Ricotti Nominees Pty Ltd v Landworks Landscaping Pty Ltd
[2003] FMCA 104
•6 March 2003
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| RICOTTI NOMINEES PTY LTD v LANDWORKS LANDSCAPING PTY LTD | [2003] FMCA 104 |
| PRACTICE AND PROCEDURE – Trade practices – costs – where agreement after mediation –relevance of conduct of respondent after the agreement. |
Federal Magistrates Court Act 1999, s.34
Barry v City West Water Ltd (2002) FCA 1214 (3 October 2002)
| Applicant: | RICOTTI NOMINEES PTY LTD (TRADING AS LANDWORKS LANDSCAPING) |
| Respondent: | LANDWORKS LANDSCAPING PTY LTD |
| File No: | MZ 1065 of 2002 |
| Delivered on: | 6 March 2003 |
| Delivered at: | Melbourne |
| Hearing Date: | 6 March 2003 |
| Judgment of: | McInnis FM |
REPRESENTATION
| Counsel for the Applicant: | Ms J.A. Benson |
| Solicitors for the Applicant: | Einsiedels |
| Counsel for the Respondent: | Mr R. Hamilton |
| Solicitors for the Respondent: | Di Mauro Solicitors |
ORDERS
The hearing date of 1 April 2003 be vacated.
The application filed 18 October 2002 be otherwise struck out with the right of reinstatement.
The respondent shall pay the applicant's costs of this day, including the preparation of the affidavit of Mark Ricotti, fixed in the sum of $750.
I direct that the agreement entered between the parties this day remain on the court file until further order.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT MELBOURNE |
MZ 1065 of 2002
| RICOTTI NOMINEES PTY LTD (TRADING AS LANDWORKS LANDSCAPING) |
Applicant
And
| LANDWORKS LANDSCAPING PTY LTD |
Respondent
REASONS FOR JUDGMENT
(Revised from transcript)
This is an application which was initially filed with this court on 18 October 2002. It is a claim which seeks, effectively, an injunctive remedy by Ricotti Nominees Pty Ltd (the Applicant), trading as Landworks Landscaping. The injunction seeks to restrain Landworks Landscaping Pty Ltd (the Respondent), from carrying on business or promoting or advertising the business under or in association with the name ‘Landworks Landscaping’ or ‘Landworks Landscaping Pty Ltd’, or alternatively under or in association with the name that is deceptively similar to the name of the applicant.
When the matter was before the court at the first hearing certain orders were made in relation to the further conduct of the matter. In particular, orders were made on 29 November 2002 that the proceedings be the subject of a mediation. That mediation was to occur on or before 14 February 2003. According to the court file, the mediation occurred on 10 February 2003 and on that date it is noted by the registrar that the matter had settled subject to terms of settlement.
The application before the court this day involves reliance upon an affidavit sworn by Mr Mark Ricotti on 4 March 2003. Mr Ricotti is a director of the applicant and in his affidavit he refers to the mediation occurring. He further refers to an agreement which is said to have been entered into between the parties as a result of the mediation. In that agreement, which is exhibit A to Mr Ricotti's affidavit, it would appear that the respondent within seven days would, amongst other things, take action to change its business name and company name and to deliver up certain items which had the name "Landworks Landscaping Pty Ltd" to the applicant's solicitors. It appears from the affidavit of Mr Ricotti that a change of name had occurred by the respondent and the name was changed to a name which for the present purposes includes the word "Landworx".
The matter, when called this day, was the subject of dispute on a narrow issue of costs as the parties agree that there is now a further agreement entered into this day whereby the respondent has agreed that it shall not use a name with the word "Landworx" in it. The narrow issue before the court is whether or not the respondent in the circumstances, against the backdrop of a mediation and the agreement entered into, ought to pay the costs of this day and the costs incurred in relation to the preparation of an affidavit and appearance. It is suggested that costs of $750 should be fixed and that the respondent should pay those costs.
The respondent has opposed any order for costs and submitted that in the circumstances of this application there was some degree of uncertainty about the agreement which was entered into by the parties arising out of the mediation and that, in any event, productive use has been made of the time and the further hearing of the matter by the parties now entering into a further agreement which provides a greater degree of certainty to the parties and it resolves once and for all the matter between the parties.
It has been submitted on behalf of the applicant that effectively the change of name was not at least in keeping with the spirit if not the letter of the agreement, as I understand the submissions made for and on behalf of the applicant.
In my view, the agreement entered into, which is now exhibit A of the affidavit of Mark Ricotti, whilst not specifically prohibiting use of the name which was subsequently registered by the respondent, is sufficient when taken into context with the application and the orders sought in the application to which I have referred, to at least provide the parties with a clear indication that the intent and purpose of the agreement was to achieve an outcome where not only the respondent would desist from using the name Landworks Landscaping or Landworks Landscaping Pty Ltd but also any other name which is deceptively similar in name to that of the applicant, which as I have indicated is a name Landworks Landscaping.
In the circumstances, the change of name by inserting the letter ‘X’ in lieu of the letters ‘K’ and ‘S’ alters the spelling but not the phonetic sound of that word and to that extent, in my view, it is open to conclude that change is a change to a name which is deceptively similar to the name of the applicant.
It is clear to me that the intent and purpose of the agreement which is said to have arisen out of the mediation was to avoid that consequence, and to that extent I accept that the matter had to be clarified as a result of the further conduct of the respondent which I would conclude is in breach of the spirit if not the letter of the agreement from the mediation. Accordingly, it is appropriate, in my view, that an order be made that the respondent pay the applicant's costs.
I have had regard to the requirements of this court to avoid breaching section 34 of the Federal Magistrates Court Act 1999 and I have also taken note of the unreported decision of Allsop J in the matter of Barry v City West Water Ltd (2002) FCA 1214 (3 October 2002) and I am satisfied that in the circumstances of this case it is appropriate for the court to have examined the material in the manner that I have described.
I certify that the preceding ten (10) paragraphs are a true copy of the reasons for judgment of McInnis FM
Associate:
Date: 6 March 2003
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