P Cubed Pty Ltd v Program Planning Professionals Pty Ltd

[2007] FCA 684

FEDERAL COURT OF AUSTRALIA

P Cubed Pty Ltd v Program Planning Professionals Pty Ltd [2007] FCA 684

P CUBED PTY LTD  v PROGRAM PLANNING PROFESSIONALS PTY LTD
VID195 OF 2007

JESSUP J
3 MAY 2007
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID195 OF 2007

BETWEEN:	P CUBED PTY LTD Applicant
AND:	PROGRAM PLANNING PROFESSIONALS PTY LTD Respondent

JUDGE:	JESSUP J
DATE OF ORDER:	3 MAY 2007
WHERE MADE:	MELBOURNE

UPON THE APPLICANT UNDERTAKING:

a)to submit to such order (if any) as the court may consider to be just for the payment of compensation, to be assessed by the court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the interlocutory order or undertaking or any continuation (with or without variation) thereof; and

b)to pay the compensation referred to in (a) to the person there referred to.

And upon the respondent, by its counsel, undertaking until the trial of the proceeding or further order:

a)not to make use of the word ‘PCubed’ or any variation thereof or the symbol ‘P^3’ beyond:

(i)the circumstances referred to in the affidavit of Martin Hooper made on 18 April 2007; and

(ii)answering telephone calls as PCubed Australia;

without giving the applicant 3 business days notice of its intention to do so; and

b)to maintain an accurate record of the new contacts which it receives either seeking to engage its services or enquiring as to the engagement of such services.

THE COURT ORDERS THAT:

1.The applicant’s application for interlocutory injunctions be dismissed.

2.The costs of the applicant’s interlocutory application and of this directions hearing be reserved.

3.The applicant file and serve its Statement of Claim on or before 17 May 2007.

4.The respondent file and serve its Defence on or before 31 May 2007.

5.If there is to be a Reply, the applicant file and serve its Reply on or before 7 June 2007.

6.The parties exchange categories of documents required to be discovered in accordance with O 15 r 2(3) of the Rules of Court on or before 14 June 2007.

7.The parties give discovery in accordance with the said categories on or before 5 July 2007.

8.The matter be referred to mediation in accordance with O 72 of the Rules of Court at a time and place to be fixed in consultation with the District Registrar within the fortnight commencing 23 July 2007.

9.The mediator report to the court on or before 17 August 2007.

10.The applicant file and serve any affidavits upon which it proposes to rely on or before 31 August 2007.

11.The respondent file and serve any affidavits upon which it proposes to rely on or before 14 September 2007.

12.The applicant file and serve any affidavits in reply upon which it proposes to rely on or before 20 September 2007.

13.The trial be by affidavit with recourse to cross examination in accordance with the Rules of Court.

14.The trial be fixed for 1 October 2007 with a maximum estimate of 5 days.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID195 OF 2007

BETWEEN:	P CUBED PTY LTD Applicant
AND:	PROGRAM PLANNING PROFESSIONALS PTY LTD Respondent

JUDGE:	JESSUP J
DATE:	3 MAY 2007
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. The applicant, P Cubed Pty Ltd, operates in the information technology consulting sector, the services to its clients including project management, voiceover internet protocol, security reviews, local area network design, implementation and support, preventative maintenance and other services.  The applicant, which has been in business since 1992, is based in Melbourne, but seeks to promote and provide its services anywhere in Australia.  From the outset, or thereabouts, in addition to using its own name, the applicant has referred to itself in various similar ways, including P-Cubed, PCubed, p cubed, Pcubed and P³.  In 1999, the applicant obtained the internet domain name “pcubed.com.au”, and since then has used that domain name both in the address of its own website and in the email addresses of the members of its staff (and a generic “info” email address).  The applicant has entries, under its own name, in the paper and electronic white and yellow pages telephone directories. 

2. The respondent, Program Planning Professionals Pty Ltd, is a wholly-owned subsidiary of a company registered in the United States of America, Program Planning Professionals Inc (“PPP Inc”).  PPP Inc was incorporated in 1995, and has subsequently used the word “Pcubed” and the symbol “P³” in identifying and describing itself and its products.  PPP Inc claims to be one of the world’s largest consulting companies dedicated to what is described as project, program and portfolio management solutions.  Relying upon a definition provided by the Project Management Institute, and other like bodies, PPP Inc says that project management (ie the kind of activity in which it is substantially engaged) is “the application of knowledge, skills, tools and techniques to project activities to meet project requirements”.  It refers also to corresponding definitions of program management and of portfolio management.  Very broadly, the sector within which PPP Inc operates is management consulting.  In 1995, PPP Inc obtained the domain name “pcubed.com”, and has maintained a website at that domain address since 1996.  It has used that domain name for the email addresses of its staff, in addition to a generic address using the abbreviation “info” in conjunction with that domain name.

3. The respondent was incorporated in New South Wales in December 1997.  Since then, the respondent has been the vehicle through which PPP Inc operates its business in Australia.  That business has operated in many countries, and has been described as “seamless”.  The respondent has no separate website, but details of its operations appear under an Australian link within the website of PPP Inc.  Staff employed by the respondent have email addresses associated with the “pcubed.com” domain name. 

4. It appears from the evidence that the respondent uses the “P³” symbol prominently on its letterhead and on business cards used by its staff.  The respondent’s practice in these regards appears to be indistinguishable from that of its parent, PPP Inc.  The letterhead and business cards also refer to the “pcubed.com” domain name and the corresponding website address.  Other promotional material used by the respondent makes reference to “P³”, or, since at least 2004, to “Pcubed Australia”.  The respondent appears not to have any entry in the Yellow Pages, but, in about May 2006, the words “Pcubed Australia” were added in parenthesis to its own name in the electronic White Pages directory.

5. In the present proceeding, the applicant alleges that the use by the respondent of the “P Cubed” name and “P³” symbol constitutes passing off, and a breach of s 52, and of certain provisions of s 53, of the Trade Practices Act 1974 (Cth). It seeks declarations, injunctions, damages and other relief. Pending the hearing and determination of the proceeding, the applicant seeks interlocutory injunctions in the following terms:

   Injunctions, both permanent and interlocutory, whether pursuant to the Trade Practices Act 1974 (Cth) or otherwise, restraining the Respondent, whether its self or by its servants or agents or otherwise howsoever from:

   (a)applying or using the Pcubed name and the P³ logo in the form in which those are presently used by the Respondent or at all;

   (b)applying or using words, symbols, or a combination of words and symbols which are substantially identical or deceptively or confusingly similar to the P Cubed name and the P³ logo currently used by the Applicant;

   (c)without limiting paragraphs (a) and (b) above, applying or using the name Pcubed Australia or any like name, notwithstanding any registration of such a name as a Business Name in any State or territory in Australia.

6. For the purposes of considering whether the applicant has a seriously arguable case, I do not think there is any real point in attempting to make a distinction between the two causes of action upon which the applicant relies.  On the evidence before the court, the applicant had an established business in Australia which branded itself both as “P Cubed” and as “P³” before the time when the respondent (or, if it matters, PPP Inc) commenced to use those, or very similar, words and symbols in Australia.  Both the words and the symbols are arguably quite distinctive, with the result that a member of the public – specifically a representative of companies who might be the applicant’s customers from time to time – might well be misled into the erroneous conclusion that the respondent was part of the same organisation or corporate group as, or otherwise associated with, the applicant. 

7. A question of lively controversy between the parties on this interlocutory application is whether the respondent provides services of the same kind as those provided by the applicant, or is in the same industrial sector as the applicant.  The respondent insists that the project management services which it provides are quite distinct from the kind of information technology system services which the applicant provides.  For its part, the applicant points to evidence which, at the arguable case level, appears to sustain the inference that at least some of the services for the provision of which the respondent promotes itself relate to information technology systems, albeit that in a number of cases those services may be but a component of a much broader project management service delivered by the respondent.  This is not a controversy which it is either necessary or desirable that I should attempt to resolve on this occasion.  Without knowing much more about the facts of the matter, I should not presume to exclude the fairly arguable possibility that at least a significant component of the respondent’s activities would overlap the information technology-related activities of the applicant to such an extent as would effectively compromise any defence based upon the bare proposition that the applicant and the respondent were working in quite different industrial sectors, such as to avoid the prospect of any relevant member of the public being misled. 

8. The respondent also contended that there was no evidence that any person had in fact been misled into the erroneous conclusion that the respondent was associated with the applicant.  However, there was evidence led by the applicant of a deal of misdirected correspondence and inquiries which tended, on the face of it, to suggest that relevant members of the public, believing themselves to be making contact with the respondent, instead made contact with the applicant.  Although this consideration is of little use to the applicant on the matter of balance of convenience (a question to which I return below), at the level of an arguable case it does tend to confirm what is, at least arguably, self-evident, namely, that two companies operating within the same geographical region by reference to the same distinctive, but substantially identical, names and symbols would quite probably be confused, one for the other, by relevant members of the public who were not otherwise conscious of the distinction between them.

9. For the above reasons, I hold that the applicant has a seriously arguable case that it will eventually be entitled to at least some relief under one or other, or both, of the causes of action upon which it sues.  I shall turn next to the matter of the balance of convenience.

10. The evidence does not justify a conclusion that the respondent, being conscious of the applicant’s name and reputation, sought to adopt a similar branding with a view to taking advantage thereof.  This is a case in which two companies – one in Australia and one in the United States – quite independently selected virtually identical names and symbols by which they would be known.  Possibly because, in its operations, the respondent has no visible existence other than as the Australian manifestation of PPP Inc, and possibly because the respondent never had any presence on the internet other than as an Australian link from the website of PPP Inc, the respondent’s use of “Pcubed” and “P³” in, or with reference to, Australia, appears to have slipped under the guard of the applicant, as it were.  I say this in no critical sense, and I do not hold that the applicant has been guilty of any such delay in seeking interlocutory relief as would affect its title thereto.  However, the fact remains that both the applicant and the respondent are conducting viable and legitimate businesses and that, quite independently of each other, they have selected, in two respects at least, virtually identical branding.

11. If I were to grant the applicant the interlocutory relief which it seeks, the effect would be to stop the respondent from using the symbols of branding by which it has, I infer, been known for a number of years.  It is true, as pointed out on behalf of the applicant, that the respondent has also promoted itself by its own name (or at least by the name “Program Planning Professionals”), but the evidence, such as it is, suggests that the word “Pcubed” and the symbol “P³” have been significant elements.  In compliance with an order of the kind which it seeks, the applicant accepts that the respondent would be obliged to change its letterhead, its business cards and much of its promotional stationery and other material.  These steps which the applicant seeks on an interlocutory basis are, I consider, significant ones, and should be regarded as imposing a burden upon the respondent as a trading enterprise.  Further, save for the production cost of bringing new stationery and other documents into existence, it is hard to see how the inconvenience and detriment which would be caused to the respondent by compliance with these orders might eventually be assessed as a matter of damages.  A company’s brand should be regarded as a significant asset. Any dislocation of the ability of a company to present itself to its customer cohort by reference to branding which is consistent in time and space should, I consider, be approached with caution. 

12. It was submitted on behalf of the respondent that orders of the kind which the applicant seeks would effectively introduce an artificial disconnect between the respondent and the global operations of PPP Inc of which it is a part.  I accept that submission.  The only response which the applicant offered was to point to the consistent use by PPP Inc and the respondent of the longer form of the global organisation’s name – Program Planning Professionals – and to suggest that there was no reason why the respondent should not use that form, as had often been done in the past.  I do not think that this response sufficiently meets the point.  The respondent has chosen a particular branding style which has not yet been demonstrated, other than merely arguably, to have constituted an infringement of the applicant’s rights.  I do not think the court should presume to tell the respondent, in effect, that it would not matter much if, for a time, it were obliged to abandon that branding.

13. As against these considerations, there is no evidence that the applicant has yet been harmed by the respondent’s conduct, even assuming it to be misleading or to constitute passing off.  It is true, as urged on behalf of the applicant, that s 52 is not concerned only – nor even, perhaps, primarily – with the interests of the other trader whose goods or services relevant members of the public might be misled into believing are those of, or associated with, the putative infringer.  That misleading conduct should not be abroad amongst consumers or, as here, relevant service acquirers within the business community, is manifestly a primary object of s 52.  There will be many cases in which to permit conduct which is arguably misleading to continue unrestrained during the interlocutory period might, at least as a matter of fair inference, cause loss and damage to consumers and others that could not, in any practical sense, be redressed at trial.  However, from the evidence before the court, this case appears not to be in that category.  Other than the limited evidence which exists about persons contacting the applicant in mistake for the respondent, there is nothing from which I might infer that parties not presently before the court might well suffer loss and damage if interlocutory orders were not made.

14. As I have said, there is no evidence that anyone has contacted the respondent, in mistake for the applicant.  Indeed, evidence led on behalf of the respondent (on information and belief though it is) is to the effect that there have been no such contacts.  By contrast, the applicant has given evidence of a number of contacts from people who thought they were contacting the respondent.  On the strength of this evidence, I could not infer that the respondent’s conduct over the last year or so has led to any loss and damage for the applicant, and there is nothing in the material which would justify the conclusion that the applicant’s likely experience over the period between now and the trial of the proceeding is likely to be any different. 

15. Although the matters to which I have referred above disposed me generally to decline the application for interlocutory relief, I indicated that I would do so only if the respondent were prepared to offer undertakings in two areas.  First, I required an undertaking, the terms of which would need to be settled, broadly to the effect that, pending the hearing and determination of the proceeding, the respondent would not expand the categories of its uses of the word “Pcubed” or the symbol “P³” beyond those which appear in the affidavit filed on its behalf on this application.  I would also require the respondent, over the interlocutory period, to maintain an accurate record of the new contacts which it receives from persons in Australia either seeking to engage its services, or inquiring about such an engagement.  As the respondent has indicated a readiness to offer these undertakings, I propose to dismiss the applicant’s interlocutory application.    

I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jessup.

Associate:

Dated:        10 May 2007

Counsel for the Applicant:	D Williams
Solicitor for the Applicant:	Gadens Lawyers
Counsel for the Respondent:	P Cawthorn
Solicitor for the Respondent:	Griffith Hack Lawyers Pty Ltd
Date of Hearing:	3 May 2007
Date of Judgment:	3 May 2007