Pinetrees Lodge Pty Ltd v Atlas International Pty Ltd

[1981] FCA 205

CATCHWORDS

Trade Practices - Consumer protection - mlsleading or

deceptive conduct - conduct llkely to mlslead or

deceive - passing off - use of logo by island

guesthouse containing silhouette of Island - slmllar

logos used by booking and travel agent In advertislng

-

relatlng to island - whether deceptlve or mlsleading

conduct or llkely to mlslead or deceive	- whether
passing off.

Trade Practlces Act 1974, s s . 5 2 , 53(c)(d).

Plnetrees Lodqe Pty. Limlted -v- Atlas Internatlonal

Pty. Lirnlted

N.S.W. No. G21 of 1981

Coram: Elllcott	J.
22 September 1981
Sydney

I N THE FEDERAL COURT OF	AUSTRALIA	)
)

smmy	DISTRICT	REGISTRY	)	G 2 1	N o .	of	1981
1

GENERAL D I V I S I O N 1

PINETREES LODGE PTY. LIMITED

A p p l l c a n t -

ATLAS INTERNATIONAL TRAVEL PTY. LIMITED

t rad ing	as	" L o r d	H o w e	I s l and T o u r l s t
C e n t r e "

R e s p o n d e n t

ORDER

JUDGE MAKING ORDER: E l l l c o t t J.

DATE O F ORDER 1 3 O c t o b e r 1981

WHERE MADE: Sydney

THE COURT ORDERS THAT: -

1. The respondent, by i t s e l f , Its servants and

agents be restrained from us ing i n trade or

c o m m e r c e the logo bemg annexure "P" t o the

a f f l d a v i t of Bruce McFadyen s w o r n on 2 3 March

1981 and f l led herem.

2.

2. Elther party have llberty to apply.

3 .	That the respondent pay four-fifths of the
appllcant's costs of these proceedlngs.

I N THE FEDERAL COURT OF AUSTRALIA

)

SYDNEY DISTRICT	REGISTRY	)	G 2 1	N o .	of	1981
1

GENERAL D I V I S I O N )

PINETREES LODGE PTY. LIMITED

A p p l l c a n t

ATLAS INTERNATIONAL TRAVEL PTY. LIMITED

t radlng as	"Lord Howe	Is land T o u r l s t
C e n t r e "

R e s p o n d e n t

CORAM: ELLICOTT J.

REASONS FOR JUDGMENT

Plnetrees Lodge P ty . L l r n l t e d ( t h e a p p l l c a n t )

conducts a guest house on Lord H o w e Island. It has brought

these proceedlngs against A t l a s I n t e r n a t l o n a l Travel Pty.

L i m i t e d ( t h e r e s p o n d e n t ) c l a l m l n g t h a t the respondent has

I n trade o r c o m m e r c e engaged i n conduct t h a t 1s m l s l e a d l n g

o r deceptlve or IS l i k e l y t o r n l s l e a d or decelve I n breach

of s . 5 2 of the Trade Practices A c t 1974 ( t h e A c t ) , t h a t it

has committed breaches of s . 5 3 ( c ) and ( d ) of the A c t and

1 s g u i l t y of passlng off its busmess as t h a t of	the
appl lcants .

2.

Since the early 1970's the appllcant has

operated the business of a guest house called "Plnetrees"

on Lord Howe Island. It caters for tourlsts, 1s the

largest guest house on the island and can accommodate

80 people or approxlmately 25% of the total island

tourist accommodation. There are some 13 other such

establishments on the Island.

The respondent has for some ten years conducted the buslness of a tourist agency and .

m so domg acted

for a number of these establlshmsnts. It currently

represents lodges and flats provldlng over 65% of the

accommodation on the Island and books approxlmately 3500

persons per year Into such establishments. It	1s also an
establlshed travel agent.

Untll late 1977 the applicant accepted tourlst

bookings from the respondent and paid it commlsslons in

respect thereof. For reasons whlch were given In evldence

It ceased to do so and thereafter appointed the New South

Wales Government Travel Centre as Its general sales agent.

The reasons glven make It clear that the appllcant no

longer wlshed the prlmary booklng of accommodation at

"Plnetrees" to be assoclated wlth the respondent. Smce

then the respondent has booked members of the publlc wlshlng to go to"Pinetrees"into that guest house through the New South Wales Government Travel Centre.

3 .

In 1973 Bruce McFadyen who shortly thereafter

became and still is an executive dlrector of the appllcant

was requested by the then main shareholder, Mrs Klrby, to

design a logo for use by the appllcant In connection wlth

Its business. The logo he designed was as follows:-

The island sllhouette at the top of the logo as

adopted was reproduced in a dark blue, the word "Plnetrees"

blue. There are two signlficant mountalns on Lord Howe	In a mld green and the words "Lord Howe Island" also in dark domlnate the island. The lsland sllhouette In the logo was
lntended in part to represent these mountams.

Mr McFadyen described the logo as a words eye n w.

In designmg it,he drew the shape of the mountalns as an

accurate representatlon of their silhouette but he

intentlonally exaggerated their vertical scale. Ths palm

trees and vegetation beneath do not and are not realistlc

representatlons and are based on styllsed trees and

vegetation that he had often drawn as an archltect on

architectural presentatlon drawlngs. The letterlng was set

out and hand drawn by him and was not based on a standard

prlnter's alphabet but he says that the way In whlch he

co-nblned the mountains, the palm trees, the vegetatlon and

4.

the lettering was a conscious design decision on his part

and that their combination dld not depict an actual lsland

scene but was intended to convey a feellng of identlfication

with Lord Howe Island. He asserted that the logo was an

original design.

After belng developed,this logo was used In that

form or wlth very minor varlatlons on letterheads, envelopes,

brochures and advertisements sent out by the appilcant and -

on calendars and t-shirts supplled by it to tourlsts.

Examples of these various	Items, apart from calendars, were
admltted m evidence.

The directors and staff of"Plnetrees"have worn

the t-shlrts durlng most of thelr worklng tune and the t-shirt

has In fact been part of each waitress' day time uniform

for about four years. On arrival at the airport guests are

met by a dlrector of the applicant wearing a t-shirt o a d

wlth identlfication. Over the past-flve years about 3,000

t-shlrts bearing the logo have been sold to Lord Howe Island

vlsltors.

In March 1979 the appllcant lodged an applicatlon

for reglstration of the logo as a trademark wlth the Reglstrar

of Trademarks. This appllcatlon is pendlng.

After the applicant ceased deallng dlrect wlth

the respondent It took a number of steps to advertlse Its

accommodation. It purchased double column advertlslng space

In the "Travel Australla" section f Saturday's "Sydney

Mornlng Herald" whlch It still malntains. It appolnted a

permanent Sydney sales representative whose primary task

was to servlce travel agents in the Sydney Metropolltan

area and to Inform them of the booking arrangements. Thls

representative is stlll employed. It took a number of

5.

other steps to make the travel industry aware of Its

declslon to dlsassoclate Itself with the respondent's

agency.

As a result of what has happened the appllcant

and the respondent are apparently the only establishments

whlch regularly advertise Lord Howe Island holldays In

the Sydney dally press. Substantlally all of the other -

guest houses and tourist establishments on the Island rely	-
on advertisements placed by the respondent-.

Prior to 1973 the applicant had used another,but

dlfferent,logo which contalned a representatlon of the two

mountalns wlth four palm trees in the foreground on a

beach. It was not a sllhouette. Examples of thls, as

used on pamphlets and letterheads, are In evldence.

Towards the end of July 1980 the respondent

commenced to advertlse Lord Howe Island holldays In the

"Sydney Mornlng Hera1d;'uslng In the advertlsement,ln black,a

representation of two palm trees with foliage beneath them. Although not ldentlcal in every respect to the palm trees and follage shown in the appllcant's logo thls deslgn,on

examlnatlon,ls found to be a direct copy,ln rnaterlal respects

of two of the palm trees and of vegetatlon	In the agpllcant's
logo.

Havlng noticed thls,the applicant wrote to the respondent on 4 August 1980 requesting It to cease using any

part of thelr logo In Its advertisements.

6.

This design was developed by a Mlss Schofleld,

a commercial artist. She was requested by the respondent

to prepare urgently a design suitable for use on

classified advertisements in the 'Sydney Morning Herald."

Prlor to thls belng completed,she was glven by Mr Estella,

the respondent's General Manager, colour llterature,

brochures and photographs relatlny to the island. Included

-

amongst the brochures was the appllcant's brochure whlch -

contained on the front a representation of the logo referred

to earller. She agreed in cross-examinatlon that she used

the logo on the applicant's brochure as a reference and

that although not In preclsely the same relatlonshlp as in

the appllcant's logo every single feature that appeared In

her completed drawingvas taken from it.

l l n n represontatlon, however, was not Intended

for use a: a logo. Around the same time the respondent also requested Mlss Schofield to deslgn a new logo for use by It

on such Items as its stationery, travel bags and advertislng

materlal. She was asked to use her own dlscretlon as to how

she could "capture" the island in a logo and she had before

her the material relatlng to the island referred to earller.

In answer to thls request she produced five coloured deslgns

for a logo. Each of-them contalned a stylls5d representation

of the dominatlng mountalns on Lord Howe Island. They were

consldered by the board of the respondent and It chose one

whlch, In black, looks as follows:-

7.

Thls design has always been used by the

respondent in assoclation wlth the name "Lord Howe

Island Tourist Centre".

In the actual logo chosen,and,as subsequently

used by the respondent on stationery and ln colour

advertlsing llterature,the palm trees were shown in a

mid to dark green, the sun in a shade of mustard -ysllow -

and the sllhouette of the island and sea	In dlffering
shades of dark blue.

It 1s falr to say that the logo chosen by the

respondent's dlrectors,out of the five submitted by

Miss Schofleld,was the one which,in fact,bore the closest

resemblance to that which had bcsen adopted by the applicant.

In cross-examlnation Mr Smlth, the managlng dlrector of

the respondent, agreed that he had told Mr McFadyen In

Oztobsr 1930 that Mr Estella had selected the logo and that

at the tlme it was selected he had told Mr Estella It was

very slmllar to "Pinetrees" logo and that if he wanted

"Pinetrees" to deal wlth their tourist centre agaln he

should porhaps not use logos so slmllar. Mr Estella in

evldence agreed that he was aware of the simllarlty when

the palm tree logo was chosen.

A s stated earller, the applicant objected to the

use by the respondent of the deslgn of palm trees In the

"Sydney Mornlng Herald" advertlsement. O n 11 August 1933

the respondent replled. The letterhead contained Its newly

adopted logo.

8.

Shortly after thls,the respondent agreed not to use the"pa1m tree'ldeslgn In its advertisements. The

applicant then ob~ected to the use of the sllhouette logo

adopted by the respondent but the respondent clalrned It was

entitled to use It and continued to do s .

Correspondence passed between the parties and

thls is In evidence. Wlthout pre~udice to Its rlght to

use the"pa1m tree"1ogo the respondent dld however use another

lcgo, namely, one slmllar to that inltlally adopted but wlth

the palm trees removed and an aeroplans substituted. The

appllcant, however, objects to the use by the respondznt of

both the "palm tree" logo and the "aeroplane" logo.

Subsequently,as a result of discusslon and the correspondence,

another logo was created,namely, one which depicts, Instead

of palm trees or an aeroplane, a comparatively largs

representation of a woodhen ln green. Thls last-nsntloned

logo was the sub~ect of dlscussion at the hearing. The

appllcant lndicated that it	has no	ob~ection	to the respondent
usmg thls logo.

The respondsnt however stlll clalms the rlght to

use both the "palm tree" and "aeroplane" logo. Thls would

lnvolve their use on such ob~ects as advertlsements, brochures,

statlonery and cabin bags. Examples of the use of one or

other of the logos on such objects are in evidence. Thre

is one example of the use of the"pa1m tree"1ogo In whhlte 011 a

card headed "Get the know-how on Lord Howe. I'

9.

In advertisements in the "Sydney Morning Herald"

the logos are not, of course, reproduced In colour. The

silhouette of the island and the palm trees are, for

instance, shown in black. The representatlon of the sun

In the respondent's logo is shown in black dots. Advertlsements

by both parties in the "Sydney Morning Herald" dated Saturday

October 18, 1980 are in evidence. These use the applicant's

logo and the respondent's"pa1m tree" logo and the advertlsements	-
appear one under the other.

It was common ground that both the appllcant and

the respondent havealways used their respectlve sllhouettes

in assoclatlon wlth thelr respective tradlng names.

Evidence was given by persons who have vlsited the

Island. Two called by the appllcant testlfied to their

knowledge of the island, its features and characterlstics

and lts plant, sea and animal life. Each of them had

seen the applicant's logo and the respondent's"pa1m tree"

logo. They emphasised that although the two mountalns

dominated the island they could be vlewed from different

angles. The colours of the island also varied dependlng on

the t m e of day and the positlon of the sun. Each of them

had been famillar wlth the applicant's logo over a number

of years. They also testifled to the reasonably hlgh quality

of accommodatlon facillties, food and service supplled by

the appllcant at "Pinetrees"

10.

Those called on behalf o the respondent

testified to the signiflcance of the mountains, vegetation

and the colours of the island and made It clear that they

regarded the mountalns and palm trees as bemg distlnctive

of Lord Howe Island and not of any particular establishment.

One regarded the sllhouette of the lsland as the

most distingulshing physical characterlstic of the Island.

-

He dld not assoclate the silhouette wlth any partlcular -

buslness but regarded it as descrlptive.

A large number of exhlblts consistmg of pamphlets,

books, palntings and the llke showing the slgniflcance of

the two mountalns and of palm trees in publicatlons about

Lord Howe Island were tendered In evidence. It 1 s clear

from these that the mountains are a domlnatlng feature of

the island terraln and that one of the most pleaslng features

of the Island are the palm trees around It.

Samples of letterheads used by other establishments on the island are also in evldence. These contam dlfferlng

representations relating to the island. Most make use of

the mountalns and some of palm trees. None of them shows a

comblnatlon of the mountains and palm trees In the way they

are depxcted In the appllcant's or respondent's logo. One

of them, relating to "Coral Court", contains a stylised

sllhouette in blue of the two mountalns wlth an lrregular

blue l m e underneath to represent the sea.

Evldence was also glven by Australla Post that In

1978 a postmark was adopted for stamplng all mail originatlng

on the Island. The stamp, which was designed by the lsland

11.

postmistress, shows the two mountains wlth two palm trees

on one slde of the stamp and a map of the island on the

other. At the top, above the mountalns, appear the words

"Lord Howe Island". Trade Practlces Act

It is in these circumstances that the applxant

claims that the respondent, belng a corporatlon, has in

trade or commerce in breach of s.52 of the Act engaged in

conduct that is misleadlng or deceptive or is llkely to mlslead or decelve and has commltted breaches of s.53(c) and (d) of the Act. I shall deal first wlth the alleged

breach of S . 52.

Clearly enough the respondent is a corporation and the conduct complained of has been engaged in by	It m trade
or commerce in Australia.

The relevant and indeed dlfficult question is whether lts conduct has been mlsleadlng or deceptlve	OL
IS llkely to mislead or decelve.

It is well settled that an appllcant under does not have to prove any relevant reputation. s.52

The section

is almed at protecting the public and the market place from

deceptive conduct. It is not almed at protecting the goodwlll

or reputatlon of a partlcular trader. Nor 1 s it necessary

for an appllcant to establlsh actual deceptlon or confuslon. is likely to mlslead or decelve.

In applying s.52 it is proper to have regard to

the prlnclples whlch surround the tort of passlng off. The

Hlgh Court in Hornsby Buildmq Information Centre Pty.

Limlted v. Sydney Buildinq Informatlon Centre Ltd. ((1978)

140 C.L.R. 216) conflrms this.

In applymg these princlples it is important to

bear in mlnd that s.52 is concerned with deceptlve conduct

on the part of the corporatlon charged with it. I does

not concern itself wlth confusion or deception whlch arises

-

from other causes.

Where a trader uses what,in essence,is a

descrlptive name or descrlptive words in relatlon to the

goods or services it provides, confusion or even deception

may be caused because the name or words are also used by

another trader to descrlbe Its slmilar goods or services.

This problem was discussed by Stephen J. In the Hornsby

Bulldlnq Information case (supra at p. 229). In such a

case it can be said that the confusion or deceptlon was not

caused by the trader whose conduct is complalned of. Such

confuslon or deception may have to be accepted. This is

important, In the present case, because it is alleged that the

sllhouette in the applicant's logo is descrlptive.

It will ordmarlly be sufficlent to establlsh a

breach of s.52 that a slgnlficant sectlon f the relevant

public are led to belleve or are likely to be led to

believe by a respondent's conduct that somethmg 1s true

about the respondent's buslness or the goods and servlces

It provldes whlch, in fact, is not true. For Instance,

If they are led to thlnk or are llkely to be led

13.

to think that there 1s some assoclation between two

traders when in fact there is not. This deception can

occur not only through the use of similar trade names

but also by the use of simllar representations or get-up.

In the present case,there 1s no evidence of

actual deception,but it is said that it is likely to occur

because the respondent is using logos which are simllar to

that adopted and used by the applxant. I shall deal flrst

wlth the use by the respondent of its "palm tree" logo.

I am satlsfied, on the evidence, that the applicant's

logo conslstlng of the sllhouette, the words "Pmetrees"

and "Lord Howe Island"-as descrlbed earller, has been used

consistently for a perlod f over seven years in advertisements

statlonery, brochures and t-shuts In associatlon wlth the

appllcant's buslness. I am also satisfled that there would be,as a result of such use on and off the lsland,a substantlal

number of members of the public In Australla who have come to

assoclate thls logo wlth the applicant's guest house. The

most dlstlnctlve part of the logo is the silhouette of the

Island. Indeed the use of the name "Pinetrees" In the logo

only serves to emphasise the connectlon between "Plnetrees"

and the sllhouette.

The respondent has adopted a sllhouette more

stylised involving the use of palm trees wlth the sun In

the background. It is posslble by comparing the silhouettes

to pomt to differences. For Instance, the two mountalns

In the respondent's are obvious styllsed representatlons.

The leaves of the palm trees In each are dlfferent. There

are three palm trees in the appllcant's logo and only two

14.

in the respondent's. In the applicant's logo as represented

in colour, the palm trees are in dark blue. In the respondent's

they are in dark green. The respondent has a wavy line

representing the sea underneath it. The applicant has none.

On the left hand side the applicant's logo shows more

foliage whereas the respondent's In some instances shows

a clearly defined end to the silhouette and presumably to

the representatlon of the island.

In determlning the question of deception It 1 s

not,however,sufflcient, as I have done, to compare or

contrast the two logos side by side. The question is to be

answered by conslderlng members of the public acting in the

ordinary course of buslness. They would not ordinarrly make

such an analysis. Some may, but a substantial proportion

would have only a passing and therefore imperfect recollection

of the appllcant's logo and one whlch did not retain the

detail but only an impression.

In actual use, the two logos would sometunes be

used on travel brochures in colours whlch are not, In my

mew, markedly dlfferent even though appearing on different parts of the logo. The shade of blue In each may to a prlnter or another expert be dlfferent but to a member of the public,

wlth a passlng acquaintance, I do not think there would be

any substantlal dlfference. Similarly the shades of green In the words "Plnetrees" In the appllcant's logo and the green in the palm trees in the respondent's,although

dlfferent, are not markedly different. In press advertisements

15.

It is more likely that the silhouette in the logos as

well as the print will appear in black and this is

illustrated in the advertisement in evidence in the

"Sydney Mornlng Herald" of October 10, 1980 where one

advertlsement appears under the other.

The ultimate question of whether a slgniflcant

proportion of the public are likely to be decelved by

the respondent's use of the palm tree logo 1 s a matter

-

peculiarly for the Judge. Evidence of deceptlon is not

necessary nor binding on hlm. A judgment has to be made

of the llkelihood of deception occurrlng wlth the likely

use of the two logos in mind.

The evidence shows that the respondent's "palm tree"

logo has already found its way onto stationery, brochures,

cabln bags, travelling wallets and a varlety of advertlsing

literature as well as Into press advertlsements.

Mr Steigrad, a witness called by the applicant, obvlously knew the difference between the two but I hink

In one of his answers he hlghlights the dlfficulty whlch respondent faces in this case. t e

He was asked:-

"...and it has never been suggested to you, has

it, that the Lord Howe Island Tourlst Centre 1s connected by way of business wlth Plnetrees

Lodge?--------- NO *

And knowmg of both organlsatlons and seeing they use the art work and the words I have lust drawn

your attention to, you would not think so would

you?------- I find that question dlfficult to answer

because I doubt that I would recognlse that the

Lord Howe Island Tourlst Centre logo you lust

showed me at a glance in any advertisement or

publication be substantlally dlfferent at all from

that of Pinetrees o I make that polnt and from my

knowledge of Pinetrees I know they are not associated".

16.

Although on close lnspectlon there are obvlous

differences between the two l gos, I do not think that the

ordinary member of the public, knowing the applicant's and

seelng the respondent's would be llkely to notice any

substantlal difference between them. This, In effect,

is what Mr Steigrad was saying.

The silhouette is the domlnant feature In each

logo. The reference in each to the partlcular busmess is

not I n my vlew likely to make any difference to the conclusion

whlch many members of the public knowlng the appllcant's

logo would be likely to draw on seelng the respondent's. I

thlnk it is llkely that they would thlnk, contrary to the

truth, that it was the same business as the appllcant's or

if they noticed the name "Lord Howe Island Travel Centre" that there was some assoclation between them. In other words

the use by the respondent of the "palm tree" logo, In my

oplnlon, amounts to conduct whlch is llkely to mlslead or

decelve. It passes beyond mere confuslon.

It was strongly submitted that the silhouette was merely a representation of Lord Howe Island and was therefore

descrlptive. Anybody, It was submitted, carrylng on a

busmess related to Lord Howe Island, should be entitled to

use In its advertlsement a representation	of the island such
as thls.

There can be no question that the two domlnatlng mountalns, palm trees and the colours blue and green are

associated wlth Lord Howe Island In the mlnds of those who

know It. Thls is also probably so of people who have never

been there but are famlllar wlth photographs and art work

deplctlng the island. Many examples of this were put m evldence.

Although I do not think it 1s correct, there

is, nevertheless, a great deal of force in thls submission.

It emphasises the dilemma facing the court in a

case such as thls.

I thlnk the answer to it lies In the fact that

the appllcant's silhouette has sufficient speclal features

about lt to be capable of becomlng distlnctive. It is a

silhouette and not an actual photograph or reproauction. The representation of the island, the palm trees and the

vegetation beneath them is completely in blue - not the

natural colour of any of these features. Furthermore, the silhouette does not represent a silhouette of an actual scene or view of Lord Howe Island. Mr McFadyen made It clear that he had, hlmself, been responsible for produclng the original work and did not take it from an actual photograph.

He described it as a "worm's eye view".

In evidence,there were a number of letterheads of other establlshments on the lsland and It is clear that,

in differing respects, each has chosen a representatlon of

the island or features of it as Its dlstlnctlve logo. One

of them "Coral Court" has a stylised sllhouette of part of

the Island. "Paciflc Palms" has a palm tree with the two

mountains in the background. "Blue Lagoon" also has a palm

tree with the mountains In the background but in a dlfferent

relatlonshlp. "Ocean Vlew Lodge" has adopted two palm trees.

18.

In 1978 Australia Post through the local postmlstress adopted a postmark conslstlng of a representatlon of the two mountalns with palm trees and a map on respectlve sides.

In my oplnion, the evidence of what other

establlshments and Australia Post have done only serves to emphasise the distlnctive quality of the applicant's

logo notwlthstandlng that It is a representatlon of -

features which are famillar to the island. It 1s perhaps

natural that,in the course of trade, each of the establishments

on the lsland adopted a partlcular representatlon thereof

or of a feature thereof as its own speclal method of

assoclatlng its buslness in the mlnds of people with Lord

Howe Island. In my oplnion this is somethlng that each	of
them is entltled to do.

This, in my new, is what the applicant has done In

adopting its logo. Although in a sense It is descrlptlve,

it has, nevertheless, by use, In associatlon wlth the

applicant's buslness, become distinctlve of It. Furthermore,

there 1s such a simllarlty,ln the sense I have descrlbed,

between the palm tree logo used by the respondent and the

appllcant's logo that a significant number of relevant members

of the publlc would, in my view, be likely to be mlsled or

decelved into believing, contrary to the truth, that the two

busmesses were the same or that there was some buslness

connection between them. It 1s worthy of note that the

respondent had the opportunity to choose from a nu ber of logos

19.

when Its "palm tree" logo was adopted. It is clear that it chose that which was closest to the appllcant's. Mr Smlth, the Managing Director of the respondent, agrees

that, at the time it was adopted, a conversatlon to the

following effect took place:-

"Mr Estella was dealing wlth the advertlsing

people and he had a range of logos. He

selected one. I told him It was very similar

to Pinetrees and if he wanted Pinetrees to .

deal wlth the Lord Howe Island Tourist Centre

again perhaps he should not use logos so

slmilar. "

It is also a fact that the respondent not only

chose a logo which was slrnilar to that of the appllcant's

but about the same time used in Its advertlsements

representatlons of palm trees and foliage whlch had been

copled from the applicant's logo. The respondent was not

aware of thls until it was polnted out and	I then stopped
uslng the representations.

These facts are not essentlal to my findlng that

the respondents have, In adopting the "palm tree" logo

engaged in conduct in trade or commerce that 1 s llkely to mlslead or decelve. They do however emphaslse that It went Into the matter with s eyes open, having had a past

buslness assoclatlon wlth the applicant whlch had been

severed and knowlng that the applicant was not anxlous to

revlve it.

The applicant aLso submlts that there has been a breach by the respondent of s.53(c) and ( ) of the Act.

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It claims that the respondent in trade or commerce

by usrng the "palm tree" logo has falsely represented

that its services have the sponsorshlp or approval of the appllcant (para (c)) and that the respondent has the sponsorshlp, approval of or an affiliatlon with the

l

applicant (para (d)).

I am not satlsfied that either of these .

provisions has been breached by the respondent's use of -

the "palm tree" logo. It is clear that there is no representatlon of sponsorship or approval elther of the respondent or Its services by the applicant. The case on

"afflllation" under s.53(d) is stronger but I lncllne to

the vlew that this provlsion requires a representation of

some posltive link. (See McDonalds System of Australla

Pty. Llmited v. McWllliam's Wines Pty. Llmlted (1979)

28 A.L.R. 2 3 6 per Frank1 J. at p. 248). The conduct here

does not extend this far. The conduct is, as I have held,

llkely to deceive or mislead some members of the publlc

Into believlng that there is an associatlon In a buslness

sense between the respondent and the appllcant but thls

does not, in my oplnion, amount to a representation of

an "aff illatlon" .

I have so far directed my remarks to the use by the respondent of its "palm tree" logo. There is now no

dlspute between the parties- as to the "woodhen" logo. It

1s not clalmed by the applicant that its use constltutes a

breach of ss.52 or 5 3 . I thlnk thls is clearly rlght. If

21.

the respondent adopted it as its logo It would remove the

likelihood of the public being misled or decelved. The use of the "aeroplane" logo by the respondent ls,however, clalmed by the applicant to be a breach of these provislons.

In my view the applrcant is not entitled to

rellef on any ground in relatlon t the use of thls logo.

The substitutlon of an aeroplane for the palm trees IS, I think,

sufficient to remove the likellhood f deception; It 1s

very much a matter of impresslon, but I think a person

seeing it, whether In colour or in black, who was famlllar

with the appllcant's logo would not be decelved m t o

thlnking that they were the same business or that there

was a buslness assoclation between the two.

Passinc; Off

The applicant also claims that by use of the logos the respondent has been gullty of passing off. In my opnion,

for the reasons I have already given in consxderlng the

appllcatlon of s.52 of the Act, the respondent is guilty of passlng off in using the "palm tree" logo. It is not

guilty of doing	so by using the "aeroplane" or "woodhen"
logo.

*'

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