Satelectrics Pty Ltd v Fenrun Pty Ltd

[1994] FCA 482

Y 8 2 1 99

JUDGMENT NO. ..nmm..n. W -

CATCH WORDS

TRADE PRACTICES - misleading or deceptive conduct - similar business names.

PASSING OFF - distinctiveness of descriptive words.

PRACTICE - summary dismissal of proceedings.

Trade Practices Act 1974, s 52 Federal Court Rules, 0 20, r 2

Dodds Familv Investments Ptv Ltd v. Lane Industries Ptv Ltd (1993) 26 IPR 261

Hornsbv Build~nr! Intormat~on Centre Ptv Ltd v. ~vdne" ~u i l i ine information Centre

--

Ltd (1978) 140 CLR 216

~ e r d a n ~ t v Ltd v. Cockburn Cement Lirn~ted (1989) ATPR 7 40-920

R&C Products Ptv Ltd v. SC Johnson & Sons Ptv Ltd (1993) 113 ALR 487
Targetts Pty Ltd v. Target Australia Ptv Ltd (1993) 26 LPR 51

Webster v. h m ~ a r d (1993) 177 CLR 598

SATELECTRICS PTY LIMITED v FENRUN PTY LIMITED

No. NG 972 of 1992

Corain:	Whitlam J
Place:	Sydney
Date:	15 July 1994

REGISTRY

2 7 JUL 1994
FEDERAL COURT OF

AUSTRALIA PRINCIPAL

L i m i t e d Dlstrlbution

IN THE FEDERAL COURT OF AUSTRALIA 1 1 ) - NG 972.of 1992

-	NEW.SOG)TH -WALES. DISlXIrn-REGISTRY
GENERAL DIVISION 1

SATELECTRICS PTY LIMITED

Applicant

FENRUN PTY LIMITED

Respondent

Coram:	Whitlam J
Place:	Sydney
Date:	15 July 1994

REASONS FOR JUDGMENT

This 1s an application for the summary dismissal of the proceeding.

The applicant, Satelectrics Ply L~mited, clalms relief for both contravention ot

s 52 of the Trade Practices Act 1974 and passlng off. The material facts on which the

George Burgess. I shall summarize that evidence. applicant's clalms are based are deposed to m the affidavit ot one of its directors, Arthur Since 1986 the applicant has carried on a buslness of installing and repairing

television antennas. In 1987 it began tradmg as "Same Day Antenna Service." Each year

between 1988 and 1992 the applicant has caused to be distributed approximately 100,000

promotional leaflets in the Sydney metropol~tnn area promoting its business under that

name. The name has also been advertised by the applicant each year slnce 1988 in two editions of suburban buslness d~rector~es. Two of the applicant's vans have the name painted on the slde. Mr Burgess estimates that since 1988 it has cost the applicant

between $40,000 and $50,000 each year to advertise the name "Same Day Antenna

Service." The total annual turnover of the applicant's business is estimated at

approximately $400,000.

A significant part of that advertsing expenditure has been spent on display advertisements in Yellow Pages telephone director~es under the heading Television Antenna Services. The first such advertisement was placed in the directory for the

Sydney area in 1988. The copy at the top of this advertrsement said: "Ask about our

same day antenna service" with the last four words (being the trade name) in very large print. There then followed lnformatlon about buslness hours and services wth different

telephone numbers for elght districts of Sydney. The applicant's corporate name and

address were at the foot of the advertisement.

The applicant has advertised in a simllar format in the Sydney directory since

1988. By 1992 the introductory words "Ask about our" had been omitted and telephone

numbers were now glven for nlne districts, and by 1993 the word "The" was inserted before "same day antenna service" and the nlne districts were somewhat differently

described.

In November 1991 Mr Burgess first notlced an advertisement in the 1992 Sydney
directory, which had been placed by the respondent, Fenrun Pty L~mited. This display

. .adve~tisement was the.same sue asihtltuf the appllcant. At the top it said "Ask about

our same day antenna service" with the last four words in the same large prlnt and style as that employed by the applicant in as advert~sement. Following a br~ef descrlptlon of

services, mne d~stricts	of Sydney werc llsted w~th	different telephone numbers. Only two
of the d~strlcts	werc described in the same way as the dlstr~cts	m the applicant's 1992

entry. At the foot of the advertisement it showed the name "Kay Jay" under which the respondent carries on business together with its address. This advertlsement also stated "Call today for spec~al Yellow Pages user discount." Such a discount was not mentioned

in any of the appl~cant's advertisements.

The appllcant had been registered under the Business Names Act, 1962 (NSW)
as carrylng on busmess under the name "Same Day Antenna Semce" at an address m

Oatley West between 23 March 1988 and 22 March 1991. This address was the address

shown in the appl~cant's advertisements in the Sydney directories. Mr Burgess did not

know that t h ~ s reg~stration had exp~red untll he made Inquiries after seeing the

respondent's advertisement. The respondent had applied on 7 November 1991 for

regstrat~on under that Act of the name "Same Day Antenna Servlce" in respect of a

busmess of lnstalllng television antennas proposed to be carried out trom 1 December

1991 at addresses at Alford's Polnt and Bexley. The reg~strat~on was evidently effected.

The Bexley address was that shown in the respondents advert~se~nent	in the 1992 Sydney
duectory.

Both the apphcant and the respondent also placed advertisements in the 1992 directory for the Campbelltown area. The applicant's display advertisement was headed "The Same Day Antenna S e ~ c e " and showed the name "Nu-Life Television" and an address at Leumeah at the foot. The respondent's advertisement commenced "Ask about our same day antenna service." In both cases the key four words were in very large print of the same style. The description of servlces was almost identical. The telephone numbers were, of course, different and the respondent also offered its "spec~al Yellow Pages user discount."

The respondent had also advertised "Same Day Antenna Semce" m c e a week

since 1989 in the St George and Sutherland leader newspaper.

There was an exchange of correspondence between the parties' solicitors after

February 1992. However, the respondent repeated its advertisement in the 1993 Sydney

telephone directory, and the applicant commenced this proceeding.

I was informed that the evidence of the applicant on the lssue of llability was

complete. I may assume that it is not proposed to adduce evidence from any consumers

is, of course, not necessary to establish either cause of actlon. that they were in fact misled m any way by the respondent's advertls~ng. Such evidence Nelther counsel has suggested that the present application needs to be approached

differently according to whether llability 1s to be considered under the Trade Practices

& or in passlng off. This 1s often the case. See Taraetts Ptv Ltd v. Tarnet Australia

Ptv Ltd (1993) 26 IPR 53 and RStC Products Ptv Ltd v. SC Johnson & Sons Ptv Ltd

(1993) 113 ALR 487.

There .can-be no doubt thut the words "same day antenna semce" describe the service offered by both parties. The way in which such words, which appear purely descrlptlve, may become d~st~nctive of the business of a particular person was explained

by the Full Court of this Court in Dodds Familv Investments Ptv Ltd v. h n e Industries

Ptv Ltd (1993) 26 IPR 261 at 268-271. Importantly, as the Full Court emphasizes, "the issue of distinctiveness is one of fact, to be determined upon the evldence!'

Here the ev~dence as to the use of the words "Same Day Antenna Services" m the

promotion of the applicant's business, together wlth the lnltlal registration of those words

as a business name, does not establ~sh that they had become distlnctlve of the appl~cant's

busmess. To paraphrase tht: Full Court, such evidence "does not go any way to

establishing distlnct~ve or secondary meanings for substantially descript~ve words!'

As Stephen J said in Hornsbv Buildlile Information Centre Ptv Ltd v. Svdney Buildlnp Information Centre Ltd (1978) 140 CLR 216 at 229: "There 1s a price to be paid for the advantages tlowing from the possession of an eloquently descriptive trade name."

Nor do I think that, on any other conceivable basis, any member ot the public would be	misled into believing that the business of the respondent was the business of the
apphcant. The advertisements are d~fferent and each purports to be placed by a different person.

I am firmly of the view that the apphcant's case is hopeless and quite untenable.

This is not a view reached upon what French J has described as "the bare bones of a

pleading untleshed by ewdence": Merrnan Ptv Ltd v. Cockburn Cement Limted (1989)

ATPR 7 40-920 at 49,954. I am, of course, conscious of what Mason CJ, Deane and	.--
Dawson JJ said in Webster v. Lam~ard (1993) 177 CLR 598 at 602-603, but this S not
a case where the key questlon turns upon any disputed issue of fact. The power to make an order under 0 20 r 2 must be exerclsed spar~ngly. However, I thmk that a trial will lead to entirely unnecessary costs and the matter ought, as a matter of justice for the
respondent, be brought to an end now.

The proceeding will be dismissed generally. The applicant must pay the

respondent's costs.

I ccrtily that th~s and the prccedlng five pages are a

true copy of the Reasons Tor

Honuurahle Mr Jusuce A P Whitlam.

Assu~lare

Date. 15 July 1994

Counsel for the appl~cant	S.D Epste~n
instructed by	Folbigg & Folblgg

Counsel for thc respondent.	D F Libl~ng
instructed by	Gadens Ridgeway
Date of hcarlng	12 March 199.3