Rove Ranger Pty Ltd v Manfal Pty Ltd

[1987] FCA 560

IN THE FEDERAL COURT OF AUSTRALIA )

QUEENSLAND DISTRICT	REGISTRY	)	QLD G172 of 1987
GENERAL DIVISION	)

BETWEEN: ROVE RANGER PTY. LTD.

Applicant

AND: MANFAL PTY. LTD.

Respondent

MINUTES OF ORDER

JUDGE MAKING ORDER: PINCUS J.

DATE OF ORDER:	2 OCTOBER 1987
WHERE MADE:	BRISBANE

THE COURT ORDERS THAT:

1. Until final determlnation of thls appllcatlon or

earlier order, the respondent be restralned by

itself, its servants or agents from promotlnq any

of its houses in Queensland by the use of the word

"Trendsetter" as and from 5 October 1987.

2 . Costs of the appllcatlon today be the applicant's costs in the proceedmgs.

NOTE:

Settlement and entry of orders 1 s dealt wlth In

Order 36 of the Federal Court Rules.

,

IN THE FEDERAL COURT OF AUSTRALIA	1
9UEENSLAND DISTRICT REGISTRY	1 QLD G172 of 1987
GENERAL DIVISION	1

BFIWEEN: ROVE RANGER PTY. LTD.

Applicant

AND: MANFAL PTY. LTD.

Respondent

PINCUS J. 2 OCTOBER 1987

EX TEMPORE REASONS FOR JUDGMENT

This is an application for an injunction whlch was made

on 22 September 1987. The applicant 1s a company whlch seeks

agalnst the respondent company an ln~unctlon restrainlng the use

of the word "Trendsetter", or the word and symbols

"Trendsetter 4 + " , in relation to the promotlon and conduct of a

house-bullding business.

After some discusslon on the sub~ect, It was agreed that

the matter should be treated as an appllcatlon for an

interlocutory injunction, because the respondents counsel did not

have instructions to have the matter treated as an application for

a final injunction.

Each of the applicant and the respondent is a

substantial home builder in Queensland, the respondent being based

2 .

in Western Australia. The respondent builds houses which have

attributed to them various names, and in 1985 it decided to

introduce a new name, "Trendsetter". In 1986 It added a variant

and used the name "Trendsetter 4+". The material before me

includes a statement by a Mr. B.K. Sullivan, the Queensland

manager of the respondent, that at the time of introduction of

those names the respondent did not know of their use In

Queensland.

In fact, however, they have been used in Queensland by

the applicant since 1982. The applicant registered the name

"Trendsetter Homes" on 18 November 1982, and from that date, or

earller, traded under the name. It has satisfied me, sufflciently

for the purposes of interlocutory proceedings, that It has built

up goodwill under the name.

It also uses its own name, Rove Ranger Pty. Ltd., but

the advertisements m exhlblts 1 and 2 , and also those annexed to

the affldavlt of Mr. Padget, made on behalf of the applicant, show

that the name "Rove Ranger" 1 s given no emphasis, and the homes

sold by the applicant are called "Trendsetter Homes". They are

expenslve and are substantially dearer than those built and sold

by the respondent.

It may seem rather unfortunate that this clash has

occurred, but it appears that when the name was originally

adopted, the respondent's management in Western Australia was

unaware of the potential problem. However, at the time of

introduction of the Trendsetter range to Queensland in August this

3.

year, Mr. Sullivan, whom I have just mentioned, well knew of the

applicant's business as "Trendsetter Homes". Mr. Sullivan says in

para.9 of his affidavit:

"I have had some 40 years experience in the building

industry in Queensland, and am aware of the

Applicant's business 'Trendsetter Homes'. I was

aware of this business at the time of introductlon

of the Respondent's 'Trendsetter 4+' Design to

Queensland in August	1987. I was not aware however
that the Applicant	marketed 11 standard desxgn

houses known and numbered as Trendsetter 1 through

to Trendsetter 11, or that the Applicant marketed

any houses under the design name of 'Trendsetter'

at all until I read the Affidavlt of Mr. Padget

filed in these proceedlngs."

The distinction, as I understand It, which Mr. Sullivan

takes In the passage I have lust quoted is that made by the respondent's counsel, Mr. McMurdo, namely that there 1 s an important dlfference between applying the name "Trendsetter Homes"

to a business and applying the name to houses sold.

So far as the appllcant's business 1 concerned, It does

not seem to me that the distinction I have lust referred to is of

any great moment. Exhlblt 2 has, for example, an advertisement in

the Courier Mail on 2 May 1987 with the words "Trendsetter Homes"

as the most prominent, and slightly less prominent the words, "The

successful person will chose a Trendsetter home" immediately

underneath. There is also an advertisement of April 1987 which

has as the heading: "Your new home should be a Trendsetter."

The applicant, on the material before me, uses the name

"Trendsetter" as the name of its homes and has done so for years.

.r

4 .

The respondent, putting it simply, wants to use the name

"Trendsetter" as the name of some of its homes.

In his address, delivered with his customary conclseness

and ability, Mr. McMurdo pointed out that the two competing

businesses are not in the same market, that the appllcant's houses

look different from those of the respondent and that a person who

studied the question closely enough would not be confused.

Nevertheless, on the face of it, it must be likely to mislead a

person who is famlliar with the name under which the applicant

sells its houses, to see another sort of house advertised as	a
"Trendsetter" Home.

I refer in particular to exhibit F to Mr. Sullivan's

affidavlt, whlch 1 s a brochure for the "Trendsetter 4+" and which

has the home descrlbd by that name in the most prominent lettermq

In the brochure. It would seem to me strongly arguable that a

person who had attached some recognltlon to the appllcant's homes

described as "Trendsetter Homes" would be likely to be mlsled by

flnding another, cheaper house, described as "Trendsetter".

The other matter emphaslsed by Mr. McMurdo is that the

advertisements used by the respondent make it clear that the name

of the business which constructs the homes In question is not

necessarily "Trendsetter". That is not, perhaps, as clear as it

might be in exhibit F, but on the whole I think I should decide

the case on the basis that a person of reasonable intelligence,

seeing the respondent's advertisements, would appreciate	that the
name of its business is "Mansard".

5

That having been said, the case seems one in which the

applicant's claim for an interlocutory injunction is clearly made

out. The injunction is sought on the usual basis, that is that

Mr. Heyworth-Smith offers an undertaking as to damages, and if the

case is pursued and lost, then the $8,500 which, it is said, will

be thrown away by the respondent if I grant an injunction may be

able to be claimed. On the other hand, if I refuse an injunction,

the problem gets worse, because the respondent will be free, and

no doubt would be inclined, to continue to attempt to build up

goodwlll and recognition in respect of its "Trendsetter" range.

The distinction to which I refer above may be

illustrated, in a slightly fanciful way, by postulating that the

defendants in Turner v. General Motors (Australia) Pty. Ltd. 4 2

C.L.R. 353, instead of taking the course which they there took,

had brought out a range of cars under the name General Motors,

making it clear that this range of cars was made by people called

Turner. If the car were a cheap and inferlor one, no doubt Turner

could have argued that any Intelligent person would have

appreciated that the General Motors car brought out by him was n o t

associated with the well-known American company. I see the force

of that line of argument, but it seems to me clear enough here

that the applicant's case is one in which there is not only a

serious question to be tried, but a prima facie case of misleading

conduct not designed, I think, to mislead, but likely to mislead a

person who recognized the name "Trendsetter"	as	applicable to
homes of good quality.

6.

Counsel have, at my suggestion, had some discussion as

to the form of the order, and while not abandoning in the

slightest his resistance to any order being made, I have been

informed by Mr. McHurdo that he has agreed with Mr. Heyworth-Smith

that an order in the following form is thought to be suitable.

It will be ordered that until the final determination of

this application or earlier order, the respondent be restrained by

itself, its servants or agents, from promoting any of its houses

in Queensland by the use of the word "T endsetter", such restraint

to operate as and from the fifth day of October 1987. The costs

of the application today will	be	the applicant's costs in the
proceedings.