The Confederation of Australia Sport Inc. v Hujod Pty Ltd

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IN THE FEDEP.AL COrJRT OF AIJSTRALIA 1	i', 1
t

VICTORIA	DISTRICT	REGISTRY	)	VG No. 1	I'
p

GENERAL DIVISION

EX TEMPORE

JUDGMENT

)

Between:

THE CONFDERATION

OF AUSTRALIAN SPORT

INCORPORATED

(Applicant)

HUJOD PTY. LTD. and

GRAHAM G. LOVETT

(Respondent)

Coram:

Smithers

Date:

2 2 August

1485

REASONS FOR JUDGMENT

HIS

HONOUR :

The applicant

did

seek

an interlocutory

in~unctlon in

accordance wlth the

terms

of the

application, which would mean that the respondent would

be restralned

from uslng the name "Sport Australia" in

connectlon with his business.

0 '

As the matter has developed it has been put to me that

the real relief which the applicant would regard as

proper would be an Injunction to restraln the respondent

from advertlsing over the air or on televlslon or in the

newspapers the name "Sport Australia" in connection with

his busmess.

It appears that In 1977 the appllcant, belng a senior

executlve of Dunlop Australia, concelved the Idea that

the words "Sport Australia" had potentlal as a name for

a busmess dealing In some

aspects of sport. The

immediate aspect was probably the selling

of sporting

goods, or perhaps consultancies, and perhaps management

of sportsmen.

As a result, Dunlop registered a company called "Sport

Australia

Export

Pty

Lmited" and

later

also

registered a company wlth the name "Sport Australia Pty Limited". Sport Australla Export Pty Limited carried on trade esportlng sportlng goods, uslng the trade name

I. 1

"Austral" for the goods

that

sold

and possibly

engagmg in other aspects

of sportlng exploitatlon.

Sport Australla Pty Limlted did not Itself actually

trade. In

1978 the appllcant left Dunlop and

It was

part of the arrangement, under which he ceased to serve	i
'!.
Dunlop, that the benefit and entitlement, sofaras there	. I

was such, that Dunlop had in the name "Sport	Australia",
should pass to him.

3 .

Accordingly, In

1982,

apparently towards the end, Mr

Lovett acqulred a shelf company called

Hu~od

Pty Llmited

and In 1978 registered the name "Sport Australia"

s the

busmess name of

that company. He commenced to trade as

sports

consultant

and

manager

sporting

personalities and as an entrepreneur of, In partlcular,

tennls tournaments.

T h l s involved seeking sponsors for

qulte ma~or events

and

Sport

Australla

has

made

arrangements on a considerable scale

In which it has

undertaken liabilities In relation to the

pro~ects

which

it has managed, particularly

ma~or

tennis tournaments.

It, of course,

incurred

conslderable

liabilities

doing this and it exerclsed itself in obtaining quite

important

sponsorships.

These

tournaments

were

conducted for the benefit of the players

and, of course,

for the benefit of Hujod Pty Limited and

Mr Covett, as

the chief,

any rate, shareholder in that company.

The company proposes to continue to trade in these

varlous avenues of activity and it lntends to expand the

business

future.

The conduct

the

xpanded

busmess, as explained to me, 1 s

to be essentlally the

same In manner and nature

as that at present carrled

In the name of "Sport Australia".

It is sald that this

expanslon may posslbly involve publicity, which will

cross the path of the applicant more Intensely and

perhaps to the disadvantage	of the applicant than In the
past .

4 .

The

applicant

IS an organlzatlon

wlth ob~ectives

involving the promotlon In Australia of sport, the

arranglng of sponsorshlps for large sporting events,

such as

the Australla Games of early 1985. It decided

in 1978 to conduct seminars	of	sporting personallties	, I
._
!,

and persons

who had a business Interest in sport.

declded to use the name "Sport Australia" in connectlon

wlth what were called

forum and also to Institute

awards to be known

as "Sport Australia Awards", which

would

awarded

annually

and

glven

considerable

publicity through Channel

It conducted

seminars, and forums, and luncheons, and

these events were on qulte

a large scale and Involved

the attentlon and interest of people who, commercially

and in the sportlng world, could be regarded as the

leaders

Australia.

Accordingly,

the

name

"Sport

Australia" in relation to sport must have become widely

known

and

connected

wlth

the

applicant

the

Confederatlon

of Australmn Sport. The name

"Sport

Australla" used In all these activltles of the applicant

- was used, not In the ordinary sense of a commercial

Instrument or tool. It was used as a tltle for pro~ects which it undertook. In 1983, however, the Confederation

was mlnded to use the name for stralghtout

commercial

purposes. It obtalned the advice

advertising and

marketmg experts

and, as a result, it entered upon an

I .!

intense campalgn called the "Sport Australia" campaign.

It	spent very large sums In obtalning advice and In

launchlng

the

operatlons

connectlon

with

this

pro ~ect

Its aim is to harness banks and other financially well set-up companles in Australla to sponsorships of sport.

I ,

In additlon It has

entered upon a programme

In whlch it

mtends

to licence varlous people to use the words

"Sport Australla" and to explolt generally

the

name

"Sport Australla" in relation to the selling of various

articles such

ties, logos and badges and the like

whlch are commonly used in sportlng promotion. Thls is

to be done

to earn money for the Confederation. In June

1984,

the

applicant

learned

that

the

name

"Sport

Australla" had been registered as a buslness name In all

the States of Australia.

It 1s said that the applicant

did not reallze that the respondent was operating under

the name "Sport Australia" until March 1985.

About

hat

ime,

Lovett

ascertained

that

appllcant was	entermg upon this project of licensing
and was about	to license other people to use the name

"Sport	Australia"	for	commercial	purposes.	He	took	1 ,.
.,

ob~ectlon

to thls and there was correspondence. The

applicant claimed the right to exploit the name In the

I . '

way descrlbed. Mr. Lovett demurred.

The

two parties

were In dispute.

Mr. Lovett claimed that

he had a

proprletary

interest

this

name, which

was

lnconslstent with the use

of it by the Confederation

for

6 .

these

commerclal

purposes.

Whether

was

right

that, remalns to be seen.

The Confederation, however,

took the view that it had built up goodwlll in relation

to the name and was entitled to exploit

unlimited extent commercially.

1.'

The general method

of the respondent's trading has not

been by

public advertising.

It has apparently been a

I .

more direct approach to selected persons

with reference

to specific

pro~ects. There is one avenue in relation

to the activities of the respondent and of the applicant

where their activities may come together, perhaps clash,

and that is in relation to the obtaining of sponsors.

Up to date the respondent has sought sponsors apparently	i
only tor those tennis tournaments whereas the applicant	I'
L .I

has sought sponsors for

all kinds of sport and all kinds

of large sporting events which it promotes.

Apparently, because of the different way

which the

two organizations carry on their business, one in

blaze of publicity and the other quietly by more

less

personal contact, there is no evidence that up-to-date

there has been

any confusion on the part

of persons who

have had occasion to deal with

contemplate dealing

wlth

the

respondent

between

Its

business

and

the

business of the applicant. There is no evldence that,

notwlthstanding the large publicity by the Confederation

using the words "Sport Australia" and the degree to

which those words have been used

by the respondent, have

' /

caused anybody to regard the respondent's business as

connected

any

way

wlth

the

busmess of the

Confederation or with the business of whatever the

entity mlght have been, which was conducting events

under the title "Sport Australia".

course,

conducting

its

events,

although

the

appllcant has used the name "Sport Australia", it has

used

substantially in a way In which it

1 s always

clear that those words are used, not by

entity

trading as "Sport Australia" but by the Confederation

using those words as a title

f o r

various activities.

This was clear from the video displayed to me,

with

reference

important

event,

and

from

such

literature as has been put before me in the exhibits in

this case.

It does not seem likely that

a person, doing business

with the respondent under the name "Sport Australia" has

believed or will

believe

that

entity

the

Confederation or is connected with it. There IS, of course, a body of people in Australia who are aware of

the

actlvltles

carried

the

name

"Sport

Australla

Award", the forum of the Confederation, the

semlnars of the Confederation, and such persons may or

.. .

may not know that such actlvlties are the activities	of
the Confederatlon.
It is obviously possible that such persons could, in

contact wlth the respondent, wonder If it was the body

which conducted the

award and the forum. Some might

even draw the

conclusion that the respondent was the

I .

body which ran the awards, etcetera. But there is

evldence

that

1 s

so,

and

the

private

t '

profit-orlented

nature

the

respondent's

buslness

I ,'

would tend to distinguish

from the broad public

ideallstic style of the applicant.

At any rate, Mr. Lovett said that no case or any

confusion had ever come to hls notiflcation, and the

appllcant calls no evidence that it has discovered any	c-
-.
such case. My general impression is that there has been

no such confusion. In evidence, the secretary

of the

I ,

appllcant, Mr.

Daly, conceded quite frankly that up to

date - I think the words were

- there had been

trouble from the activities of the respondent. And indeed, it is clear that the two businesses went along

quite comfortably untll In March

1985, Mr Lovett saw fit

to object to the expanslon of	the activities of the
appllcant.

Of course, wlth

the expansion of the Confederation into

straight

out

commerclal

activlties

and

the

licensing of peodle to use these words, it is possible that the risk of confusion in the future wlll increase,

but

that

course

wlll

the

maln

from

the

expanslon ot- the appllcant's area of actlvlties at a time when the respondent's business is well-established

and appears to be quite a considerable business, at

tlme when the respondent's business	1s	"causing no
trouble" to the applicant.

This situation which has arlsen, has arlsen because Mr Lovett says that he thought of the name, regarded the

Dunlop organlzation

as havlng some entitlements in the

name which would exclude other people, and that when he

acquired from Dunlop such entitlements as they had, and

he regarded It as periectly proper to commence buslness

in 1982 under the name "Sport Australia Pty Limited".

Presumably, he knew at that stage of the actxvities of the Confederation - he must have known - and the fact that it had its Sport Australia Awards and carried out

semlnars and the like. It seems clear that Dunlop had

never Intended to glve away its rights, whatever they

were,

In connection with the words "Sport Australia".

Indeed when the Confederation flrst began to use the

words, it

knew that Dunlop did not intend to part

wlth

its fundamental entitlements

In relatlon to those words.

This was quite consistent wlth Dunlop's acqulescing wlth

the activities of this beneficial organlzatlon, the

Confederatlon, and allowing It to use the words

connection wlth the Australia Sport Awards and seminars

and other affairs of that character which were carrled

i ,:

on by the Confederatlon.

that the Confederation

started life really

- not started life, but

at that

stage, in connectlon wlth the use

of the words “Sport

Australia”, was really using those words in a nationally beneficla1 way, for the general beneflt of sport, and

their use was probably good for everybody connected with

sport, whether in the playing of games or the selling of

things I n and about the business of sport.

And so

the Confederation‘s Interest in and the use of

this name

has increased.

It no doubt has done much to

publicize these words

and, as far as

I can see, that

would have done good to

anybody trading or wantlng to

trade under the words “Sport Australia“. But

at this

stage

the

Confederation

fears

that

the

respondent,

carrylng on busmess

in the name “Sport

Australia“, may

extend its operatlons and its publlcity to

an extent

that persons wlth whom the applicant desires to deal in

the way of obtalning sponsorship may think that it has

something to

do with the confederation itself or, In

more general terms, the entity, whatever it

is, whlch

conducts the Sport Australia Awards, seminars and the

like.

it has

sought In this motion, which in the first

place was to restrain the respondent from

us g the name

between the tlme

the motlon and the brlnging on of

the matter for trial. If

I believe Mr. Lovett, that he

intends to carry on In the future - not forever perhaps

- but certainly for a period which would extend beyond

. the time when this trial is expected to come

on for

11.

hearing, that he intends to carry on in the same way as

previously, which to my mind involves that he is telling

me that he does not intend to change hls methods and do

what might colloqulally be called "go publlc", it seems

to me that the sltuation in the next three months or

thereabouts, o r

however long it takes to get to trlal,

is not gomg to change.

There has been, as far as

I can see, no confusion up to

date; and I would anticipate that during the next few months the situation will remain the same. It is to be

noted that

Mr. Lovett was not seriously challenged In

cross-examination on the issue as to the degree of

publlcity that he was going to indulge in in the next

few months.

I took it qulte clearly that what was golng

. .

to happen in the next

few

months, perhaps on

a wlder

scale, was nevertheless golng to happen in the same way

as it has been happening in the last two or three years,

and that the same, what one might call low key use of

the "Sport Australia" name In the sporting world, was

going to persist.

In these circumstances,	it seems to me that although	I '
l ..

there may well be serlous questions to decide	as to the
ownershlp and entrtlement to use this name and the

extent to which each of these parties

is entltled to use

thls name, which w ~ l l

have to be declded at the trial,

at this stage what

I am really engaged In is to consider

whether, on a balance of convenience, the in~unctlon

12.

should be granted as sought, or even in the modest terms

which were suggested to me this morning on behalf of the

applicant.

I think

I mentioned that

It seems that Mr Lovett must

have

known

1982 the general

actlvities of the

Confederation, and in

1982 and 1983

the Confederation

I .

knew that although Its

idealistic activlties It was

carrying on were satisfactory to Dunlop, it also knew that Dunlop was not giving anything away from a legal

point of view.

The applicant considered it was entitled

to use the name and

so did Mr Lovett. The Confederation

was right in

thmking that Dunlop would not object to

the use of the name in the way In which

It was used, and

of course in that it was quite correct.

It was used for

I.,

the achievement of the ob~ectives	of the Confederation,	..
I 5:

whlch

were of the widest character, but intrinsically

directed to the general betterment

of sport.

It is to be noted that the applicant is at present not

in	a position to actually implement Its campaign to

r .

enter upon Its proposed lntensificatlon of the ,purely

commerclal slde of Its buslness, and It is unable to say

when it

will do s o .

If the respondent were restrained

from usmq the name, his established buslness

- which 1s

well-establlshed and quite considerable - would obviously suffer very severe lnterference and possibly Irreparable harm.

13.

Having regard to the past hlstories of the conduct

the two businesses and the probable method and scope of

their conduct In the near future, I am qulte satisfied

that the overwhelmmg balance of convenience, balancing

the inlury to the respondent of a restrainlng order and

the possible injury to the interests of the applicant in

refraining

from

i posing

that

restraint,

1 s

overwhelmlngly in favour

of refusing to restrain the

respondent In the manner suggested.

I have

course

considered

whether

would

appropriate

refraln

from

asking

for

the

wider

injunction sought and to restrain the respondent from

advertlsing with respect to the name of "Australla

Sport" in newspapers, television or radio.

I do not

think I should do

so.

It was clear to

me in

the

evidence glven by Mr Lovett that he does not intend to

expand hls buslness In that way. In his evldence	he	'
L .

certalnly created that lmpresslon,

I thlnk told me in

plan

terms that In carrying on hls buslness in the

future, in the lmmediate future at any rate, which

would think means till well after this trlal takes place

to come on, In three months, or thereabouts, he does not

intend to

change the nature of hls business. He would

be changlng the nature of hls business

he suddenly

developed

an expanslve public campalgn featuring the

name, "Sport Australia", as the tltle under which	he
carried out hls operatlons.

’

I am far from saylng that

if he were to do that

he would

, -.

wrong

from

the point of view

of the law,

but

certainly it would be

a matter to be considered in

relatlon

the

granting

interlocutory

rellef.

Having regard to the serlous situatlon which exists

between

the

buslness

the

Confederatlon

and

the

business of Mr Lovett which must be clarlfied and at

least the limlts defined at the trial,

do not think

that it would be proper for the court to Issue

in~unction to Mr Lovett not to

do something which

gather he does not intend to do.

To have an lnjunction agalnst one is a serlous matter.

It submits one to serious consequences in the event of

breach and I do not think that it ought to be imposed on

anybody who does not threaten to commit

a breach of the

law or in clrcumstances such as this, to do something

which would be incompatible with the maintenance of the

sltuation between the two parties between now and the

trial. Accordingly,

I dlsmiss the motion.

As to the matter of costs, 1:

have already mentioned to

counsel that

it seems to me that the Confederation

should pay the costs

of this motion.

I do not think

there was a probabllity of an inlunction being granted unless some real attack was made on Mr Lovett that he

I .

was mtending actually to change the whole nature of his	; i
?.

business.

No such case has been put to me. It

is said

he might. Of course he might. If he does

it mlght have

15 *

its own

consequences, but no such case has been put to

me and this case

1 s

not really about what is going to

happen In the next few months. This

a case of what

...

1 s gomg to happen

in this very difficult situation

whlch has arlsen through the two partles both carrying on their buslnesses, both doing so lawfully during the

last few years.

Accordmgly I think this motlon

1 s

misconceived and the respondent should have his costs

and I have given directions for

the

trial to be placed

in the next callover to seek a date for trlal.

I certify that this and the

fourteen

( 14

pages are a true copy of

the ~udgment of

the

Honourable

Mr. Justice

Smithers.

Date: 17 September 1985

Associate

[1985] FCA 483

22 Aug 1985