Reilly Bishop (Vic) Pty Ltd v Associated Electrics Pty Ltd

[1981] FCA 159

Re: REILLY BISHOP (VIC.) PTY. LIMITED and JOHN BISHOP
And: ASSOCIATED ELECTRICS PTY. LIMITED, NOEL FRANCIS CRABBE and JOAN LESLEY
CRABBE (1981) 53 FLR 302
N.S.W. No. G 127 of 1981
Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA

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

CATCHWORDS

Trade Practices - Consumer protection - misleading and deceptive conduct - application to restrain - Melbourne business selling video equipment - business called "Mr. Video" and "Mr. Video Reilly Bishop" - business advertised throughout Australia - different business in Sydney proposed to be called "Mr. Video" - likelihood of public being misled or deceived - evidence of deception - balance of convenience.

Trade Practices Act - (1974) s.52

Trade Practices - Consumer protection - Misleading and deceptive conduct - Application to restrain - Melbourne business selling video equipment - Business called "Mr. Video" and "Mr. Video Reilly Bishop" - Business advertised throughout Australia - Different business in Sydney proposed to be called "Mr. Video" - Likelihood of public being misled or deceived - Evidence of deception - Balance of convenience - Trade Practices Act 1974 (Cth), s. 52.

HEADNOTE

The applicants marketed video recorders and other video equipment in the domestic and commercial market throughout Australia, and in their advertisements used the names of "Mr. Video" and "Mr. Video Reilly Bishop". The applicants registered "Mr. Video" as a business name in Victoria, and lodged an application to register the name and an associated logo as a trade mark. The respondents commenced to use the name "Mr. Video" to describe their business in Sydney, registered the name as a business name in New South Wales, and published advertisements including the expression: "Mr. Video is coming to Sydney."

The evidence showed that persons likely to read the respondents' advertisements would include members of the public who would think the name "Mr. Video" referred to the applicants' business, and who would therefore be likely to be misled or deceived by the advertisements.

Held: (1) The applicants had established a prima facie case of contravention of s. 52 of the Trade Practices Act by the respondents.

(2) On the balance of convenience it was appropriate that an interlocutory injunction be granted to restrain the use of the name "Mr. Video" by the respondents.

D.D. Levine, for the applicants.

J.J. Garnsey, for the respondents.

HEARING

Sydney, 1981, September 24. #DATE 24:9:1981

Solicitors for the applicants: Simons & Baffsky.

Solicitors for the respondents: Peter G. Fitz-Gibbon & Co.

R.R. BOADEN

ORDER

1. Upon the applicants giving to the Court the usual undertaking as to damages, pending the determination of these proceedings or further order, I order that the respondents by themselves, their servants and agents be restrained from:

(i) using or publishing or causing procuring or authorising use or publication of the words "Mr. Video" in any way in relation to the business of the first-named respondent or any goods and services offered for sale or supply or distributed, sold or supplied by it;

(ii) representing that they, or the business or any goods or services offered for sale or supply or distributed, sold or supplied by the first-named respondent, are connected or affiliated with the first-named applicant or the business carried on by it.

2. The costs of the interlocutory proceedings are to be costs in the application.

There is no dispute between the parties as to the directions which should be given for the further disposition of the application. I therefore give the following directions:

(a) The applicants to file and serve any further affidavits on which they intend to rely on or before 9.10.81.

(b) The respondents to file and serve any further affidavits upon which they intend to rely on or before 23.10.81.

(c) The applicants to file and serve any affidavits on which they intend to rely in reply on or before 30.10.81.

(d) The evidence at the hearing to be on affidavit with cross-examination.

(e) The parties to give discovery on or before 16.10.81 and inspection to take place within 14 days thereafter.

(f) This directions hearing stood over to 3.11.81 at 9.30 a.m.

(g) Liberty to apply on 48 hours notice.

I note that the respondents seek an interlocutory injunction in terms of the document initialled by me and placed with the papers. The application for injunction and to rescind the existing injunctions is refused. The costs of this application are to be costs in the application. Orders accordingly.

JUDGE1

This is an application for interlocutory relief and for directions.

As I have formed a firm view as to the orders which should be made and as the matter is of some urgency I shall give my reasons without delay.

The first applicant, Reilly Bishop (Vic.) Pty. Limited (Reilly Bishop), carries on business as a specialist in the marketing of video recorders, video cameras, pre-recorded videotapes and cassettes, and other video equipment. It caters for the home video enthusiast as well as for the commercial market. It operates its business from premises in Blackburn in the State of Victoria and also at 243 Bourke Street, Melbourne. It has a substantial and growing business and has a turnover in excess of $6 million per annum. It employs some 40 people, including salesmen, repairmen and commercial production staff. The main activities are carried on from the Blackburn premises. Whilst most of its business is done in Victoria, it has a substantial business throughout Australia. The bulk of its non-Victorian business is done in New South Wales. It has advertised its business fairly extensively in The Age and The Herald which are newspapers circulating in Melbourne. They also have some readers who reside in New South Wales. Its business is regularly advertised in a monthly journal called Australian Video Review. This journal has an Australia-wide circulation. Since about October 1980 Reilly Bishop's advertisements have used the words "Mr.Video" to describe its business. Sometimes these words have been used alone, and on other occasions the words "Mr. Video" have appeared in bold type, with the words "Reilly Bishop" in smaller type underneath. There has been superimposed on these words a photograph of Mr. Bishop, the second applicant. Whilst the bulk of Reilly Bishop's advertising has been undertaken in Victoria, there has been not insignificant advertising which would have come to the attention of persons in New South Wales interested in video equipment. Reilly Bishop has been registered in Victoria since 2 December 1980 as the owner of the business name "Mr. Video". Early in 1981 it applied to register the words "Mr. Video" and an associated logo as a trade mark.

The applicants allege that the first respondent Associated Electrics Pty Limited (Associated Electrics) is acting in breach of ss. 52 and 53 of the Trade Practices Act. Passing off is also alleged. In substance, the allegation is that Associated Electrics is using the name "Mr. Video" to describe its own business which it carries on from premises in York Street, Sydney. The applicants claim that the name "Mr. Video" is known throughout Australia as referring to the business conducted by Reilly Bishop and that the use by Associated Electrics of that name to describe its business amounts to misleading or deceptive conduct and constitutes passing off.

Reilly Bishop has many customers in New South Wales and during the last month its sales in that State were in excess of $35,000. Over the past 12 months it has spent approximately $700,000 on advertising and one result of that expenditure has been the obtaining of substantial orders from interstate customers.

There have been discussions between representatives of the parties as to the possibility of Associated Electrics using the name "Mr. Video Reilly Bishop" with the consent of Reilly Bishop. There is some dispute as to what was said in those discussions and I think it is neither necessary nor desirable at this interlocutory stage of the proceedings to make any findings in respect of them. It is, however, quite clear that Reilly Bishop did not give any authority to Associated Electrics to use either the names "Mr. Video" or "Mr. Video Reilly Bishop".

In the early part of August of this year Mr. Crabbe, the second respondent, spoke on the telephone to Mr. Bishop, and told him that he wanted to use the words "Mr. Video". He said he had placed an advertisement in the Sydney Daily Mirror of 4th August. That advertisement is in evidence and reads in part as follows: "Managers wanted. Mr. Video is coming to Sydney. We require experienced managers for our branch stores . . . Mr. Video offers the largest libraries in the country." Mr. Video is the largest hardware (video) dealer in the country." Other advertisements have been placed in newspapers using the name "Mr. Video" as referring to Associated Electrics' business.

Associated Electrics has registered the name "Mr. Video" as a business name in New South Wales. The application for registration was made in June 1981.

The respondents deny that they have been guilty of any conduct infringing the Trade Practices Act. They further deny any passing off. They claim that Reilly Bishop's business is known as "Mr. Video Reilly Bishop", and not as "Mr. Video", and that the use of this latter name would not mislead or deceive any person into believing that it referred to Reilly Bishop's business.

I am of the opinion that as the evidence presently stand, many members of the public in and outside the State of Victoria would associate the name "Mr. Video" with Reilly Bishop's business. In my opinion the class of persons likely to read advertising material put out by Associated Electrics would include some members of the public who would think that the name "Mr. Video" referred to Reilly Bishop's business. It is likely that such persons would also be aware of the use by Reilly Bishop of the name "Mr. Video Reilly Bishop". But I do not think that they would think that these two names referred to two different businesses. They would believe that the name "Mr. Video", without the addition of the words "Reilly Bishop", referred to the applicant company's business. This class of person would be likely to be misled or deceived by Associated Electric's advertising material. As I have already indicated, part of the advertising material complained of uses the expression "Mr. Video is coming to Sydney". The reference to Mr. Video coming to Sydney would be likely further to misled such persons into thinking that the Melbourne business known by that name was coming to Sydney. There is some evidence before me that already a number of suppliers of video equipment have formed the belief that the Reilly Bishop business is coming to Sydney.

For these reasons I think that the applicants have made out a prima facie case that the respondents are contravening s.52 of the Trade Practices Act. That is to say if, the evidence remains as it is, there is a probabidlity that at the trial of the action, the applicants will be held entitled to relief. See World Cricket v. Parish (1977) 16 A.L.R. 181 at 186 per Bowen C.J. It is not necessary, for present purposes, to deal with the claim of passing-off.

I now turn to consider the question of the balance of convenience. If the respondents are not restrained it is likely that a not insubstantial class of persons, i.e. those interested in purchasing and dealing in video equipment, will be misled or deceived.

On the other hand, I do not think that the conduct of Associated Electric's business will be much affected if it is enjoined until the hearing from using the name "Mr. Video". Its business is not confined to video equipment and extends over a wide range of other electrical goods. It is true that it proposes to commence business in a shop in the Strand Arcade, Sydney next week and to call that business "Mr. Video". But the shop has not yet commenced to trade and it would not be a major obstacle to advertise that business pending the final hearing without reference to the name "Mr. Video". The respondents have already spent some money in advertising the new business, but I do not think that that expenditure will be wasted if interlocutory relief is granted.

I am of the opinion that the applicants have made out a case for interlocutory relief.