Nebalet P/L v Puhapi P/L

[1992] FCA 772

C A T C H W O R D S

Passina off - protection of business name - use of similar name by competitor in same field of activity - Trade Practices

Act (1974) 6.52

NEBALET PTY. LIMITED V. PUHAPI PTY. LIMITED

No. NG 603 of 1992

29 SEPTEMBER 1992

BEAUMONT J.
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA	) )
NEW SOUTH WALES DISTRICT REGISTRY )	No. NG 603 of 1992

)

GENERAL DIVISION )

BETWEEN:

NEBALET PTY. LIMITED

Applicant

AND:

PUHAPI PTY. LIMITED

Respondent

L R A M *	Beaumont J.
DATE :
-	29 September 1992

PLACE: Sydney

MINUTES OF ORDER

THE COURT ORDERS:

1. That the respondents be restrained from using the name "Nuvo" in connection with their products without clearly distinguishing those products from the products of the applicant.

2. That the respondents pay the applicant's costs.

3.    Reserve liberty to the applicant to apply for

further relief by way of damages or for an account

of profits.

Note:	Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA	)
1
NEW SOUTH WALES DISTRICT REGISTRY )	NO. NG 603 of 1992

1

GENERAL DIVISION 1

BETWEEN:

NEBALET PTY. LIMITED

Applicant

AND:

PUHAPI PTY. LIMITED

Respondent

CORAM:	Beaumont J.
DATE :
-	29 September 1992

EX TEMPORE REASONS FOR JUDGMENT

This is a claim in passing off and under s.52 of the Trade Practices Act 1974. The applicant seeks, inter alia, an injunction restraining the respondents from :

furniture building services under the name "Nuvo" or any other

1. Promoting or supplying kitchen furniture or kitchen

name similar to the name "Nouvelle".

2. Passing off their goods and business for or as the goods
and business of the applicant.

The applicant, Nebalet Pty Limited, has manufactured
kitchens in Taree since 1982. Initially, its kitchens were

sold on the north coast under the business name of "North Coast Kitchens". In May 1987 the applicant applied for and obtained business name registration of the name "Nouvelle Kitchens & Interiors". Since July 1989, initially through a franchisee but now in its own right, the applicant has traded in Sydney under that name in a showroom at Pennant Hills. Sales from that Sydney business in the years ended 30 June 1990, 1991 and 1992 were $387,269, $911,726 and $1,513,252 respectively.

In Telecom Australia's Yellow Pages for Sydney in 1990 and 1991 the applicant placed advertisements for Nouvelle Kitchens and Interiors. The 1990 advertisement is in exhibit G1 at page 1474 of the 1990 directory. There is a similar advertisement for the 1991 year. The 1990 version is annexed to these reasons. In that advertisement the applicant described its products as "European inspired - Australian made". In the twelve month period from August 1991 to July

advertising the "Nouvelle Kitchen" product. A sample of that 1992 the applicant expended a total sum of $106,085 on

advertising, extracted from Trends magazine, is annexed to
these reasons.

In its advertising the applicant has emphasised the "European flavour" of its Australian made kitchens. Advertising of this kind was placed in journals and newspapers and was shown on television. On some occasions, as in the

case of the Trends magazine advertisement, the applicant used
dots in conjunction with the name Nouvelle, whereby two dots
were placed both under the N and over the V.

I am satisfied that the applicant has established a reputation in Sydney and in other parts of this state in the name Nouvelle in connection with the manufacture and sale of custom-built kitchens.

The respondents are related corporations. The third respondent, Intergrale Pty Limited, manufactured and distributed kitchens for some time in Sydney and in other parts of New South Wales under the names "ProPak" and "Austel" Kitchens.

In early 1991, Telecom Australia commenced the use
of the name "Austel" and the third respondent then had to

discontinue the use of that name. In June 1991, the first and second respondents applied for the registration of the

business name "Nuvo Kitchens" in connection with the manufacturing side of kitchens. Registration was granted in March 1992. The first and second respondents have given the third respondent consent to use the name "Nuvo Kitchens" on vanity units, kitchens and wardrobes manufactured by the third respondent. In July 1992 the third respondent began promoting its products under the name "Nuvo Kitchens".

An example of its advertising is also found in the issue of Trends magazine previously mentioned and is also annexed to these reasons. It will be noted that two dots appear over the letter 0 in the word "Nuvo". The statement in the advertisement that "The look is European. The origins Australian" will also be noted.

The legal principles in this area are well-settled. To establish a likelihood of deception under s.52 or in passing off, where there has been no direct misrepresentation, generally requires the presence of two factual elements:

1. That the name "Nouvelle" used by the applicant has
acquired a reputation among a relevant class of persons and;

2. That members of that class will mistakenly infer from the respondent's use of the name "Nuvo" that their business is

connected with the applicant's business. (See Halsburv's Laws of Enaland, 4th ed. Vo1.48 at para.163).

It is also well established that in arriving at the ultimate conclusion of fact where the deception is likely, regard should be had to: (a) the nature and extent of the applicant's reputation; (b) the closeness or otherwise of the respective fields of activity in which the applicant and the respondents are in business; (c) the similarity of the name

used by the respondents to that of the applicant; (d) the manner in which the respondents make use of the name and collateral factors such as the similarity or dissimilarity of secondary indicia (for example, the use of express words of disclaimer, sufficient to prevent deception which might otherwise arise); and (e) the manner in which the parties carry on their respective business, the class of persons who it is alleged is likely to be deceived and all the other surrounding circumstances. See Halsburv's op. cit.

In the present case, as has been said, the applicant has established a reputation among members of the public and other parts of New South Wales in the name "Nouvelle" in the field of the supply of custom built kitchens. Further, in my view, unless effective steps are taken by the respondents to distinguish their respective producta, members of the public will mistakenly infer from the respondent's use of the name

business. "Nuvo" that their business is connected with the applicant's

In arriving at this conclusion it is significant in my view that: (i) the parties are competing in a similar fashion in the same field of activity so that the advertising in question is likely to be addressed to a common audience; (ii) the names, although not the same, have a degree of similarity both phonetically and visually; (iii) there are

similarities in the secondary indicia used by the parties, in particular the use of dots and the get up which emphasises the European features with an Australian manufacturer; and (iv) the absence of any disclaimer of a connection between the two businesses.

Although in origin "nouvelle" is French, as Professor Bernard explained in his evidence, the word is commonly used in this country. In my opinion both "Nouvelle" and "Nuvo" convey the same idea, namely something new having a European character. As a result, I think it is likely that consumers would mistakenly infer that the two products were put out by the same manufacturer (cf. Feinaold v. Demoiselle Juniors Limited (1948) 7 Fox's Patent Cases at p.118 per Cameron J at 122). For the sake of completeness it should be noted that it was also contended for the applicant that the respondents intended to copy the applicant's name. The

respondents denied this. It is not necessary for me to make, and I do not make, any finding on this point.

On the question of relief, I propose to grant injunctive relief injoining the use of the name "Nuvo" without clearly distinguishing the products of the parties. I make the following orders:

1.	That the respondents be restrained from using the name "Nuvo" in connection with their products without clearly distinguishing those products from the products of the applicant.
2.	That the respondents pay the applicant's costs.
3.	Reserve liberty to the applicant to apply for further relief by way of damages or for an account of profits.

I hereby certify that this and the preceding five (5) pages are a true copy of the reasons for judgment of Mr. Justice Beaumont .

Associate: &-

Dated:  29 September 1992

F O O D F O R @ T H O U G H T l l