Visa International Service Association v Beiser Corporation Pty Ltd

[1983] FCA 214

Re: VISA INTERNATIONAL SERVICE ASSOCIATION
And: BEISER CORPORATION PTY. LIMITED; MARK BEISER; JACK BEISER
No. G167 of 1983
Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Beaumont J.

CATCHWORDS

Trade Practices - Application for suspension of operation of interim injunction restraining respondents from using the word "Visa" in connection with business name - Application to use word "Visa" with disclaimer of association - Consideration of effectiveness of disclaimer - Consideration of balance of convenience - Mitigation of interim loss of goodwill.

Trade Practices Act, s.52

Travel Agents Act, 1973 (N.S.W.)

HEARING

SYDNEY

#DATE 16:8:1983

ORDER

1. I grant leave to the first respondent to use the name "World Visa Travel Service" in connection with its registration as a travel agent under the provisions of the Travel Agents Act, 1973 (N.S.W.) or under any similar legislation and in connection with its accreditation with International Air Transport Association ("I.A.T.A."). Leave is otherwise refused.

2. I suspend the operation of the injunction (being Order 1 made on 25 July, 1983) up to and including 22 August, 1983.

3. I order that the costs of this application be the applicant's costs in the proceedings.

4. I fix 16 August, 1983 as the date within twenty one days after which any notice of appeal shall be filed and served for the purposes of Order 52 Rule 15(1)(a)(iii).

JUDGE1

In the principal proceedings in this matter on 25 July, 1983, I granted an interim injunction, pending a final hearing, restraining the respondents from using the word "Visa" in or in connection with their business name without the consent of the applicant or the leave of the Court. The operation of the injunction was suspended until 12 August, 1983. I reserved to any party general liberty to apply and I further reserved to the respondents specific liberty to apply in respect of the further suspension of the operation of the injunction. Pursuant to the leave reserved to them, the respondents have filed a notice of motion seeking the leave of the Court to use the name "World Visa Travel Service" provided that the words "not associated with Visa International Service Association" appear immediately beneath the said name wherever that name may be used by the respondents.

The present application has, to some degree, involved an attempt by the respondents to agitate again matters determined adversely to them upon the application for interlocutory relief. In particular, the respondents again submitted that the appropriate interim relief, if any, in the present case would be the grant of a limited injunction which restrained the use of the word "Visa" except where it clearly distinguished its business from that of the applicant.

In my earlier judgment, I referred to the difficulties of correcting first impressions in this context (at p.13). I had in mind the evidence proferred at the time of proposed additions to the letterhead of the first respondent. That evidence failed to convince me then, as it does now, that members of the public would pick up the intended significance of the disclaimer. In a case such as the present where the applicant has established a strong case in respect of the word in question, it is difficult in the extreme to formulate a disclaimer which will be effective so as to dispel in the minds of consumers or potential consumers an association with the business of the applicant. Although the respondents have tendered further evidence of suggested disclaimers, I doubt whether it is possible to devise a formula of disclaimer which would sufficiently detract from the overriding prominence which the word "Visa" has in the minds of consumers by reason of its well-established association with the business of the applicant. The position is made more difficult by the circumstance that, to a significant degree, there are common fields of activities between the parties: where the activities of the parties do not overlap, it is no doubt feasible to devise a disclaimer which effectively distinguishes the two businesses. In the end, the question is one of impression but I am far from satisfied that any of the steps proposed by the respondents to be taken to distinguish the two businesses would do so effectively. In any event, the problems raised by such an approach in terms of supervision by the Court of the various steps proposed to be taken are by no means insignificant.

On the balance of convenience, a number of further matters have emerged. First, the Union Steamship Company Limited the seller of the travel business to the first respondent, has indicated that, pending the outcome of these proceedings, the respondents may continue the use of the name "Union Travel". This circumstance should at least mitigate any interim loss of goodwill suffered by the respondents by reason of the interlocutory restraint.

At the hearing of the application for interlocutory relief, Mr. Beiser gave evidence that the first respondent had contractually bound itself to the Union Steamship Company Limited not to use the name "Union Travel" notwithstanding its purchase of the goodwill of that business. In the present application, evidence was given that, before the interlocutory hearing, Union Steamship Company Limited, contrary to my previous impression, had agreed to the use of the name "Union Travel" by the first respondent pending the resolution of its dispute with the applicant. Since the goodwill of the "Union Travel" business was only recently purchased by the first respondent, presumably there are advantages in its continuing to use that name. Indeed, again contrary to my previous impression, the first respondent has continued to use the name "Union Travel" at its branch offices at Blacktown and Penrith, N.S.W. and in Brisbane, Queensland. In Brisbane, the business name "Trans-Tours Travel Shop" is also used. The Carlingford, N.S.W. branch carries on business under the name of "Carlingford International Travel".

The present position then is as follows. The applicant presents a strong prima facie case. The respondents proffer a disclaimer. There are practical difficulties in ensuring that the disclaimer will be effective so far as consumers or potential consumers are concerned. On the balance of convenience the respondents will suffer little, if any, prejudice by reason of the interim restraint, since it is able to continue to use the name of the business only recently acquired by it. It follows, in my opinion, that the present application should be refused.

As a separate matter, the first respondent has indicated prejudice which it would suffer in terms of its registration under its present business name for statutory purposes such as the Travel Agents Act, 1973 (N.S.W.) and for commercial purposes such as accreditation with the International Air Transport Association ("I.A.T.A."). Prima facie at least, consumers would not be affected if, for such purposes, the first respondent continued to use its present business name. The applicant does not object to use of the name for these purposes which are substantially of an internal kind.

I therefore propose to make the following orders on this application:

1. I grant leave to the first respondent to use the name "World Visa Travel Service" in connection with its registration as a travel agent under the provisions of the Travel Agents Act, 1973 (N.S.W.) or under any similar legislation and in connection with its accreditation with I.A.T.A. Leave is otherwise refused.

2. I suspend the operation of the injunction (being Order 1 made on 25 July, 1983) up to and including 22 August, 1983.

3. I order that the costs of this application be the applicant's costs in the proceedings.

4. I fix 16 August, 1983 as the date within twenty one days after which any notice of appeal shall be filed and served for the purposes of Order 52 Rule 15(1)(a)(iii).