Rent-A-Ute Pty Ltd v Golden 44 Pty Ltd

[1987] FCA 378

Re: RENT-A-UTE PTY. LIMITED
And: GOLDEN 44 PTY. LTD.; KENNETH JOHN PETERSEN and ALLAN DOUGLAS PERRY
No. QLD G101 of 1987
Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Pincus J.

CATCHWORDS

Trade Practices - s.52 - passing off - protection of business name - use of very similar name - evidence of confusion - name comprised of descriptive words only - interlocutory injunction refused.

Trade Practices Act, s.52

HEARING

BRISBANE

#DATE 15:7:1987

Counsel for the Applicant: Mr W.T. McMillan

Solicitors for the Applicant: Samuel Leonard & Associates

Counsel for the Respondents: Mr A. Heyworth-Smith

Solicitors for the Respondents: Peterson Cutler & Co.

ORDER

The application for an interlocutory injunction be dismissed;

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

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

JUDGE1

This is an application for an interlocutory injunction to restrain use of a business name, brought in reliance upon provisions of the Trade Practices Act.

1. The applicant's business is well established and uses the name Rent a Ute (or, sometimes, Rent-a-Ute). The respondent's has started recently and uses the name Handy Rent A Ute. The history of the applicant's business, which has been quite successful, is as follows. Mr M. M. Bone and his father operated a service station in 1983 and began to rent out motor utility vehicles for short and long periods. During the same year a few agents were appointed to conduct the same business. In February 1985 Mr Bone formed the view that he should franchise his business, and approached a number of service station proprietors, inducing them to pay money to participate in the enterprise. More accurately, each franchisee ran a separate business under the guidance of, and with some assistance from, the applicant and made payments to the applicant. There are now 43 franchisees in Queensland, 42 in New South Wales and 22 in Victoria and smaller numbers elsewhere. There is a total of over 250 depots; some franchisees have more than one depot.

2. The applicant has, to some extent, advertised its services "either as the direct supplier or latterly as the franchisor". In 1986 and 1987, its total expenditure on advertising is said to have been $115,729. That is a substantial amount, but plainly not enough to make much impact across the nation. There is no evidence that consumers or prospective consumers of the relevant kind know the name "Rent a Ute" as a source of utilities for hire.

3. In February 1987, the applicant appointed the third respondent as a franchisee in the Tweed Heads area and began discussing with him the possibility of his taking a franchise in Western Australia and Tasmania. Since that would have involved a large payment by the third respondent, he discussed the position with the second respondent, a solicitor, and the thought occurred to them that it might be easier and cheaper to set up a…