Rabe P/L v Sydney Lock & Glass P/L

Re: RABE PTY LIMITED
And: SYDNEY LOCK AND GLASS PTY LIMITED (formerly Manuto Pty Limited); VAHOVI
PTY LIMITED; DAVID IAN SHORT; KAREN MARGARET SHORT and KENNETH ALLAN DUNN
No. G69 of 1991
FED No. 613
Passing Off

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Neaves J.(1)

CATCHWORDS

Passing Off - Applicant carrying on business of supply of glass on emergency basis - Business carried on under certain business names - Applicant contending that business carried on under an additional business name - Whether contention made out - Whether applicant has established reputation in that additional name - Respondents carrying on glazing and locksmith business - Use by respondent of name alleged to be similar to additional business name of applicant - Whether applicant entitled to relief - Whether conduct of respondents misleading or deceptive.

HEARING

CANBERRA

#DATE 26:8:1992

Counsel for the applicant: Mr P. McEwen
and the cross-respondents

Solicitor for the applicant: Mr J.P. Gould
and the cross-respondents

Counsel for the respondents: Mr M. Broun QC
and the cross-applicants and Mr A. Ransom

Solicitors for the respondents: Warren F. Ball and Co.
and the cross-applicants

ORDER

THE COURT ORDERS THAT:

1. The application be dismissed.

2. The interlocutory orders made herein be discharged.

3. The applicant pay to the respondents damages in respect of any loss or damage suffered by them or any of them as a result of the granting of those interlocutory orders.

4. There be an inquiry into the amount of such damages and that such inquiry be conducted by the Registrar.

5. The parties have liberty to apply on seven days' notice as they may be advised.

6. The applicant pay the respondents' costs of and incidental to the application.

7. The cross-respondents pay the cross-applicants' costs of and incidental to the cross-application.

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

JUDGE1

By its application filed on 25 February 1991 the applicant, Rabe Pty Limited, seeks injunctive and consequential relief against Manuto Pty Limited ("Manuto") and Vahovi Pty Limited ("Vahovi") and relief by way of damages against those companies and David Ian Short and Karen Margaret Short, those companies and individuals being respectively referred to as the first, second, third and fourth respondents. The proceedings arise out of the use by the first and second respondents of the name "Sydney Wide Lock and Glass Service". The applicant also seeks relief in relation to the operation of Sydney telephone service 632-1855 in the name of Manuto.

The evidence establishes that, prior to the institution of this proceeding, namely on 19 November 1990, the name of Manuto Pty Limited had been changed to Sydney Lock and Glass Pty Limited. For convenience, however, the company is referred to in these reasons by its former name.
After instituting the proceedings, the applicant applied for, and was granted, certain interlocutory relief to which it will be necessary to refer later in these reasons.
By its statement of claim filed on 2 July 1991 the applicant alleges (par.2) that, since 1 August 1986, it has carried on business in and about the metropolitan area of Sydney under the name "Sydney Wide Glass Replacement" and that it continues to do so. Paragraphs 3 - 8 of the statement of claim are in the following terms:

"3. The term 'Sydney Wide Glass Replacement', in relation to the supply of glass on an emergency basis, has become known and has been known since August 1986 in that trade, and to the general public, as signifying exclusively the supply of glass on an emergency basis, by the Applicant, and the Applicant has acquired a substantial and exclusive reputation and goodwill in the trade with the general public in and by the use of the name 'Sydney Wide Glass Replacement', in relation to the said supply of glass.

4. Since approximately October 1989 the First and/or Second Respondent commenced to carry on and to continue to carry on business under the name 'Sydney Wide Lock and Glass Service', and in the course of that business has been providing the installation and sale of glass on an emergency basis, in competition with the Applicant's business. This has been done by the advertisement in the Yellow Pages, under the name 'Sydney Wide Lock and Glass Service', giving the telephone number 632.1855.

5. By the use of the name 'Sydney Wide Lock and Glass Service', the First and/or Second Respondent have wrongly represented that their services are the services of and connected with the services of the Applicant and have conducted their business in a manner calculated to deceive and mislead the trade and general public into the belief that the supply of emergency glass by the First and/or Second Respondent is in fact the supply thereof by the Applicant, and the First and Second Respondents, or each of them, have thereby injured the goodwill of the Applicant.

6. The First and/or Second Respondents have threatened and intend unless restrained by this Court to repeat their conduct of passing off as aforesaid.

7. The first and/or Second Respondents have by the said acts of passing off made and continue to make profits thereby.

8. The Third and Fourth Respondents, as shareholders and directors of the First and Second Respondents have aided and abetted the First and Second Respondents in and about the matters complained of in paragraphs 5, 6 and 7 above."

The statement of claim then sets out the relief sought by the applicant.

The respondents filed a defence putting in issue the essential facts set out in the statement of claim and opposing the relief sought. The defence asserts, inter alia, that the applicant did not use the name "Sydney Wide Glass Replacement" prior to the publication of "the 1991 edition of the Sydney Yellow Pages" (par.1(b)), that at the time the applicant began to use the name "Sydney Wide Glass Replacement" it knew that Manuto and Vahovi had been using the name "Sydney Wide Lock and Glass Service" for a significant time (par.1(c)) and that the use of the name "Sydney Wide Glass Replacement" by the applicant is misleading or deceptive or likely to mislead or deceive (par.1(f)). It is also asserted that the use of the name "Sydney Wide Lock and Glass Service" by Manuto and Vahovi commenced in or about February 1988 and ceased in or about the end of March 1991 (pars.4(b) and (c)).
Manuto and Vahovi also filed a cross-application in which they seek an order restraining the applicant and Kenneth Allan Dunn "from advertising or promoting, in any form, the name 'Menuto Glass' or any words similar or likely to confuse, mislead or deceive the public as to the source of the goods and services of 'Manuto Pty Limited'". The cross-application arises out of the registration by the applicant under the Business Names Act, 1962 (N.S.W.) of the names "Menuto Glass" and "Menuto Complete Glass Service" and the publication in the Yellow Pages of the 1991 Sydney Telephone Directory of an advertisement in the former of those names.
The applicant was incorporated on 24 March 1977. Shortly thereafter, it commenced to carry on the glazing business which had been carried on by Kenneth Allan Dunn since about 1970. Mr Dunn and his wife, Kay Dunn, were, and are, the sole shareholders and directors of the applicant. The business consists of the supply and installation of glass and associated products. It has been advertised as providing a complete glass service to shops, homes and factories. More particularly the advertisements have referred to the supply and installation of mirrors, mirror wardrobes, mirror walls, shower screens, new aluminium shopfronts, table tops, shelving and safety glass. The business has included, and includes, responding to emergency telephone calls, frequently after ordinary business hours and at week-ends, in relation to commercial premises when the glass in doors, windows or shop fronts is broken or otherwise damaged. It is with this aspect of the applicant's business that this proceeding is concerned. For the year ended 30 June 1990, the turn-over of the applicant's business is said by Mr Dunn to be approximately $2.7 million.
The emergency service provided by the applicant involves, in the first instance, securing the premises where glass has been broken by what has been referred to as "boarding up" the relevant part of the premises. It is then necessary for the glass to be replaced, this being the more profitable side of the business. The work of replacement can, however, only proceed with the authority of the owner of the premises or the proprietor of the business being carried on there. If the owner or proprietor is not present when the "boarding up" is effected, a business card is left at the premises and the owner or proprietor subsequently spoken to by telephone in an endeavour to secure the business. The cost of the "boarding up" and of the replacement work is often covered by insurance.
The applicant owns and maintains a number of motor vehicles, some of which are adapted to the transport of large panes of glass. The vehicles are driven, in some instances, by employees of the applicant and, in others, by subcontractors. The drivers of the vehicles are able to be in contact with the applicant's business premises either by two-way radio or by mobile telephone.
Prior to a fire which occurred in June or July 1988, the business was carried on from premises at 1609 Botany Road, Botany, a suburb of Sydney. Thereafter, the business has been carried on from premises known as Unit T15, Building E, 2 - 12 Beauchamp Road, Matraville. According to Mr Dunn, the business records of the applicant were destroyed in the fire.
The evidence establishes the usual procedure followed by the applicant in relation to its emergency glass replacement service. If a call for emergency service is received after ordinary business hours or at week-ends, an employee of, or a subcontractor to, the applicant is instructed to attend to the work. The call for the emergency service may be received from a police officer, a security guard, a passer-by or from the owner of the premises or the proprietor of a business being carried on at those premises. After attending the job, the employee or subcontractor completes a document described as a "Job Report", supplies of blank forms, it is said, being carried in each of the applicant's motor vehicles. The main purpose of that document is to record details of the nature of the replacement work necessary thus enabling steps to be set in train to obtain an order authorising the applicant to carry out the replacement work. The document is subsequently handed to the applicant's foreman who then endeavours to speak to the owner of the premises or the proprietor of the business seeking approval to the applicant carrying out the replacement work.
When the applicant is asked to carry out glass replacement work, either by a direct approach by the potential customer or in response to an enquiry by the foreman in accordance with the procedure referred to above, a document described as a "Job Ticket" is completed. This document, which gives details of the work to be done, is given to a glazier to have the appropriate type of glass cut to size and installed. After the work is completed, the "Job Ticket" is matched with its duplicate and used as the basis for the preparation of an invoice. Where the customer is insured, the glazier arranges for an "Insurance Claim Form", giving details of the relevant insurance policy as well as details of the work performed, to be prepared and signed by the insured.
An invoice is then prepared and sent to the customer or, if the customer is insured, to the insurer. In the latter case the invoice is accompanied by the completed "Insurance Claim Form".
The applicant has not conducted its business under its corporate name but under the name "Ken Dunn Glazing", that being the name under which the business was formerly carried on by Mr Dunn. A variant of that name, "Ken Dunn Glass", has also been extensively used, often in conjunction with the name "Ken Dunn Glazing". The name "Ken Dunn Glazing" has usually been shown in block lettering. The name "Ken Dunn Glass" has usually been shown in a distinctive style, the word "Glass" appearing in large block lettering with the words "Ken Dunn" in smaller block lettering superimposed on the middle three letters of the word "Glass". The applicant's business premises bear only the words "Ken Dunn Glass" depicted in that distinctive fashion.
Mr Dunn had followed the practice, apparently followed by others engaged in the trade, of affixing to the timber used in securing commercial premises after a breakage of glass had occurred and to the glass when replaced adhesive-backed labels or, as they are referred to in the evidence, "stickers" identifying the business carrying out the repairs. Mr Dunn had used stickers, measuring approximately 137 mm wide x 98 mm deep, in the following form -

(DIAGRAM OMITTED)

The applicant has continued that practice since it became the proprietor of Mr Dunn's business.

On 7 July 1986, Mr Dunn made an application under the Business Names Act, 1962 (N.S.W.) for the registration of "Sydney Wide - Glass Replacement" as a business name. The application nominated 1 August 1986 as the date of the proposed commencement of business under that name, glass replacement as the nature of the business and the principal place of business as 1609 Botany Road, Botany. Registration was effected and the name has remained registered since that time. By application lodged on 19 July 1989, the address of the principal place of business was changed to Unit T15, Building E, 2-12 Beauchamp Road, Matraville.
Towards the end of 1986 the applicant arranged for the preparation by Pacific Labels Pty Limited of stickers, measuring approximately 87 mm wide x 108 mm deep, in the following form -

(DIAGRAM OMITTED)

It is curious that, unlike the sticker bearing the name "Ken Dunn Glazing", the sticker in the name "Sydney Wide Glass Replacement" does not contain an after hours telephone number. It is also of significance that in other documents bearing the name "Sydney Wide Glass Replacement" an after hours telephone number is given which is identical with that given for "Ken Dunn Glazing". The evidence establishes that the first delivery of the "Sydney Wide Glass Replacement" stickers, comprising 21,000 units in rolls of 500 each, was made on or about 5 November 1986. Details of subsequent orders for such labels are as follows -

Date of Order Number Ordered 28 April 1989 15,000 4 May 1990 30,000

5 June 1991 50,000

It appears that the stock of labels that were then on hand were not destroyed or damaged in the fire which occurred at the applicant's business premises in June or July 1988.

Mr Dunn gave evidence that drivers of the applicant's motor vehicles have been provided with quantities of stickers bearing the name "Sydney Wide Glass Replacement" as well as those bearing the name "Ken Dunn Glazing" and they have been instructed to affix the relevant sticker to the jobs they perform. He agreed that the system of distribution of the stickers had been a random one and said that it was not until about August 1989, when Gary John O'Hara was employed on the task, that systematic distribution of both sets of stickers occurred.
Much was made by the applicant of the fact that the stickers bearing the name "Sydney Wide Glass Replacement" refer to a telephone number different from those shown on the stickers bearing the name "Ken Dunn Glazing". The applicant, in its corporate name, appears to have been, at all relevant times, the subscriber of the telephone services connected to the applicant's business premises, including the telephone service 666-3674. According to Mr Dunn, incoming calls on telephone service 666-3674 are answered "Sydney Wide", while those on telephone service 666-6344 are answered "Ken Dunn Glazing". Other witnesses, employees of the applicant, gave evidence to the same effect. The evidence does not disclose how calls on the after hours telephone number 669-1957 are answered.
The name "Ken Dunn Glazing" appeared in successive issues of the White Pages of the Sydney Telephone Directory but the name "Sydney Wide Glass Replacement" has not appeared in any issue of that publication. On 29 March 1989, however, Mr Dunn took the necessary steps which resulted in the name "Sydney Wide Glass" with the telephone number 666-3674 appearing in the 1989 Sydney White Pages. That name and telephone number also appeared in the 1990 Sydney White Pages.
The name "Ken Dunn Glazing" also appeared in successive issues of the Yellow Pages of the Sydney Telephone Directory under the classification "Glass Merchants and/or Glaziers". In the 1991 Sydney Yellow Pages, however, a new format was adopted for the single column 60 mm. advertisement under the name "Ken Dunn Glazing" that replaced the former advertisement under that name and additional advertisements were inserted. One of the new advertisements was in the name "Ken Dunn Glazing". It was a two column 120 mm. advertisement emphasising the word "Emergency", containing the words "All night boarding-up service" and "24 hours - 7 days", and giving the business hours telephone number 669-1957. The advertisement also contained the name "Ken Dunn Glass" represented in the distinctive style to which reference has already been made.
The 1991 Sydney Yellow Pages also contained, under the classification "Glass Merchants and/or Glaziers", an advertisement in the name "Sydney Wide Glass Replacement". That was a single column 60 mm. advertisement which made no reference to the provision of a "boarding-up" or emergency glass replacement service. The emphasis was on the provision of shower screens, mirror wardrobe doors and general glazing. The telephone number listed was 366-3674, no after hours telephone number being provided. The content of the advertisement is surprising given Mr Dunn's evidence as to the nature of the business said to be carried on under that name. Except for that advertisement and the use of the stickers to which reference has been made, "Sydney Wide Glass Replacement" has not been the subject of any advertisement in the press or otherwise. In contrast, "Ken Dunn Glazing" and "Ken Dunn Glass" have been extensively advertised.
Mr Dunn also arranged to have inserted in the 1991 Sydney Yellow Pages, under the classification "Glass Merchants and/or Glaziers", single column 60 mm. advertisements in the names Acme Emergency Board Up, Brians Emergency Board Up, Express Emergency Board Up, Menuto Glass, O'Briens Emergency Board Up, O'Ryans Emergency Board Up, Valiant Emergency Board Up and Woodbridge Emergency Board Up. Some reference to these names will be made later in these reasons.
Some, but not all, of the vehicles used by the applicant have painted on them lettering identifying the business. Those vehicles bear the name "Ken Dunn Glazing" or the name "Ken Dunn Glass". None bears the name "Sydney Wide" or the name "Sydney Wide Glass Replacement". Evidence was given that the applicant had procured what were referred to as magnetic signs bearing the words and figures "Sydney Wide Glass Replacement 24 Hour Emergency Glass Service 666 3674". Each sign is approximately 900 mm wide and 340 mm deep. They were designed to be attached to each side of a motor vehicle.
The evidence is not clear when such signs were first obtained or whether the first order was for 2 or 4 signs. According to Mr Dunn, the signs were first obtained prior to the fire in June or July 1988. He said that the applicant did not acquire additional signs immediately after the fire but that it had purchased an additional two signs "in recent times". The only documentary evidence concerning the acquisition of such signs is an invoice from Allgood Signs Pty Limited addressed to Sydney Wide and dated 14 July 1989 recording the sale of 2 such signs. It is clear that the sign tendered in evidence, being one of the pair referred to by Mr Dunn as having been recently acquired, had not been used prior to the hearing and the evidence does not satisfy me that any substantial use was made of the signs which the applicant may have had at an earlier time. It is clear that motor vehicles bearing the name "Ken Dunn Glass" or the name "Ken Dunn Glazing" have habitually been used to carry out jobs which, according to Mr Dunn, were being carried out for "Sydney Wide Glass Replacement".

Before referring further to the evidence concerning the use by the applicant of the name "Sydney Wide Glass Replacement", some reference should be made to the business activities of Manuto and Vahovi.
Manuto was incorporated on 12 September 1980. The issued shares in that company were acquired by David Ian Short and his wife, Karen Short, late in 1980 as the vehicle for the conduct of a glazing business. Mr and Mrs Short are the sole directors of the company.
Between 1980 and March 1990 Manuto was a subcontractor to O'Brien Glass Industries Limited carrying out after hours glass replacements on behalf of that company. Until some time in 1985 that work constituted the bulk of the glazing work that Manuto carried out. About that time, while continuing with the after hours contract work for O'Brien Glass Industries Limited, Manuto began to carry out glazing work on its own account although until February 1988 its glazing business continued to be mainly as a subcontractor to O'Brien Glass Industries Limited. Some time after February 1988 it commenced to use the business name "The 24 Hour Glass Specialists" in relation to its glazing business. Since ceasing to be a subcontractor to O'Brien Glass Industries Limited, only a very small proportion of the business of Manuto has related to after hours "board ups" and glass replacements.
In about 1983 Manuto had commenced to carry out locksmith work, again as a subcontractor to O'Brien Glass Industries Limited. During 1984, Manuto commenced to trade as a locksmith on its own account and did so under the business name "The Lock People", that name having been registered as a business name on 21 September 1984. Vahovi was incorporated on 26 February 1987. Shortly thereafter, Mr and Mrs Short acquired the issued shares in that company and it became the proprietor of the locksmith business.
In February 1982, O'Brien Glass Industries Limited had registered as a business name "O'Brien Sydney Wide Lock Service", the nature of the business being stated in the application as "Home security". From time to time the registration was renewed. The locksmith part of its business was carried on either under that name or under the name "O'Brien Sydney Wide Locksmiths", the evidence not being clear in this regard.
Originally both the glazing and the locksmith businesses were conducted from Mr and Mrs Dunn's residential address. From 1 May 1986 the locksmith business operated from Shop 2, 254 Pitt Street, Merrylands. In February 1988 both businesses commenced to operate from premises known as 2 Ruby Street, Guildford.
Between 1983 and February or March 1988, one of the vehicles owned by Manuto and which was used for locksmith work was a van which had painted on it "O'Brien Sydney Wide Locksmiths". In late 1987 or early 1988 Mr Short was informed by John Dobeson, one of the managers of O'Brien Glass Industries Limited, that that company intended to stop seeking locksmith work so that, while Manuto would continue to get such work in relation to existing customers, the company should not expect to be asked to do new lock work. Mr Short was informed that he would have to delete the word "O'Brien" from the sign on the vehicle referred to above but that otherwise the name could still be used by Manuto. In February or March 1988 the van was repainted so that the inscription on each side of the vehicle read "Sydney Wide Lock and Glass Service". The word "O'Brien" was also removed from the bonnet and rear of the vehicle so that the inscriptions there read "Sydney Wide Locksmiths". The van with those signs on it continued to be used until some date in 1989 when the van was sold. Manuto also operated a vehicle which bore the name "The 24 Hour Glass Specialists". Other vehicles bore the name "The Lock People".
In about July or August 1989, Mr Short was informed by Mr Dobeson that O'Brien Glass Industries Limited would not be continuing in the locksmith business and would not be renewing the registration of the name "O'Brien Sydney Wide Lock Service" when it next expired. Mr Dobeson said there was no objection to Manuto using the name "Sydney Wide Lock Service".
On 22 August 1989, on the application of Manuto and Vahovi, the name "Sydney Wide Lock and Glass Service" was registered under the Business Names Act, 1962 (N.S.W.). The nature of the business was nominated as "Locksmithing and Glazing".
For the period between about August 1989 and November 1990 the telephone service 632-1855 at the premises of Manuto and Vahovi was answered "Sydney Wide Lock and Glass Service". Between November 1990 and the end of March 1991, the telephone was answered "Sydney Lock and Glass". Since the end of March 1991, the telephone has been answered "Lock and Glass Service".
From about the middle of 1990, a limited amount of advertising material, in the form of coasters, stickers, fridge magnets and business cards, was used on which the words "Sydney Wide Lock and Glass Services", usually in conjunction with the words "24 Hrs Glass Specialists" and "The Lock People", appeared.
On 8 November 1990, Manuto registered under the Business Names Act, 1962 (N.S.W.) as a business name the name "Manuto Lock and Glass Service".
Manuto and Vahovi arranged to have inserted in the 1991 Sydney Yellow Pages an advertisement in the name "Sydney Wide Lock and Glass Service". The advertisement consisted of 3 lines only, giving the name, the address and the telephone number 632-1855. It appeared immediately following the single column 60 mm. advertisement in the name "Sydney Wide Glass Replacement".
On 20 October 1989 Mr Dunn telephoned Mr Short concerning the use by Manuto and Vahovi of the name "Sydney Wide Lock and Glass Service". Differing versions of that conversation were given by Mr Dunn and Mr Short and I do not find it necessary to make a finding as to precisely what was said. It is sufficient for present purposes to note that, even on Mr Dunn's version of the conversation, it was made plain to him as early as that date that Manuto and Vahovi had registered the name "Sydney Wide Lock and Glass Service" as a business name in respect of their glazing and locksmith business. Following that telephone conversation, the applicant unsuccessfully sought the removal by the Business and Consumer Affairs Commission of that name from the business names register. No action was taken, however, against Manuto or Vahovi until 20 December 1990 when, following the publication of the 1991 Sydney Yellow Pages, a letter of demand was delivered to the respondents. As has already been mentioned, the present proceeding was instituted on 25 February 1991.
In his affidavit sworn on 27 March 1991 (par.13), Mr Short stated that the respondents, without admission, offered to refrain from using the name "Sydney Wide Lock and Glass Service", not to place any advertisements in that name in the next edition of the Sydney Yellow Pages and not to print or distribute any stationery or literature in that name.
The applicant, however, subsequently obtained an interlocutory order that pending the final resolution of the proceedings, the respondents refrain from using or advertising the name "Sydney Wide" or any name including the words "Sydney Wide". An interlocutory order was also made for the diversion through the Telecom answering service known as Answernett of all calls to the telephone number 632-1855, being the telephone service connected to the business premises of Manuto and Vahovi. As a condition of the grant of those interlocutory orders, the applicant gave the usual undertaking as to damages.
The applicant's case principally depended upon the evidence of Mr Dunn. He was not, however, an impressive witness. He was prone to making generalised assertions which he no doubt believed would advance the applicant's case but which, on examination, could not be supported in the wide terms in which they had been expressed. There is much of what he said that I am unable to accept.
One example of the unsatisfactory nature of his testimony concerns the evidence he gave as to the reasons why he wished to adopt and promote a name for the business other than the names "Ken Dunn Glazing" and "Ken Dunn Glass". He initially answered -

"The basic reason is I long term hope to sell out the company that I have as Ken Dunn which is very difficult being a person's own name."

He was then asked -

"But, Mr Dunn, of course you know in the glass industry many people's names have continued on in the business for long after the person of that name has left it?"

He answered -

"Not many at all."

The evidence continued -

"Q. Well, there would be no difficulty for you if you wanted to get out of the business to sell a business called Ken Dunn Glazing to any successor in business, would there? A. Yes, there is.

Q. Why?

A. Because people don't want a person's name because it's the person that built it, Ken Dunn, that everything related to."

I have no doubt that by this evidence Mr Dunn intended to convey that his objective was to sell the business eventually and for that purpose he wished to promote the name "Sydney Wide Glass Replacement" so that the business could be sold in that name rather than a name including the name "Ken Dunn". Later Mr Dunn resiled from the answers he had given and suggested that what he was contemplating as his ultimate objective was to sell the business under the name "Ken Dunn Glazing" or "Ken Dunn Glass" and retain for himself a business on a smaller scale under the name "Sydney Wide Glass Replacement".

Having said that the basic or main reason for adopting the name "Sydney Wide Glass Replacement" related to his objective of ultimately selling the business, he was asked what other reasons he had for adopting that name. I can only regard his answers to questions in relation to that aspect as dissembling. He did say, however, that, by having a name which did not include the words "Ken Dunn", work might be attracted under that name in cases where it could be difficult to obtain it under a name which included his personal name. He referred, particularly, to the possibility of there being a person, such as a security guard or a policeman, "who doesn't like Ken Dunn" and would not deal with the applicant under that name but might do so under the name "Sydney Wide Glass Replacement".
Mr Dunn's affidavit sworn on 21 February 1991, being the affidavit upon which the application for interlocutory relief was primarily based, is quite misleading in regard to the use of documentation bearing the name "Sydney Wide Glass Replacement". In that affidavit, Mr Dunn identifies various documents which, he says, were in the form used by the applicant in its business. A copy of each of the documents is annexed to the affidavit. Included are documents respectively entitled "Job Report" (being Annexure "D" to the affidavit), "Job Ticket" (Annexure "F") and "Insurance Claim Form" (Annexure "C") and two forms of invoice (Annexure "E"), one designed for completion in handwriting and the other adapted for use in a computerised accounting system. Each of the documents annexed to the affidavit, other than that entitled "Job Ticket", bears in printed form, though not in the same format, the words "Sydney Wide" and the words "Glass Replacement". The "Job Ticket" bears the words "Sydney Wide Glass". In his oral evidence in chief Mr Dunn confirmed that the documents in the form annexed to his affidavit had been used in the applicant's business. In giving that evidence, his attention was specifically directed to the words "Sydney Wide" which appear on the documents annexed to the affidavit. In relation to the form of "Job Report" bearing in printed form the words "Sydney Wide Glass Replacement", Mr Dunn was asked -

"How does an employee get to be given a copy of this document?"

Mr Dunn answered -

"They carry those with them at all times so that, if they are told that it's a Sydney Wide job, they are able to produce the right paperwork relating to whoever has made the call."

In answers to interrogatories, verified by Mr Dunn and filed on behalf of the applicant on 2 July 1991, the following appears -

"Question 1

In respect of each of the various business names please answer the following questions:

(a) How many copies of each of the following forms have been used in respect of each of the said names, or if a precise number cannot be given, during what period were such forms used and with what frequency during that period were such forms used:

(i) Insurance claim forms in a form similar to Annexure C to the affidavit of Kenneth Allan Dunn dated 21 February 1991.

(ii) A job report similar in form to Annexure D to the same affidavit.

(iii) Invoices in a form similar to Annexure E to the said affidavit.

(iv) Job tickets in a form similar to Annexure F to the said affidavit.

Answer 1

(a) Either for Sydney Wide Glass or Sydney Wide Glass Replacement.

(i) 873 claim forms (Annexure 'C')

(ii) 873 job reports (Annexure 'D')

(iii) As to invoices (Annexure 'E'), it is not possible to answer this with precision; the majority of jobs secured to the Applicant under the name 'Sydney Wide Glass Replacement' were invoiced under the name 'Ken Dunn Glazing'. However some jobs from 1986 until full computerisation of the Applicant's business in December 1989 continued to be invoiced on the hand written invoice Annexure 'E', for Sydney Wide Glass Replacement work or jobs; the computerisation had started, in a minor way in February of 1985, and the second page of Annexure 'E' is the input information for the computer, of the jobs invoiced through the computer system; it is not possible to say what number of jobs attributable to either Sydney Wide Glass or Sydney Wide Glass Replacement, were invoiced through the computer system, in that fashion, since commencing to use the name in 1986."

No answer was provided to question 1(a)(iv).

The affidavit was clearly intended to establish, contrary to the fact, as Mr Dunn conceded in cross-examination, that invoices had been issued in the name "Sydney Wide Glass Replacement" at a time after the installation of a computerised system for issuing such documents. Similarly, the affidavit states, contrary to what I find to be the fact, that printed forms of "Job Report" and "Job Ticket" with the name "Sydney Wide" or "Sydney Wide Glass Replacement" printed on them were used by the applicant.
According to Mr Dunn, jobs were regarded as being carried out either by "Ken Dunn Glazing" or by "Sydney Wide Glass Replacement". A job was carried out by "Sydney Wide Glass Replacement", he said, if the caller referred to that name or to "Sydney Wide" or if the call was received on telephone number 666-3674. It was asserted that the person who was to carry out the work was informed of the name under which the job was to be done either by handing him a form of "Job Ticket" on which that name appeared as part of the printed form itself, or by handing him a form of "Job Ticket" with the name hand-written on it, or by informing the person concerned by radio or telephone of the name under which the work was to be carried out.
An examination of the 320 separate files produced by the applicant as relating to jobs carried out by "Sydney Wide Glass Replacement" has failed to disclose one instance in which a form of "Job Ticket" with the name "Sydney Wide" or the name "Sydney Wide Glass Replacement" printed on it was used. The form of "Job Ticket" used in every instance was a form bearing the name "Ken Dunn Glazing" or "Ken Dunn Glass". In a number of instances the form bears a handwritten notation of the words "Sydney Wide" but in a significant number of those cases the notation appears to have been made at a time later than that at which the details of the job to be carried out were recorded on the form. In many of the files, the only indication that "Sydney Wide Glass Replacement" had some relationship to the job is provided by the circumstance that an employee of, or subcontractor to, the applicant had the customer sign an "Insurance Claim Form" which bore the name "Sydney Wide Glass Replacement".
Mr Dunn's evidence that a job was treated as being a "Sydney Wide Glass Replacement" job if the call requesting the work to be done was received on telephone number 666-3674 is at variance with the evidence of John Robert Leishman. According to Mr Leishman, whose evidence I have no reason to doubt, when two windows were broken at his factory premises he telephoned 666-3674 at the suggestion of a brother of Mr Short to have the glass replaced. The work was carried out later the same day by a glazier who attended the premises in a vehicle with the words "Ken Dunn Glass" painted on it and made no reference to "Sydney Wide Glass Replacement". The invoice he subsequently received in respect of the work was also in the name "Ken Dunn Glass".
The course of conduct followed by Mr Dunn in having registered as business names Acme Emergency Board Up, Brians Emergency Board Up, Express Emergency Board Up, Menuto Glass, O'Briens Emergency Board Up, O'Ryans Emergency Board Up, Valiant Emergency Board Up and Woodbridge Emergency Board Up - names which he said were adopted with a view to expanding the existing business - and subsequently inserting advertisements in each of those names in the 1991 Sydney Yellow Pages reflects little credit upon him. Each of the names included a prominent part of the name of an established glazing business. Each of the names was clearly deceptively similar to the name used by one of those businesses yet in his oral evidence Mr Dunn was not prepared to concede that that was the reason he had, on an earlier occasion, undertaken to the Court that he would not use those names. He persisted in asserting that he decided not to use the names because the advertisements in the Yellow Pages appeared in a form which he had not approved. I do not accept his evidence that he did not know in what form the advertisements would appear until they were published. I accept the evidence of Miss Vicki Carlisle, the employee of Edward H. O'Brien Pty Limited who interviewed Mr Dunn in relation to his advertising requirements for the 1991 Yellow Pages, that a mock up of each of the advertisements appeared on the relevant application forms at the time Mr Dunn signed them. In particular, I cannot accept Mr Dunn's repeated assertion that his choice of the name "Menuto Glass" was wholly unrelated to the name of the first respondent in this proceeding, Manuto Pty Limited.
No separate financial records have ever been kept for the business said to have been carried on under the name "Sydney Wide Glass Replacement". Nor have the files said to relate to that business been kept separate from those relating to the business of "Ken Dunn Glazing". "Sydney Wide Glass Replacement" has had no separate employees and no separate assets. In almost every case the form of invoice used has been a form bearing the name "Ken Dunn Glazing" or the name "Ken Dunn Glass", and this whether the invoice has been rendered to the customer or to the customer's insurer. An examination of all of the documentation produced by the applicant as relating to the business of "Sydney Wide Glass Replacement" discloses only four instances in which an invoice in a different form has been used. In those four instances, all of which occurred in July and August 1989, a form of invoice bearing the name "Sydney Wide Glass Replacement" was used. An examination of that documentation also discloses that the "Insurance Claims Forms" which the applicant's employees or subcontractors had customers complete in respect of jobs said to have been carried out by "Sydney Wide Glass Replacement" did not universally bear that business name. In a number of instances the form used was one bearing the name "Ken Dunn Glass". Moreover, no "Insurance Claim Form" bearing the name "Sydney Wide Glass Replacement" has been produced with a date earlier than 1 July 1989. The solicitor for the respondents made an analysis, on a month by month basis, of the "Insurance Claim Forms" bearing the name "Sydney Wide Glass Replacement" contained in the separate files produced by the applicant as relating to jobs carried out by that business. That analysis shows that 28 such forms were dated between 1 July 1989 and 31 December 1989, 87 were dated between 1 January 1990 and 30 June 1990, 31 were dated between 1 July 1990 and 31 December 1990 and 172 were dated between 1 January 1991 and 30 June 1991. The inference is clearly open that steps were taken by the applicant to increase the usage of such forms in the period prior to the matter coming on for hearing. It will be recalled that the letter of demand sent to the respondents is dated 20 December 1991.

There is no evidence of any payment having been made to "Sydney Wide Glass Replacement" in respect of work said to have been carried out by it. Moreover, where legal proceedings have been taken to recover amounts claimed to be due in respect of work now said to have been carried out by "Sydney Wide Glass Replacement", those proceedings have been taken in the name of the applicant trading as "Ken Dunn Glazing", not in its name trading as "Sydney Wide Glass Replacement".
There has been no advertisement in the press in the name "Sydney Wide Glass Replacement" though there have been advertisements in the names "Ken Dunn Glazing" and "Ken Dunn Glass". The name "Sydney Wide Glass Replacement" has not been brought to the attention of members of the public except by the use of the stickers bearing that name, by the advertisement placed in the 1991 Sydney Yellow Pages to which reference has already been made, and by the use of the "Insurance Claim Forms" bearing that name. Any other documents on which the words "Sydney Wide" or "Sydney Wide Glass Replacement" have appeared have been documents for internal use only.
Some comment has already been made upon the use of documents bearing the name "Sydney Wide Glass Replacement". At best, the evidence establishes that the applicant made some use of forms bearing that name and that in a number of instances the words "Sydney Wide" were noted on documents bearing the name "Ken Dunn Glazing" or "Ken Dunn Glass". The evidence does not establish to my satisfaction that, even where the name "Sydney Wide Glass Replacement" or the words "Sydney Wide" appear on the documents, "Sydney Wide Glass Replacement" was the choice of the customer as the business enterprise to carry out the work required. The evidence is consistent with the choice to have any particular work recorded in the name of "Sydney Wide Glass Replacement" having been made by Mr Dunn or by other employees of the applicant.
Apart from the 320 separate files, the applicant produced other documentation which Mr Dunn asserted related to jobs carried out by "Sydney Wide Glass Replacement". Those documents, consisting of 548 "Insurance Claim Forms" and 273 "Job Tickets", contain nothing on their face to indicate that the jobs to which the documents relate were ordered in the name of, or were carried out by, "Sydney Wide Glass Replacement". Indeed, the documents contain no reference to any business name. In the absence of further evidence, I do not accept that those documents relate to jobs carried out by "Sydney Wide Glass Replacement".
In my judgment, the evidence does not establish the allegation in par.2 of the statement of claim that the applicant has since 1 August 1986 carried on business in and about the metropolitan area of Sydney under the name "Sydney Wide Glass Replacement". I am satisfied that, in so far as that name has been used by the applicant, it has been used solely as a means of attracting additional work to, and thus expanding, the business being carried on under the names "Ken Dunn Glazing" and "Ken Dunn Glass". The use of the name has been deceptive in that it has been designed to foster a belief in members of the public, contrary to the fact, that there was a business being carried on under the name "Sydney Wide Glass Replacement" which was distinct from, and in competition with, the business carried on under the names "Ken Dunn Glazing" and "Ken Dunn Glass".
While I accept that the applicant made some use of the name "Sydney Wide Glass Replacement" at a point of time earlier than that when Manuto and Vahovi began to use the name "Sydney Wide Lock and Glass Service", that circumstance, of itself, is not sufficient to entitle the applicant to the relief it seeks. In order to establish that, in relation to the supply of glass on an emergency basis, it has acquired a reputation in the trade and with the general public in and by the use of the name "Sydney Wide Glass Replacement", the applicant tendered a number of affidavits. In the main, these affidavits are by persons who have been employed in the glazing industry for varying periods. Their evidence is that they have, over periods which are not precisely identified, seen, on shop fronts and elsewhere, stickers bearing the words "Sydney Wide Glass Replacement" and that they associate that name with the applicant. It is clear, however, that in almost every case their association of the name with the applicant came about because they were so informed by Mr Dunn or as a result of their engagement as an employee of, or sub-contractor to, the applicant and not otherwise.
On the other hand, there are a number of affidavits filed on behalf of the respondents in which senior officers of various insurance companies dealing with property damage claims depose that they are unaware of the name "Sydney Wide Glass Replacement". Similar evidence has also been given by other persons with lengthy service in the glazing industry.
Thus, the evidence concerning the reputation of "Sydney Wide Glass Replacement" in the relevant trade is inconclusive.
Only two members of the general public gave evidence concerning their knowledge of the name "Sydney Wide Glass Replacement". They are Vinh Quang and Lola Ellen Charlton. In his affidavit sworn on 25 June 1991, Mr Vinh deposed that, on 6 April 1990, he engaged "Sydney Wide Glass Replacement" to repair a glass breakage at his business premises at Canley Vale. In cross-examination, however, it became clear that Mr Vinh had not himself arranged for the breakage to be repaired; that the breakage had occurred at night when he was not present at the shop premises; and that when he arrived at the shop the next morning the breakage had been "boarded up", the timber having affixed to it a sticker bearing the name "Ken Dunn". Mr Vinh also said that, early in 1990 and prior to the breakage, two stickers had been affixed to the shop premises, one bearing the name "Ken Dunn" and the other bearing the name "Sydney Wide Glass Replacement". He was unable to say who actually carried out the work of "boarding up" or the work of replacing the broken glass on the following morning. After the work was completed, however, he was asked to sign, and did sign, a completed "Insurance Claim Form" which bore the name "Sydney Wide Glass Replacement". It appears from the relevant insurance company file that the invoice for the work was in the name "Ken Dunn Glass". Mr Vinh did, however, give oral evidence that another breakage had occurred in June 1991 and that, on that occasion, he had telephoned the number shown on the "Sydney Wide Glass Replacement" sticker affixed to the premises.
Miss Charlton, in her affidavit sworn on 28 June 1991, stated that she was the post mistress at Canley Heights Post Office and that, on 10 January 1991, she engaged "Sydney Wide Glass Replacement" on behalf of Australia Post to repair a glass breakage at that post office. She further said that she knew of "Sydney Wide Glass Replacement" and associated it with emergency glass repairs. In cross-examination, however, Miss Charlton said that she only became aware of "Sydney Wide Glass Replacement" when she signed an "Insurance Claim Form" bearing that name after the work had been completed. That was, in fact, a document which served no useful purpose as the breakage was not covered by insurance. Miss Charlton was not in any way concerned with arranging for the work to be done and no evidence has been given by those who were. Miss Charlton was unable to say who repaired the breakage. It is apparent from a perusal of the applicant's file in relation to the matter that the invoice for the work was sent out in the name "Ken Dunn Glass" and that payment was made in that name. There is nothing on the applicant's file to indicate or even suggest that the request to repair the breakage was made to "Sydney Wide Glass Replacement".
The evidence also does not satisfy me that such use as the respondents have made of the name "Sydney Wide Lock and Glass Service" has amounted to the passing off of the goods and services of Manuto and Vahovi as the goods and services of the applicant. There is no sufficient evidence to justify the conclusion that the use by Manuto and Vahovi of the name "Sydney Wide Lock and Glass Service" was likely to result, or has resulted, in confusion, in the minds of a significant number of members of the public, between the business activities of the applicant and those of the respondents. Further, if it be material, the evidence does not establish that any conduct of the respondents has been in any respect misleading or deceptive.
For the above reasons, I am of opinion that the applicant has failed to make out a case for the grant of any of the relief which it seeks in the application. The application is, therefore dismissed. The interlocutory orders made herein are consequently discharged.
Reference has already been made to the undertaking given to the Court by the applicant when it was granted interlocutory relief. The case is, in my opinion, an appropriate one in which the applicant should be called upon to honour that undertaking. I, therefore, order that the applicant pay to the respondents damages in respect of any loss or damage suffered by them or any of them as a result of the granting to the applicant of that interlocutory relief. To that end, I order that there be an inquiry into the amount of such damages and that that inquiry be conducted by the Registrar. I reserve to the parties liberty to apply on 7 days' notice as they may be advised.
The applicant must pay the respondents' costs of and incidental to the application.
It remains to deal with the cross-application of Manuto and Vahovi seeking to restrain the applicant and Mr Dunn "from advertising or promoting, in any form, the name 'Menuto Glass' or any words similar or likely to confuse, mislead or deceive the public as to the source of the goods and services of 'Manuto Pty Limited'".
Manuto and Vahovi are, in my opinion, entitled to that relief. However, on 2 July 1991 the applicant, by its counsel, gave undertakings to the Court that it would not thereafter use or permit to be used on its behalf a number of names then identified, that it would not renew any entry or advertisement in respect of any of those names in any telephone book (White or Yellow Pages), and that it would, upon the request of any glass supplier to whose name any of the said names is deceptively similar, transfer to that supplier the telephone service referred to in the 1991 Yellow Pages in respect of that name or disconnect the said service. The names identified in the undertaking include the names "Menuto Glass" and "Menuto Complete Glass Service". In the light of those undertakings, I refrain from making an order upon the cross-application other than an order that the cross-respondents pay the cross-applicants' costs of and incidental to the cross-application.

[1992] FCA 613

26 AUGUST 1992