Saga Leisure Ltd v Saga Holdings Pty Ltd t/as Saga Ticketing Centre and Saga Airways International

[1998] FCA 318

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 654  of   1997

BETWEEN:

SAGA LEISURE LIMITED
First Applicant

SAGA HOLIDAYS (AUSTRALASIA) PTY LIMITED
Second Applicant

AND:

SAGA HOLDINGS PTY LIMITED
T/A SAGA AIR TICKETING CENTRE AND SAGA AIRWAYS INTERNATIONAL
Respondent

JUDGE:

LEHANE J

DATE OF ORDER:

27 MARCH 1998

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1. The respondent, whether by itself, its servants, its agents or otherwise be restrained from, in trade or commerce without the licence of the applicants, advertising, promoting, offering to supply or supplying any travel or travel agency services under or by reference to any business name, company name or any trade mark consisting of or including the word “SAGA” or any other word substantially identical or deceptively similar thereto.

1. Within 14 days of the date hereof the respondent procure the cancellation of each of the registered business names for “SAGA AIR TICKETING CENTRE” including registration Nos. L6507435, 1243972W and 0142203V.

2. The respondent pay the applicants’ costs of these proceedings.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 654 of 1997

BETWEEN:

SAGA LEISURE LIMITED
First Applicant

SAGA HOLIDAYS (AUSTRALASIA) PTY LIMITED
Second Applicant

AND:

SAGA HOLDINGS PTY LIMITED
T/A SAGA AIR TICKETING CENTRE AND SAGA AIRWAYS INTERNATIONAL
Respondent

JUDGE:	LEHANE J
DATE:	27 MARCH 1998
PLACE:	SYDNEY

EX TEMPORE REASONS FOR JUDGMENT

The applicants are members of a group of corporations known as the Saga group which carries on, in a number of places including the United Kingdom, the United States and Australia, a business of providing travel services of various kinds, principally to persons known as seniors, that is (apparently) those over the age of 50. The group has carried on that business for a substantial period of time throughout that period, on the evidence, using in the course of the business, and in relation to the services which it has provided, the name “Saga”.   The second applicant, which is incorporated in Australia, has carried on that business or various aspects of it since 1985.   The first applicant is the proprietor of a trade mark (No. 573089) registered under the Trade Marks Act 1995 (Cth), the registration date being 24 February 1992. The mark comprises the word “Saga”. The respondent is the proprietor of three registered business names registered in, respectively, New South Wales, Western Australia and Victoria, the name in each case being “Saga Air Ticketing Centre”. The evidence is that the respondent has carried on a travel agency business under that name from addresses at least in Queanbeyan and in Sydney. The respondent's business appears to have commenced under that name late in 1990. The business name was registered in New South Wales on 5 December 1990 and a director of the respondent has suggested, in correspondence addressed to the court, that the respondent has carried on business, apparently under that name, since a date in November 1990.

There is evidence before me which satisfies me of a number of matters.   First, by late 1990 the second applicant had acquired, in the travel industry and among those who use its services, a substantial reputation in the name “Saga”.  Secondly, there have been instances of actual confusion arising from the use by the respondent, in the course of its business, of the name “Saga”; and, given the similar nature of the businesses carried on respectively by the second applicant and the respondent, the use of the name by the respondent, evident at least in the correspondence addressed to the court, and the reputation proved by the second applicant, this seems to me plainly a case where use of the name “Saga” by the respondent, for the purposes of its business, is misleading or deceptive.   Clearly also the use of the name by the respondent of the name “Saga” is trade mark use and, subject to one matter to which I shall return, it may well be that the respondents have infringed the first applicant's trade mark.

In those circumstances the relief sought by the applicants by their amended application comprises four orders: first, an order restraining the respondent, substantially in terms of s 52 of the Trade Practices Act 1974 (Cth) from promoting or supplying, in trade or commerce, travel or travel agency services under or by reference to a business name, company name or trade mark consisting of or including the word “Saga”, secondly, an injunction against infringement of the trade mark; thirdly a mandatory order, that within 14 days of today's date the respondent procure the cancellation of the registration of the business names to which I have referred, and finally an order that the respondent pay the applicants’ costs. Other relief, including, particularly, pecuniary relief, sought in the amended application is not now pressed.

The procedural history of the matter should be very briefly noted.  Initially, and at the first directions hearing, the respondent was represented by solicitors.  Those solicitors have ceased to act.   Since the solicitors ceased to act, the respondent has not appeared at any directions hearing and has, on the evidence, taken no part in the proceedings at all except by sending to the court a letter by facsimile, the letter to which I have already referred.  It is dated 4 November 1997 and it mentions, among other things, that the respondent claims to have been operating since 10 November 1990.   By the time that letter was sent, the respondent had already been notified that the first applicant (then the sole applicant) proposed to move for default judgment.  The first applicant subsequently did so; when its motion was last before me, counsel on its behalf sought leave to amend the application and the statement of claim, principally for the purpose of adding the second applicant as a party.  The amendments foreshadowed have now been made.  I am satisfied by evidence read this morning that the respondent has been properly served and must undoubtedly have become aware of all the steps taken by the applicants in the proceeding, of the orders which have been made during the interlocutory course of the proceeding (including the order permitting the amendment), of the actual amended application and amended statement of claim and of the fact that the matter was to be listed for hearing this morning.

What is in fact before me, therefore, is the applicants’ motion, which has been heard ex parte, seeking default judgment. The evidence to which I have already referred satisfies me that the respondent, by carrying on under the name “Saga” a business as a travel agent and promoting its services under that name, has been guilty of conduct which is misleading or deceptive within s 52 of the Trade Practices Act.   That conclusion requires no further elaboration and entitles the applicants in my view to the first of the injunctions which they seek and to the mandatory order for cancellation of the business names.

The applicants submitted that they were entitled also to an injunction restraining the respondent from infringing the registered trade mark. As a practical matter, however, it is clear that such an injunction would add nothing of substance to the injunction I propose to grant relying on s 52. There is, as counsel for the applicants fairly acknowledged, a possible defence upon which the respondent might be able to rely under s 124 of the Trade Marks Act.  It may well be that the material before me is quite insufficient to make out such a defence and it may be that the applicants are entitled to the injunction against infringement which they seek.  It is, however, unnecessary in the circumstances to consider that matter further.
Accordingly, I make the following orders:

1. That the respondent, whether by itself, its servants, its agents or otherwise be restrained from, in trade or commerce without the licence of the applicants, advertising, promoting, offering to supply or supplying any travel or travel agency services under or by reference to any business name, company name or any trade mark consisting of or including the word “SAGA” or any other word substantially identical or deceptively similar thereto.

1. That within 14 days of the date hereof the respondent procure the cancellation of each of the registered business names for “SAGA AIR TICKETING CENTRE” including registration Nos. L6507435, 1243972W and 0142203V.

1. That the respondent pay the applicants’ costs of these proceedings.

I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Lehane

Associate:

Dated:             27 March 1998

Counsel for the Applicants:	J.V. Nicholas
Solicitor for the Applicants:	Sprusons: Solicitors
Date of Hearing:	27 March 1998
Date of Judgment:	27 March 1998