The Royal Automobile Club of Queensland Ltd v Dawe, William Frederick

[1998] FCA 845

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 2  of   1998

BETWEEN:

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
APPLICANT

AND:

AND:

WILLIAM FREDERICK DAWE
FIRST RESPONDENT

JOYCE ELIZABETH DAWE
SECOND RESPONDENT

WILLIAM FREDERICK DAWE
FIRST CROSS-CLAIMANT

JOYCE ELIZABETH DAWE
SECOND CROSS-CLAIMANT

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
CROSS-RESPONDENT

JUDGE:

COOPER J

DATE OF ORDER:

29 MAY 1998

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

1. Pending the trial of these proceedings or further order of the court each of the first and second respondents be restrained:

(a)from infringing the applicant’s registered trade marks number A446634 and number A502701 a division of number 446634;

(b)from engaging in conduct that is misleading and deceptive or likely to mislead or deceive in contravention of s 52 of the Trade Practices Act 1974 (Cth); and/or s 38 of the Fair Trading Act 1989 (Qld); and/or s 42 of the Fair Trading Act 1987 (NSW);

(c)from representing that he or she has a sponsorship, approval or affiliation which he or she does not have, in contravention of s 53(d) of the Trade Practices Act 1974 (Cth); and/or s 40(f) of the Fair Trading Act 1989 (Qld); and/or s 44(f) of the Fair Trading Act 1987 (NSW);

(d)from passing off any towing service as an authorised agency of the applicant;

in each case by using or causing to be used, in any way, and whether spoken of, written or depicted, the acronym or initials “RACQ”, alone or in combination with any other words, numerals or symbols, in relation to any business with which either of the respondents is associated.

1. Until the trial of these proceedings or further order of the court, each of the respondents themselves immediately answer, and each of the respondents cause any servant or agent of his or hers or theirs immediately to answer, any call taken by him or her on any of the telephone services numbers (07)  5524 5036, 0412 753636, 018 753636 in these terms:

“This business is not connected in any way with the Royal Automobile Club of Queensland and does not and cannot provide any services on its behalf.  May I help you.”

1. Until the trial of these proceedings or further order of the court, the respondents within seven days cause a telephone message to be placed upon the telephone service number [phone], and keep connected to that service, a telephone message so that any person calling that number will first hear these words :-

“This business is not connected in any way with the Royal Automobile Club of Queensland and does not and cannot provide any services on its behalf.  If you still wish to deal with us please hold.”

1. The first and second respondents, subject to any proper objection being taken, file and serve further and better particulars as requested in Clayton Utz’ letter of 19 March 1998 with respect to paragraphs 13(d), (e), (f) and (g) of the defence and cross-claim by 4.00 pm on 12 June 1998, and in default of that paragraphs 13(d), (e), (f) and (g) of the defence and counter-claim be struck from the defence and that those claims in relief in consequence thereof be struck out.

1. The applicant file and serve any notice of motion and supporting material seeking relief under O 20 r 1 by 4.00 pm Wednesday 3 June 1998, such notice of motion to be listed for hearing at 10.15 am on 26 June 1998.

1. The respondents file and serve any material on the question of costs of the application for interlocutory relief by 4.00 pm on 12 June 1998, and the question of costs of and incidental to the application for interlocutory relief and in respect of the request for particulars be reserved for argument at 10.15 am on 26 June 1998.

1. The application be adjourned for further directions to 10.15 am on 26 June 1998.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 2 of 1998

BETWEEN:

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
APPLICANT

AND:

AND:

WILLIAM FREDERICK DAWE
FIRST RESPONDENT

JOYCE ELIZABETH DAWE
SECOND RESPONDENT

WILLIAM FREDERICK DAWE
FIRST CROSS-CLAIMANT

JOYCE ELIZABETH DAWE
SECOND CROSS-CLAIMANT

THE ROYAL AUTOMOBILE CLUB OF QUEENSLAND LIMITED
CROSS-RESPONDENT

JUDGE:	COOPER J
DATE:	29 MAY 1998
PLACE:	BRISBANE

EXTEMPORE REASONS FOR JUDGMENT

This is an application by the Royal Automobile Club of Queensland Limited for interlocutory relief against the respondents in respect of the use by the respondents of the acronym or letters “RACQ” in relation to the provision of tow-truck services in the border region between south-eastern Queensland and New South Wales and in the area of northern New South Wales.

The material satisfies me that the use by the respondents of the names “RACQ 24 Hour Towing Service”, “RACQ Smash Repairs” and “RACQ Breakdown Services” is an attempt to appropriate, for their benefit, the goodwill in the name of the applicant in the provision of like services through authorised agents on its behalf.  Additionally, the material satisfies me that there is a serious question to be tried as to whether or not the use of the logo “RACQ” by the respondents, involves a breach of the applicant’s entitlement to registered trademarks number A446634 and A502701 a division of number A446634.

This matter has proceeded to the stage where an application and statement of claim have been filed and served and a defence has been filed.  The defence reveals that the respondents will seek to justify their conduct by asserting that registration of a business name or business names in New South Wales in the terms set out above gives them an entitlement to make the holding out which they do.  Such a view, in my opinion, is inconsistent to the decision of the High Court of Australia in BM Auto Sales Pty Ltd v Budget Rent-a-Car Systems (1976) 12 ALR 363.

Next it is said by the respondents, that the applicant cannot trade beyond the borders of Queensland and that to engage in such activity would be ultra vires.  There is, in my view, no substance in this ground of defence, and it is inconsistent with the provisions of the memorandum and articles of the applicant and the provisions of the Corporations Law. 

The respondents also allege that the applicant has engaged in anti-competitive conduct in breach of s 45 of the Trade Practices Act 1974 (Cth). Whether or not the applicant has engaged in anti-competitive conduct, would not, in my view, justify passing off or infringement of trademarks by the respondents.

It seems, therefore, that looking at the grounds taken by the respondents, there is a real possibility that they will fail and fail substantially.  Because the case against them is, in my view, on the material strong, I am minded to grant interlocutory relief which includes taking positive steps on their part to disassociate their business from having any connection with, approval of or endorsement of the applicant.  I note that such a course was taken by Lehane J in Snow Wave Proprietary Limited v Wanderer Ski Holidays and Travels Pty Ltd (1996) ATPR 41-502.

It is necessary in this case, as it was in that case, to require some positive acts of disassociation because in this case there are advertisements in telephone and trade directories asserting the association with the applicant which directories are in general circulation and which have an ongoing capacity to mislead or deceive persons who have recourse to them, to believe that the respondents have an approval from or an association with the applicant.  Accordingly, when I consider the balance of convenience it is in my view, in favour of making the interlocutory orders sought.

I make interlocutory orders in terms of paragraph 1 of the interlocutory claim in the application.  I make the further interlocutory orders in terms of paragraphs 1 and 2 of the draft initialled by me and placed with the papers, with the following additions, namely that paragraph 1 commences, “Pending the trial of these proceedings or further order of the court, each of the first and second respondents” etcetera.

I certify that this and the preceding two (2) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Cooper

Associate:

Dated:            29 May 1998

Counsel for the Applicant:	R G Bain QC
Solicitor for the Applicant:	Clayton Utz
Solicitor for the Respondents:	M Smith Primrose Couper Rudkin
Date of Hearing:	29 May 1998
Date of Judgment:	29 May 1998