack of good faith. In this context, while a person who acts in good faith is not liable [Joyce v Sengupta [1993] 1 All ER 897], malice may exist without an actual intention to injure [Wilts United Dairies Ltd v Thomas Robinson Sons & Co Ltd [1957] RPC 220; Wilts United Dairies v Thomas Robinson [1958] RPC 94]
Whilst malice will typically be inferred from affirmative knowledge of falsity and, perhaps, from reckless indifference as to the truth, a mere lack of affirmative belief in truth is insufficient of itself to establish malice (Roberts v Bass at [15], [39]-45] per Gleeson CJ, [76]-[104] per Gaudron, McHugh and Gummow JJ). In Orion, Weinberg J said at [222] that the relevant threshold of malice was not met in the circumstances there:
[I]t is my view that Mr Apostolides genuinely believed that all of the factual allegations which he made about the collars were true. He believed that dogs had been burned as a result of their use. He also believed that they inflicted a 3,000 volt shock. These were damaging statements to make about Innotek’s products. However, though false, they were not made maliciously.
In establishing malice, recklessness does not simply mean carelessness, even in a high degree. It means ‘‘indifference to its truth or falsity.” Negligence or carelessness is insufficient to establish malice and thereby give rise to liability for injurious falsehood. Even a lack of affirmative belief in truth will not, of itself, establish malice.
In an attempt to establish malice, the NRMA pointed to the satirical Facebook page about Mr Ford (called “Richard Fraud”) and it also claimed that the MUA knew from around 18 February 2019 that a general purpose hand had converted from casual to permanent employment. The NRMA also claimed that Mr Ford told Mr Garrett at a meeting in early 2019 that one MFF employee had converted to permanent employment as part of the expression of interest process.
As to the first of those matters, although Mr Garrett did “like” and write “comments” on posts on the Richard Fraud Facebook page, there is no evidence that that account was established or maintained by the MUA. I do not accept that this matter supports the NRMA’s claim of malice.
Furthermore, to establish malice the NRMA needed to show the improper purpose actuated the injurious representations, that is an improper motive was the dominant reason for making the injurious representations (Roberts v Bass at [104]). Even if the NRMA established personal animus by Mr Garrett against Mr Ford through the Richard Fraud Facebook page, it is unclear how that would establish an inference that the pleaded injurious representations about the safety standards of the MFF or the permanency of their staff was actuated by an improper motive.
The second matter concerns evidence said to establish knowledge that the MUA knew its permanency representations were false. It has two elements to it. The first is the fact that the MUA had in its possession a MUA Membership Application Form dated 18 February 2019 which had been filled out by a member who recorded on the form that he was a permanent MFF employee. When cross-examined about this document, Mr Garrett said that he was not aware of the particular form and that such forms were provided to the Branch Secretary of the MUA, Mr Paul McAleer. I accept Mr Garrett’s evidence that he was unaware of the particular form. The NRMA does not contend that any of the statements regarding permanency which are the subject of its complaint were made by Mr McAleer or that anyone within the MUA who did make those statements was aware of the form.
The NRMA did, however, submit that the supply of the membership form to Mr McAleer meant that the MUA had knowledge of the permanent employee some weeks before the impugned representation and that this fact assisted in establishing the MUA’s malice. I disagree. The submission ignores the care that must be taken in attribution of knowledge to an artificial legal person, particularly by means of aggregation, and the necessity for paying close attention to the rationale and underlying principles of the relevant substantive rule of liability (Commonwealth Bank of Australia v Kojic [2016] FCAFC 186; 249 FCR 421 at [63]-[67] per Allsop CJ, [94]-[100] and [109]-[115] per Edelman J). As explained above at [193], the element of malice in injurious falsehood is concerned with mala fides and dishonest, improper or collateral motives.
The second aspect of the permanency matter relates to whether or not Mr Ford told Mr Garrett during the course of a meeting in early 2019 that one person had converted to permanency as part of the expression of interest process which had been introduced towards the end of 2018. The determination of this allegation requires the Court to resolve a dispute in the evidence between Ms Sallan (a HR consultant at NRMA) and Mr Garrett. For the reasons which I now give, Mr Garrett’s evidence is preferred.
Ms Sallan says that she was present at a meeting and overheard Mr Ford tell Mr Garrett that one casual employee had converted to permanency under the expression of interest process. Ms Sallan attended the meeting to take notes and so that she knew what was going on. She said that she had attended several such meetings with the MUA. She could not remember all the meetings which she had attended, the number of those meetings or the date of the meeting when she said she overheard a conversation between Mr Ford and Mr Garrett. The meeting took place in the context of negotiations for an enterprise agreement for Masters, as opposed to other MFF staff. Ms Sallan did not take a note of the conversation and she could not recall who else was there. She could not recall whether Mr Morley was there but she recalled both Mr Ford and Mr Garrett being present. She could not identify the names of other union representatives attending the meeting. Ms Sallan said that the relevant conversation between Mr Ford and Mr Garrett was a “side discussion” and was part of the enterprise agreement negotiation. She accepted that the expression of interest process did not apply to Masters and she agreed that any conversation on the expression of interest process was not part of the substance of the meeting. She also accepted that it was possible that Mr Ford would be in a better position to give evidence in relation to his conversation and that the conversation between the two men was between themselves and not directed to her. When pressed, Ms Sallan said that she was not mistaken in stating that Mr Ford told Mr Garrett that an employee had in fact converted to permanency.
While I accept that Ms Sallan was an honest witness, I cannot and do not accept her version of what was said at the relevant meeting, having regard to the matters outlined immediately above. Ms Sallan’s recollection of the meeting was notably vague and uncertain, as she candidly acknowledged. I am not confident that her recollection of what was said between Mr Ford and Mr Garrett in their side discussion is accurate.
It is also notable that the relevant meeting was attended by both Mr Richard Ford and Mr Morley (who is the General Manager of Human Resources for the NRMA). The NRMA called neither of them to give evidence. The Jones v Dunkel (1959) 101 CLR 298 principle applies.
For the following reasons, I prefer Mr Garrett’s evidence on this issue. It was put to Mr Garrett in cross-examination that, during the course of the meeting in early 2019, he was told by Mr Ford that one person had converted to permanency under the expression of interest process. He said that he was not told that fact. I accept his evidence. He said that if he had been told that fact he would not have stated that there were no permanent jobs because he would not have allowed himself “to be tripped upon on that technicality”. I accept his evidence. I also accept Mr Garrett’s evidence that he honestly believed in December 2018 that all of the MFF staff were casual and that he had no direct understanding of what proportion of MFF employees might or might not have taken up the expression of interest process. I also accept his evidence that the maritime industry is small and that “seagulls” keep the MUA informed about developments and that he had not been told that anyone had been made permanent. I also accept Mr Garrett’s evidence that he repeatedly tried to call Mr Ford, the CEO of Noorton, and Mr Ford refused to take his calls about the expression of interest process generally. Mr Garrett stated unequivocally at T 240.5 that there was “no doubt in my mind at the time” that all the staff were casual. I accept his evidence that he “had nothing in my possession, knowledge or otherwise or any indication from the company, the workers, the delegates or anyone else had been made permanent”. I find that it was not until shortly before these proceedings commenced that Mr Garrett learned that some of the MFF staff were permanent.
I am satisfied that Mr Garrett’s evidence demonstrates that the statements and representations complained of were made as part of a campaign by the MUA aimed at securing permanent employment for members, achieving wage outcomes that are consistent with the prevailing rates in the industry and recouping underpayments for employees. There is no suggestion that the industrial campaign is not genuine or the objectives are not legitimate. The MUA’s conduct cannot be described as an attempt to injure the NRMA without just cause or excuse or by some indirect, dishonest or improper motive. In assessing whether the matters relied upon by the NRMA establish malice, it is also relevant to take into account the context in which the conduct occurred, namely an industrial dispute in which it is customary for the disputants to engage in confronting and sometimes belligerent behaviour. The context is hardly that which might be expected at, say, a tea party or a prayer meeting (to adopt Perram J’s memorable expression in Australian Securities and Investments Commission v Accounts Control Management Services Pty Ltd [2012] FCA 1164 at [14]).
I accept the NRMA’s submission that the industrial campaign had as an intended target the NRMA brand. This included persuading members of the public that the NRMA brand was no longer trustworthy, as well as calls by MUA officials, including Mr Paul Keating, for consumers to boycott the company. Viewed in the context of an industrial campaign, however, I do not consider that these matters rise to the high level of malice. I am not satisfied that the statements and representations complained of were made with knowledge that they were false or with a reckless disregard as to whether or not they were true. For completeness, I should add that I do not consider the Offending Logo or the emails concerning “hacking” of the NRMA’s brand assist the malice case. That evidence does not go so high as to establish improper motive, bearing in mind the context of the industrial campaign, nor does it show that any improper motive actuated the pleaded injurious representations.
For these reasons, I am not satisfied that the NRMA has established malice. The injurious statements and injurious representations were genuinely made and in circumstances in which Mr Garrett honestly believed the statements to be true.
(ii) Actual Damage
An applicant alleging the tort of injurious falsehood must prove that it has suffered particular and identifiable loss or damage as an essential element of the tort. The actual damage done is the very gist of the action. The requirement has been variously stated as requiring the plaintiff to establish “special damage”, “particular and identifiable loss or damage” and “actual damage” (Ratcliffe v Evans at 527-528 per Bowen LJ; Giraffe World Australia Pty Ltd v Australian Competition and Consumer Commission [1998] FCA 1560; (1999) ATPR 41-669 at 42-537 per Lindgren J). The tort of injurious falsehood does not provide a cause of action for mere injury to either reputation or feelings. A party seeking to establish injurious falsehood must plead and prove actual, that is, identifiable financial loss or damage, as an essential element of the tort.
For example, in Orion, Weinberg J said at [198]:
In some respects, this tort bears a marked resemblance to defamation. Both involve a false and harmful imputation concerning the plaintiff which is made to a third party. They differ, however, in that the law of defamation protects interests in personal reputation while injurious falsehood protects interests in the disposability of a person’s property, products or business. Defamation is generally actionable without proof of damage. Falsehood is presumed and liability is strict. In an action for injurious falsehood, the plaintiff must prove that he sustained actual economic loss, that the offending statement was false, and that it was made with intent to cause injury without lawful justification. The requisite state of mind is often described as malice.
Similarly, in Haines v Australian Broadcasting Corporation (1995) 43 NSWLR 404, Hunt CJ at CL said at 408:
The importance of actual damage as an element of the tort of injurious falsehood is that, because the tort is not concerned with injury to either reputation (Ballina Shire Council v Ringland (1994) 33 NSWLR 680 at 694) or feelings (Fielding v Variety Inc [1967] 2 QB 841 at 850), damages for injurious falsehood would appear to be restricted to the recovery of that actual damage: ibid at 850.
The ASOC pleads that the NRMA has incurred expenses and loss, its business was harmed and it has suffered actual financial loss or damage. The NRMA has not, however, provided details of any particular or identifiable loss or damage that has been suffered as a consequence of any of the statements that are pleaded nor is there any evidence of any specific damage suffered.
To make out the tort and prove actual damage, the NRMA needs to demonstrate actual financial loss as a result of the pleaded statements which, it is said, were false and maliciously made. That is, it is necessary to prove that actual financial loss resulted from the four particular statements pleaded as constituting the tort of injurious falsehood.
There is an additional relevant requirement. Even if actual financial loss is established with respect to the actions of the MUA generally, to make out the tort it is also necessary for the NRMA to prove the loss resulted from the particular injurious statements and/or injurious representations as pleaded in the ASOC.
To prove damage, the NRMA relies primarily on alleged “reputational damage” or assertions that the public had been “misled”. The evidence of damage to reputation is tenuous and, at best, speculative. For example, the NRMA alleges damage to reputation as a result of three comments on the MUA Facebook page and two comments on the Megaphone website. The suggestion that five comments on social media indicates any appreciable damage to reputation is fanciful. In any event, the tort of injurious falsehood, does not protect against mere damage to business reputation. Alleged “reputational damage”, even if established, is insufficient to make out the tort. The NRMA must show how the alleged “reputation damage” translated into actual economic loss.
As to Mr Heberden’s evidence, I accept the MUA’s submission that it all goes to reputation and brand. Mr Heberden did not give any evidence of any particular financial loss to the NRMA which was causally connected to the injurious statements or injurious representations.
As to the NRMA’s claim that because the alleged trade mark infringements related to the NRMA’s property in its trade marks, I am not satisfied the NRMA has established any damage to property separate from its allegation of damage to business reputation generally. Trade marks protect a proprietor’s ability to use exclusively registered signs and marks as markers of association with the proprietor. While the NRMA may contend the value of that association has been lessened due to damage to its business reputation, its ability to use its trade marks (and prevent others from using them) to establish association of its goods and services with the NRMA remains unimpeded.
Turning to the NRMA’s reliance upon MFF passenger numbers (which is confidential), the evidence falls far short of establishing a causal connection between those numbers and the injurious statements and injurious representations. There is a wide range of other possible explanations for those numbers — alternative transport arrangements, other statements made by the MUA, the effect of the strikes, seasonal factors and home telecommuting replacing the need for people to travel to and from work.
For these reasons, I find that the tort of injurious falsehood has not been established, not only because the relevant statements and representations were not made maliciously, but also because the NRMA has not established actual damage in the relevant legal sense.
(d) Implied Freedom of Political Communication
As explained above, it is unnecessary in the particular circumstances of this case to consider and determine the MUA’s reliance on the implied freedom of political communication (see Universal Film Manufacturing Co (Australasia) Ltd v New South Wales (1927) 40 CLR 333 at 342 per Isaacs ACJ; Knight v Victoria [2017] HCA 29; 261 CLR 306 at [32] and Clubb v Edwards at [32] ff per Kiefel CJ, Bell and Keane JJ), noting that there is nothing about this case which would warrant departing from the well-established approach that Constitutional issues should only be determined if the proceeding cannot be disposed of on a non-Constitutional basis.
F. Conclusion
For these reasons, the proceeding will be dismissed, with costs. It is unnecessary to determine the MUA’s contention that declaratory or injunctive relief should be refused in the Court’s discretion having regard to the NRMA’s delay in bringing these proceedings or that the injunctive relief sought is unacceptably uncertain. That is simply because the NRMA has failed to establish any of its three causes of action.
I certify that the preceding two hundred and twenty-one (221) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Griffiths. Associate:
Dated: 11 September 2019
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