Workwear Industries Pty Ltd v Pacific Brands Workwear Group Pty Ltd
[2013] FCA 1042
•15 October 2013
FEDERAL COURT OF AUSTRALIA
Workwear Industries Pty Ltd v Pacific Brands Workwear Group Pty Ltd [2013] FCA 1042
Citation: Workwear Industries Pty Ltd v Pacific Brands Workwear Group Pty Ltd [2013] FCA 1042 Parties: WORKWEAR INDUSTRIES PTY LTD (ACN 061 071 065) v PACIFIC BRANDS WORKWEAR GROUP PTY LTD (ACN 004 055 387) File number(s): WAD 363 of 2012 Judge(s): SIOPIS J Date of judgment: 15 October 2013 Catchwords: TRADE PRACTICES – misleading or deceptive conduct – the applicant and the respondent each manufacture and distribute workwear products – the applicant carried on business under the name “Workwear Industries Group” and adopted a logo which contained those words – the respondent began using the name “The Workwear Group” and adopted a logo which contained those words – whether the word “workwear” is a descriptive word – evidence of confusion among applicant’s customers – whether confusion was commercially significant – whether the respondent’s conduct in deploying its logo was misleading or deceptive or likely to mislead or deceive. Legislation: Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)) ss 18, 29
Trade Practices Act 1974 (Cth) s 52Cases cited: ConAgra Inc v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302
Campomar v Nike International (2000) 202 CLR 45
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191
Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177
SAPAustralia Pty Ltd v Sapient (Australia) Pty Ltd (1999) 169 ALR 1
Knight v Beyond Properties Pty Ltd (2007) 242 ALR 586
Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216
BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363
REA Group Limited v Real Estate One Limited (2013) 102 IPR 1
connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348Date of hearing: 19-20 June 2013 Place: Perth Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 181 Counsel for the Applicant: Mr P McGowan Solicitor for the Applicant: Karp Steedman Ross-Adjie Lawyers Counsel for the Respondent: Mr E Heerey Solicitor for the Respondent: Wrays Lawyers Pty Ltd
IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
WAD 363 of 2012
BETWEEN: WORKWEAR INDUSTRIES PTY LTD (ACN 061 071 065)
ApplicantAND: PACIFIC BRANDS WORKWEAR GROUP PTY LTD (ACN 004 055 387)
RespondentJUDGE:
SIOPIS J
DATE OF ORDER:
15 october 2013
WHERE MADE:
PERTH
THE COURT ORDERS THAT:
1.The applicant’s application of 5 December 2012 is dismissed.
2.The applicant is to pay the respondent’s costs, unless within 7 days the respondent files and serves submissions in support of an alternative costs order.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
WAD 363 of 2012
BETWEEN: WORKWEAR INDUSTRIES PTY LTD (ACN 061 071 065)
ApplicantAND: PACIFIC BRANDS WORKWEAR GROUP PTY LTD (ACN 004 055 387)
RespondentJUDGE:
SIOPIS J
DATE:
15 october 2013
PLACE:
PERTH
REASONS FOR JUDGMENT
The applicant carries on business under the name Workwear Industries Group as a manufacturer and distributor of protective workwear and footwear and personal protective equipment. The products which the applicant manufactures and sells have their own distinctive brand names. Among those products are ranges of products under the brand names, “Riggers Workwear” and “Progard”.
The respondent is one of a group of companies associated with Pacific Brands Limited (Pacific Brands). This group of companies and its predecessors have manufactured and sold workwear and footwear in Australia for more than 80 years. The products are, and have been for many years, sold under distinctive brands. These brands include “King Gee”, “Hard Yakka”, “Stubbies”, “Stylecorp”, “NNT Uniforms”. The respondent is a competitor of the applicant.
In 2010, Pacific Brands underwent a formal restructure which consolidated the businesses selling each of the five workwear brands referred to in the preceding paragraph, into one group, called “The Workwear Group”. By the consolidation, the five workwear businesses were transformed from individual operating units into a single management structure and operating unit carried on by the respondent. As part of the restructure, in May 2011, the respondent changed its name from Yakka (Aust) Pty Ltd to Pacific Brands Workwear Group Pty Ltd.
Further, as part of the restructure, in 2012, the respondent registered the business name The Workwear Group and also commenced using the following logo in the conduct of its business:
However, by 2012, the applicant had adopted the name Workwear Industries Group and was using the following logo in the conduct of its business:
In October 2012, some months after the respondent had commenced using its logo, the applicant wrote to the respondent alleging that by reason of the similarities between the two logos, the respondent was, by adopting and by continuing to use its logo, engaging in conduct which contravened s 18 of the Australian Consumer Law (Sch 2 to the Competition and Consumer Act 2010 (Cth)). The applicant sought an undertaking from the respondent to cease to use the logo.
The respondent refused to provide the undertaking and on 5 December 2012 the applicant commenced this proceeding.
BACKGROUND
In 1993, the applicant commenced business in Western Australia carrying on business manufacturing and distributing workwear clothing. There was some uncertainty about when the applicant started using the trading names, “Workwear Industries” and “Workwear Industries Group”. It is accepted, however, that at one time the applicant carried on business under the trading name, “Bilby Workwear”. I will deal with this issue further in due course.
There was also some uncertainty about when the applicant first started using, in connection with its business, its current logo displayed at [5] above. However, it is apparent that, by 2001, the applicant had developed, and was using in relation to its business, a different logo, using only the words “Workwear Industries”. In the logo, the words were preceded by the capital letters “WI”.
The applicant’s business has grown significantly since 1993. The applicant’s annual turnover was $4,882,904 for the financial year 2010, $9,349,328 for the financial year 2011, and its turnover is estimated to be more than $10 million for the financial year 2012. The applicant’s business has over 500 customers of which approximately 70% are “direct to industry” customers and approximately 30% are wholesale customers. The applicant manufactures 85% of its own product range and sources the rest from local suppliers. The respondent is one of these suppliers.
As mentioned above, in 2010, there was a restructure of the operating businesses within Pacific Brands which resulted in the five workwear brands businesses being operated as one business unit. This unit was referred to internally as the Workwear Group.
The respondent and its related companies and predecessors have distributed or currently distribute workwear and protective clothing under 13 registered trademarks that contain the name, “workwear”. Also, the respondent distributes workwear and protective clothing in Australia under 12 different business names which use the word “workwear” in its registered business name. There are 73 persons or companies which distribute workwear and protective clothing in Australia which have a name or a registered trademark which includes the word “workwear”. There are 226 registered business names in Australia which include the word “workwear”. There are 52 company names registered in Australia which include the word “workwear”. These facts were the subject of a statement of agreed facts filed by the parties on 19 June 2013.
In April 2011, the respondent engaged Bison GWD, a graphic design and production studio, to develop marketing materials to communicate the existence of its new integrated and unified business.
As mentioned, in May 2011, the respondent, as part of the restructure, changed its name to Pacific Brands Workwear Group Pty Ltd.
On 24 June 2011, the applicant’s solicitors sent a letter to the respondent alleging that consumer confusion had occurred due to the respondent’s use of the name “Pacific Brands Workwear Group” and inviting the respondent to cease using the words “Workwear Group” in its trading name.
On 11 July 2011, the respondent’s in-house counsel, Ms Nicola Adams, sent a letter to the applicant’s solicitors confirming that Pacific Brands had consolidated its group of workwear businesses under the name Pacific Brands Workwear Group Pty Ltd and noted that the words “workwear” and “group” are descriptive in nature.
On 18 August 2011, the applicant’s solicitors sent a further letter to the respondent demanding that the respondent cease using the word “Workwear” in its business or trading name.
In late 2011, following a further exchange of correspondence between the parties’ legal representatives, the parties agreed to send their respective customer bases a pro forma explanatory letter with agreed wording which alerted the customers to the common usage of the words “Workwear” and “Group”. This agreement was reached with a view to resolving the dispute as to the respondent’s use of the word “Workwear” in its name.
The respondent sent the explanatory letter referred to in [18] above, to its customers, but the applicant did not send an explanatory letter to its customers.
In February 2012, following a lengthy period of consultation between Bison GWD and the respondent, the respondent selected its current logo (set out at [4] above) and the name “The Workwear Group” for its workwear business group. Mr David Chin, who was at that time a senior employee of the respondent, was engaged in the consultation and selection process.
In April 2012, the respondent started using the new logo internally and, in May 2012, the respondent commenced using the new logo in its dealings with its customers. The new logo is on the invoices that are used by the respondent in relation to the supply of its workwear clothing. The logo also appears on its website and on other documents used by the respondent in the course of its business. This includes on its letterhead and as the sign-off insignia on emails.
In April 2012, the respondent registered the business name, “The Workwear Group”.
On 24 April 2012, the existence of the applicant’s logo came to Mr Chin’s attention via an email from Ms Kate Aquilina, the respondent’s Queensland wholesale state sales manager, to Ms Anna Reid, the respondent’s marketing manager. Ms Aquilina referred to the similarities between the two logos and questioned whether the applicant’s logo was registered. Ms Reid forwarded this email to the respondent’s in-house counsel. The respondent’s in‑house counsel responded to this email advising that the applicant’s logo was not registered and that the applicant was incorrectly using the ® symbol adjacent to its logo. Copies of these emails were sent to Mr Chin.
As a result of this correspondence and earlier legal advice clearing the use of the logo and the name “The Workwear Group”, Mr Chin did not give any further consideration to the applicant or its logo.
Paragraphs [26]-[34] below reflect a number of facts which were the subject of the statement of agreed facts.
On 17 July 2012, the respondent issued a letter to its customers advising of changes in its business structure to reflect the formation of “The Workwear Group”, and of its new account and banking details (the respondent’s customer advice letter). This letter contained the respondent’s logo in its letterhead.
On 6 September 2012, the applicant obtained a copy of the respondent’s customer advice letter from Kaefer Integrated Services Pty Ltd (who was a customer of each of the applicant and the respondent) when an accounts clerk at Kaefer inquired of an employee of the applicant whether the applicant had changed its business and banking details upon receiving the respondent’s customer advice letter.
On 8 September 2012, the applicant received, by facsimile, a remittance advice from one of its customers, Baker & Farrow Pty Ltd, but there was no accompanying payment in respect of the remittance advice. In fact, Baker & Farrow Pty Ltd had made the payment to the respondent in accordance with the new banking details outlined in the respondent’s customer advice letter, instead of making the payment to the applicant.
On or about 19 September 2012, the applicant received a cheque for the sum of $9,836.93 from Jamile Pty Ltd trading as “Daves Work N Safety Gear”, which was accompanied by a remittance advice which had been detached from an invoice sent by the respondent.
In late September 2012, Ms Melissa Lightfoot, an accounts receivable clerk of the applicant, made an inquiry of a customer of the applicant, Star Safety, as to an outstanding invoice. Ms Adele Parfitt of Star Safety responded, querying whether a credit had been applied to the outstanding invoice for boots that Star Safety had returned in July. After Ms Lightfoot responded to the effect that there were no credits owing on Star Safety’s account, Ms Parfitt advised Ms Lightfoot that she had “mixed you [the applicant] up with another company”.
On 25 September 2012, Ms Wendy Chen of Mine Site Construction, a customer of the applicant, telephoned Ms Lightfoot, after receiving the respondent’s customer advice letter, querying whether the applicant had changed its banking details.
On or about 4 October 2012, ALSCO, a customer of the applicant, made a payment to the applicant which was intended for the respondent.
On 24 October 2012, an employee of Hymark Trading Pty Ltd, in Victoria, sent an email to Ms Trish Cauchi, an employee of the applicant, attaching a Hymark purchase order number 15870 dated 23 October 2012 for “King Gee” shorts and work boardies – products manufactured by the respondent.
On 16 November 2012, Mr Sean Connelly, an employee of the applicant, received an email from Mr Nathan Abela of BOC Australia Pty Ltd concerning “a supplier which keeps blowing out the date” for delivery of products. Whilst Mr Abela addressed his inquiry to the applicant, the relevant supplier was the respondent.
Mr Jeffrey Keiles, the managing director of the applicant, after learning of the incidents of confusion referred to above, instructed the applicant’s solicitors to write to the respondent requesting that it provide the applicant with a written undertaking to cease using its present logo and the word “Workwear” in its business name.
By a letter dated 8 October 2012 from its solicitors to the respondent’s in‑house counsel, the applicant complained about the respondent’s adoption of its new logo for its workwear division.
In that letter, the applicant stated that its logo and the respondent’s new logo both used similar colour ranges, emphasised the work “Workwear” and used the word “Group” placed in a similar position. Further, the letter said that the major emphasis in the respondent’s logo was on the word “Workwear”, with the reference to “A division of Pacific Brands” in comparatively very small print. The applicant went on to claim that it had established an Australia-wide reputation in the name “Workwear Industries Group” and also a secondary distinctiveness in the words which comprised that name. The letter also claimed that, by using its current logo the respondent was acting in contravention of s 18 and s 29 of the Australian Consumer Law and was passing itself and its goods off as being connected with the business and goods of the applicant. The applicant demanded that the respondent provide it with undertakings in writing, within 10 days, that it would cease its use of the present logo and agree not to use the word “Workwear” within a commercially reasonable time.
The respondent did not provide the undertaking demanded by the applicant.
There are more than 20 businesses which distribute workwear products in Australia which deploy the colour blue in their respective logos.
Insofar as [8]-[39] above reflect statements of fact, I make findings of fact to that effect.
THE COMMENCEMENT OF THE PROCEEDING
On 5 December 2012, the applicant commenced a proceeding in this Court by filing an originating application, a fast track statement, and the affidavit of Mr Keiles sworn on 5 December 2012.
In its originating application, the applicant claimed a declaration that the respondent’s use of its logo constituted misleading or deceptive conduct in contravention of s 18 and s 29 of the Australian Consumer Law and passing-off. The applicant also claimed an injunction restraining the respondent from using its logo in connection with its business. The applicant subsequently amended its originating application to withdraw the passing-off claim.
In the further amended fast track statement filed on 11 February 2013 (the fast track statement), the applicant identified the two issues as likely to arise at the hearing.
The first issue was whether, by the adoption and promotion of the name “The Workwear Group”, the respondent has engaged in conduct which was misleading or deceptive or likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law. The applicant abandoned this issue at trial.
The second issue was whether, by the adoption of a logo being markedly similar to the logo of the applicant, the respondent has engaged in conduct which was misleading or deceptive or likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law. I observe in passing that no mention was made of any issue likely to arise in respect of s 29 of the Australian Consumer Law. Nor was any case advanced by the applicant at trial based on a claim of a false representation by the respondent in contravention of s 29 of the Australian Consumer Law.
The applicant contended in its fast track statement that the applicant has acquired an Australia-wide reputation under the name “Workwear Industries Group”, and that in 2000 it developed a distinctive logo for Workwear Industries Group.
The applicant also contended at para 15 of its fast track statement that despite the demand that it cease to do so, the respondent continued to trade under the name “The Workwear Group”, and continued to use its logo “which has and will continue to cause confusion among the customers of the applicant”.
THE TRIAL
In his written opening submissions, counsel for the applicant contended that the respondent had adopted a logo which was so similar to that of the applicant’s that it had engaged in conduct which was misleading or deceptive or likely to mislead or deceive. This, said the applicant, took the matter beyond simply a case involving merely the use of descriptive words. The adoption and use of the logo had engendered confusion.
The applicant contended that the applicant’s and the respondent’s logos deployed similar colour ranges, both logos emphasised the word “Workwear”, both used the word “Group”, and, in the case of the respondent’s logo, the qualifying reference to “A division of Pacific Brands” was in comparatively very small print.
The applicant contended that it has a reputation in its logo “so strong that it distinguishes the applicant amongst its customers, business and products (work and protective clothing) exclusive of all others”.
THE APPLICANT’S WITNESSES
The applicant relied upon the affidavit evidence of Mr Jeffrey Keiles, Ms Keira McKinnon‑Elliot, Ms Melissa Lightfoot, Ms Grace Pu, Mr Michael Silver, Ms Jiada Bernardi, Mr Jason Golding, and Mr Benjamin Deacon.
Each of Ms McKinnon-Elliot, Ms Lightfoot, Ms Pu and Mr Silver was at the relevant time an employee of the applicant. No challenge was made to the credibility of their evidence and I accept their evidence. Likewise, no challenge was made to the credibility of the evidence of Ms Bernardi, Mr Golding and Mr Deacon and I accept their evidence. I deal with the weight to be placed on this evidence later in the judgment.
Mr Jeffrey Keiles
Mr Keiles read into evidence two affidavits dated 5 December 2012 and 29 May 2013 respectively. Mr Keiles was cross-examined. Mr Keiles deposed to the applicant’s origins and history. He also referred in his evidence to the incidents of confusion between the applicant’s and the respondent’s workwear businesses which had come to his attention via his employees. Mr Keiles’ evidence of the incidents of confusion which were reflected in the agreed facts was not contentious. However, there were aspects of Mr Keiles’ evidence which were contentious and which were challenged in cross‑examination. These aspects were:
(a)when the applicant first started using its logo in its current form, and
(b)when the applicant first started using the names “Workwear Industries”, and “Workwear Industries Group” respectively, to identify its business publicly.
During his cross-examination, Mr Keiles proved to be a truculent witness, who on occasions found it difficult to make concessions when concessions were plainly called for.
In his affidavit of 5 December 2012, Mr Keiles had deposed that:
Workwear has used, and continues to use, the Logo in its present form since 2000 in communications with its customers and suppliers, and for marketing and advertising purposes…
In cross-examination, Mr Keiles initially stood by this evidence. Counsel for the respondent then took Mr Keiles to the annexures to his affidavit upon which he relied for those statements. That evidence disclosed that the applicant’s catalogue which had been issued in 2007 used a different logo to the applicant’s current logo. The logo which was used in the 2007 catalogue included only the words “Workwear Industries” and did not use the word “Group”, and adjacent to those words was the symbol “WI” in a very different style to the “W” based symbol which is a part of the applicant’s current logo (referred to in [5] above).
Another of the documents Mr Keiles relied on for his evidence at [55] above was an email which contained the current logo as part of the sign-off insignia. Mr Keiles conceded in cross-examination that the email had only been sent in December 2012, shortly before Mr Keiles had sworn his affidavit of 5 December 2012.
There was, however, attached to Mr Keiles’ affidavit the cover and a page from a catalogue of products sold by the applicant (Issue 8), which appears to have been issued in or after 2010. This catalogue contained the logo in its current form.
Mr Keiles finally conceded that the logo in its current form had not been used since 2000. During cross-examination the following exchange occurred:
Alright. And the simple point I want to make to you – and you can make this easier for yourself – is that you have not actually been marketing this logo, in fact, since 2010, and certainly not before 2007. Do you accept that?---Yes.
Accordingly, I reject Mr Keiles’ affidavit evidence that the applicant has been using the logo in its current form since 2000. I find on the basis of the documentary material, that on the balance of probabilities, the applicant has used the logo in its current form since no earlier than 2010.
The question as to when the applicant first used the name “Workwear Industries” was also explored during cross-examination. Mr Keiles deposed that the applicant had used the name “Workwear Industries” since 1993.
However, counsel for the respondent then took Mr Keiles to the further amended fast track statement, which had been amended by deleting the date 1993 and inserting the date 2000, as the date when the applicant first used the name “Workwear Industries”. Mr Keiles accepted that he had authorised the making of that amendment.
Counsel for the respondent also took Mr Keiles to a business name search and a company search. The business name search demonstrated that the name “Workwear Industries” was registered by the applicant in 2000. The Australian Securities and Investments Commission’s company records showed that the applicant’s name was changed to “Workwear Industries Pty Ltd” in 2000. Later in cross-examination, Mr Keiles said that the name “Workwear Industries” was used informally prior to 2000.
I find that greater weight should be placed on the documentary evidence which was before the Court than on Mr Keiles’ statements as to the informal use of the name “Workwear Industries” prior to 2000. I, therefore, find that the applicant used the name “Workwear Industries” from no earlier than 2000.
I also find that the applicant commenced using the name “Workwear Industries Group” to identify publicly its business in 2010 after it had merged its business with another business, Fabricell Australia. I base this finding on the statement recording the merger which was made by Mr Keiles in the applicant’s Issue 7 catalogue. The statement was in the following terms:
With the merging of our acquisition, Fabricell Australia, in July 2010 forming the “WORKWEAR INDUSTRIES GROUP”, the opportunity was created for us to spread our wings… (Emphasis added.)
Ms Keira McKinnon-Elliot
Ms McKinnon-Elliot is employed as an internal sales assistant by the applicant. Ms McKinnon-Elliot deposed that in her position she processes purchase orders placed by the applicant’s customers, and deals with customer inquiries.
Ms McKinnon-Elliot said that in the course of her duties, she became aware of an email addressed to the applicant dated 20 May 2013 from a firm, Absolute Safety, which attached a completed standard form document entitled, “Yakka Customer Special Measurement Form”, seeking a quotation for an item of workwear clothing. Yakka, said Ms McKinnon-Elliot, is one of the respondent’s brands.
Ms McKinnon-Elliot also said that on 28 May 2013, she collected from the applicant’s facsimile machine, a facsimile from Transfield Services (Aus) Pty Ltd which enclosed an invoice for $108.85 rendered to it by the respondent, stating that the invoice was unreadable.
Ms McKinnon-Elliot was cross-examined. In the course of that cross-examination, Ms McKinnon-Elliot gave evidence about the way in which purchase orders were placed by the applicant’s customers and how they were processed. I will refer to this evidence later.
Ms Melissa Lightfoot
Ms Lightfoot is the accounts receivable officer of the applicant. Ms Lightfoot deposed that her duties were to receive and bank all payments, receipt payments and ensure all accounts were kept up to date and paid.
Ms Lightfoot gave evidence that on 21 March 2013 she received a cheque from Tidewater Marine Australia Pty Ltd in the sum of $174.00, which had been mistakenly sent to the applicant, instead of the respondent. The respondent had sent Tidewater an invoice in the sum of $174.00 in respect of goods sold to Tidewater.
Ms Lightfoot was not cross-examined.
Ms Grace Pu
Ms Pu is the group procurement manager of the applicant. As part of her duties Ms Pu is required to source and purchase products, which include the products of the respondent.
Ms Pu attached to her affidavit an exchange of email correspondence which occurred on 18 April 2013 between Ms Pu and Fadwa Naim, a customer sales officer for the respondent, in relation to an order placed by the applicant. On one email, the respondent’s email sign-off used a logo for the respondent which is substantially different to the version of the respondent’s logo which is in issue between the parties.
Ms Pu was not cross-examined.
Mr Michael Silver
Mr Silver is the financial manager of the applicant. Mr Silver deposed that on 31 May 2013, the applicant received an invoice from Startrack Express Pty Ltd, a freight company, in respect of a delivery that was intended for the respondent, but was wrongly addressed to the applicant.
Mr Silver was not cross-examined.
Ms Jiada Bernardi
Ms Bernardi is a purchasing officer and sales representative who is employed by a firm, Sitewear Direct. Sitewear Direct is a workwear wholesaler which distributes both the applicant’s and the respondent’s workwear. In her position, Ms Bernardi purchases products from both the applicant and respondent.
In her evidence, Ms Bernardi said that on 17 April 2013, she received two invoices from the respondent and initially thought that they were from the applicant. Ms Bernardi said that the confusion she experienced was a consequence of the colours used in the respondent’s invoices and the words “The Workwear Group” appearing as part of its logo. Ms Bernardi said she associated the words and colours with the applicant. Ms Bernardi said that after she looked at the invoices more closely and sought assistance from the Sitewest Direct’s accounts manager, she realised the invoices were from the respondent and not the applicant.
Ms Bernardi was cross-examined. Ms Bernardi confirmed that in purchasing workwear from the applicant she used the product codes of the different products to complete the purchase orders. Those product codes were set up as part of the MYOB software system which her employer used. Ms Bernardi said that the process was the same for ordering workwear products from the respondent. In the course of her cross-examination, Ms Bernardi accepted that there was enough information on the invoice for her to determine which entity had sent the invoice and where the payment in respect of the invoice should be sent. She also said that if she was doing her job properly she would know that the invoice related to the respondent’s products because of the presence of the respondent’s product logos on the invoice.
Mr Jason Golding
Mr Golding is an internal sales officer at Resources Trading Hub. In this position Mr Golding deals with both the applicant and the respondent.
Mr Golding deposed that in 2012, he received invoices from the respondent and mistook them as invoices from the applicant. Mr Golding said that on receipt of the invoices he called the applicant to ascertain “what was going on” as he thought that the invoices must have been sent by the applicant and that “perhaps it was [the applicant] which had changed its logo”.
Mr Golding said that the person to whom he spoke informed him that the applicant had not changed its logo, details or invoices layout. Mr Golding said upon closer inspection of the invoices, he realised that the invoices were from the respondent rather than the applicant. He said that he had not been notified by the respondent previously about a change of logo.
Mr Golding was not cross-examined.
Mr Benjamin Deacon
Mr Deacon is a customer service officer at Express Industrial. Mr Deacon said that in the course of his duties he places purchase orders for workwear products with both the applicant and the respondent.
Mr Deacon deposed that he first saw the respondent’s new logo on or about 12 March 2013 at the bottom of an email confirmation from the respondent in respect of the return of a product to the respondent. Mr Deacon said that he immediately became confused as, in his view, the logo looked so similar to the applicant’s logo that he thought that the applicant and respondent must have merged. Mr Deacon further stated that prior to March 2013, he had associated the colours and words in the applicant’s logo and the words “the Workwear Group” with the applicant, not the respondent.
Mr Deacon was not cross-examined.
There was also an affidavit from Ms Maria Di Martino, a solicitor from the firm of solicitors acting for the applicant, which was not relevant to the matters in issue at trial.
THE RESPONDENT’S WITNESSES
Mr Rodney Philp and Mr David Chin gave evidence as part of the respondent’s case.
Mr Rodney Philp
Mr Philp is a director of Philp Agencies Pty Ltd, which is the exclusive distribution agent in Western Australia for “CAT”, a brand of workwear, apparel, footwear and accessories. Mr Philp has worked in the workwear industry for over 40 years. Mr Philp said that he started work in 1972 for G&R Wills, which acted as agent for Hard Yakka workwear. Mr Philp said that while working for G&R Wills as a regional sales representative he would deal with customers who would refer to the product supplied by Hard Yakka as workwear. Mr Philp said that he would also refer to the product as workwear. Later, Mr Philp was employed in various sales roles within the workwear divisions of Pacific Brands and its affiliates or predecessors over a period of approximately 25 years.
Mr Philp also deposed that the respondent and its predecessors since at least 1998 had referred to “workwear” to describe its products in catalogues, pricelists, campaigns, marketing and branding for some time.
Counsel for the applicant submitted that no weight should be given to the evidence of Mr Philp, because of his close previous relationship with the respondent and its associated companies, and, also, because Mr Philp’s wife still worked for Pacific Brands.
However, in my view, the evidence given by Mr Philp to the effect that the products sold by the respondent and the applicant are, and have been widely referred to as “workwear”, is supported by the catalogues and price lists annexed to his affidavit. At least one of those catalogues goes back to 1998. I, accordingly, accept Mr Philp’s evidence and find that the word “workwear” is and has been used to describe the products sold by the applicant and the respondent, from a date which predates the adoption of the names and logos by each of the applicant and the respondent.
Further, on the basis of Mr Philp’s evidence, and on the basis of the widespread use of the word “workwear” in Australia to describe the products of the kind sold and distributed by the applicant and respondent (recorded in the agreed facts referred to at [12] above), I find that the word “workwear” is a descriptive word used to describe the products sold by each of the applicant and the respondent.
Mr David Chin
Mr Chin is now a management consultant. However, from September 2007 to July 2012 Mr Chin was employed by Pacific Brands.
Mr Chin deposed to the lengthy process between Bison GWD and the respondent which led to the development of the respondent’s current logo and the selection of the name “The Workwear Group”. As I have mentioned, this process commenced in April 2011, when Bison GWD was first briefed and concluded in February 2012 with the final selection of the logo. Mr Chin said that this process cost approximately $300,000.
I accept Mr Chin’s evidence.
There was also a non-contentious affidavit from Ms Alexandra Turner, a solicitor from the firm representing the respondent, which annexed a number of trademark and other searches.
THE ISSUES
The context and characterisation of the impugned conduct
The applicant’s case was not pleaded in terms of a misrepresentation. The applicant’s claim is that by adopting and using its logo in trade and commerce, the respondent has confused the applicant’s customers.
I will now consider the context of the impugned conduct of the respondent.
In seeking to characterise the impugned conduct, it is not simply a matter of looking at the two logos in isolation and determining whether the two logos are substantially similar.
It is necessary to look to the circumstances in which the respondent has deployed the logo, and to determine whether, by reference to the reaction of the ordinary or reasonable consumer, the deployment of the logo in all the circumstances amounted to conduct by the respondent which was misleading or deceptive or likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law.
In the case of ConAgra Inc v McCain Foods (Australia) Pty Ltd (1992) 33 FCR 302 at 380, French J (as his Honour then was) observed as follows:
Where conduct depends upon context or surrounding circumstances to convey a particular meaning, then those factors must be taken into account but only as a way of characterising the conduct. Where the name and get-up of a product are in issue, the question for the purposes of s 52 is whether they are misleading or deceptive in the circumstances.
In my view, the following matters are relevant in identifying the context in which the respondent’s logo was used, with a view to assessing whether, in that context, the conduct of the respondent could be said to be misleading or deceptive or likely to mislead or deceive, in contravention of the statutory norm.
First, neither the applicant nor the respondent markets and sells any products under each of the logos which are in issue in this proceeding. As mentioned above, each of the applicant and the respondent markets and sells its products by reference to brand names and logos which are distinctive and different to the logos in issue in this case.
The applicant’s product range is sold and marketed under the brand name of “Riggers” in respect of workwear apparel and footwear; and “Progard” in respect of disposable safety products. There is a distinctive logo for each of those brand names.
The prominence given by the applicant to the distinctive brand names and logos of its products is reflected in the applicant’s marketing and advertising material which was in evidence. Thus, the applicant’s flyer which advertised its “Riggers Coolzone Socks” product contains, as its heading, the logo “Riggers” in very large font. Beneath that logo is a description and picture of the Riggers Coolzone Socks product. These components of the flyer collectively occupy about seven-eighths of the surface area of the flyer. In the remaining one-eighth of the surface area of the flyer the applicant’s logo appears. It occupies about half of that surface area – about one-sixteenth of the whole surface area of the flyer. It is substantially smaller than the “Riggers” logo.
The same observations apply to the applicant’s other flyers in the evidence which advertised “Challenger Progard Safety Glasses”, “Riggers Antistatic Breathable Chemical Splash Coveralls” and “Tuff-Job Wipes”.
There was also in evidence an advertisement for the applicant’s products which appeared in the magazine “Resource in Focus” (September/October 2012 issue). The headline of the advertisement is again the “Riggers” logo in large font. Beneath the logo are three photographs depicting respectively, a boot, persons wearing high visibility workwear and a person wearing rainwear. The photographs are adjacent to each other and together occupy about half of the surface area of the advertisement. The photographs and the “Riggers” headline logo together occupy about seven-eighths of the surface area of the advertisement. The applicant’s logo is at the bottom and to the left of the advertisement and is substantially smaller than the “Riggers” headline logo.
Part of the applicant’s 2007 catalogue was in evidence. The name that appears on the front of that catalogue is “Riggers Workwear Australia”. The logo which the applicant used in 2007 does not appear on the cover of the catalogue.
The applicant’s “Issue 7” catalogue was also in evidence. The name “Workwear Industries Group” appears on the cover of the catalogue but the logo which appears on the front cover of the catalogue is the “Riggers Workwear” logo. It is that logo which appears frequently throughout the rest of the catalogue. The Workwear Industries Group logo is on one page of the document, namely, at the bottom of a message from Mr Keiles on page 3 of the document.
The respondent includes its logo on the documents which it uses in the course of conducting its business. There was in evidence a letter written on behalf of the respondent to its customers, which used its logo as its letterhead. The logo is at the top right-hand corner of the page. At the bottom of the page is the respondent’s address and adjacent to the address the names of each of the respondent’s five distinctive brand names appears.
The respondent’s logo also appears as part of the author’s address insignia on emails sent by the respondent. Further, the respondent’s website homepage contains the logo along with the logos and trademarks of each of the five branded products which are sold and distributed by the respondent.
Of particular relevance in the context of this case, is the manner in which the respondent uses its logo on its invoices. Two of the three witnesses who were employees of the customers of the applicant said that they were confused after having received the respondent’s invoices. The importance of the role of the logo on the respondent’s invoice in the context of this case was also referred to by counsel for the applicant in opening.
The respondent’s logo on the invoice appears on the top left-hand corner of the invoice. The logo is one of six adjacent logos which appear at the top of the invoice. The other five logos are logos for each of the brand names of the products sold by the respondent. This included the logos for “King Gee” and “Hard Yakka”.
The respondent’s invoice contains the following references to Pacific Brands or its brand names.
First, the logo includes the words “A division of Pacific Brands” immediately below the word “Workwear”. These words are in substantially smaller font than the word “Workwear”.
Secondly, immediately beneath the logo the following words appear:
Agents for
Pacific Brands Workwear Group Pty Ltd
Pacific Brands Sport & Leisure Pty Ltd.Thirdly, at the top of, and in the centre of, the invoice, immediately beneath two of the five brand name logos, the following words appear:
Remit to: Pacific Brands Workwear, PO Box 1015, Hawthorn, VIC 3122 Australia.
Fourthly, under that address, the following words appear:
Account queries E: [email protected].
Fifthly, at the bottom of the invoice are the following words:
PLEASE NOTE
All goods are supplied on Pacific Brands terms and conditions of sale.
Sixthly, at the bottom left of the invoice, the following words appear:
Contact Details
FOR CUSTOMER SERVICE INQUIRIES
KINGG 1800658791 YAKKA 0893730000
REP NOS: W62I find that in considering whether the adoption and use by the respondent of its logo contravenes the statutory norm, the respondent’s conduct must be viewed in the context of the facts and matters referred to in [105]-[122] above.
The ordinary or reasonable consumer
In the case of Campomar v Nike International (2000) 202 CLR 45 (Campomar), the High Court observed that in cases where the impugned conduct, said to contravene s 52 of the Trade Practices Act 1974 (Cth) was addressed to the public at large, it is necessary to determine the class of persons to whom the impugned conduct was addressed and the likely attributes of the “ordinary” or “reasonable” member of the class. At [102], [103] and [105], the High Court observed:
102It is in these cases of representations to the public…that there enter the “ordinary” or “reasonable” members of the class of prospective purchasers. Although a class of consumers may be expected to include a wide range of persons, in isolating the “ordinary” or “reasonable” members of that class, there is an objective attribution of certain characteristics…
103Where the persons in question are not identified individuals to whom a particular misrepresentation has been made or from whom a relevant fact, circumstance or proposal was withheld, but are members of a class to which the conduct in question was directed in a general sense, it is necessary to isolate by some criterion a representative of that class. The inquiry thus is to be made with respect to this hypothetical individual why the misconception complained has arisen or is likely to arise if no injunctive relief be granted…
…
105…The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers. (Footnotes omitted.)
In my view, the following facts and circumstances are relevant in isolating the relevant characteristics of an ordinary or reasonable member of the class of consumers to whom the impugned conduct was directed. As mentioned, in [47] above, the applicant contended that the class of persons affected by the respondent’s impugned conduct are its customers. That class of persons would include persons who purchase products from both the applicant and the respondent.
The applicant does not sell products directly to ordinary members of the general public. As mentioned above, the applicant has approximately 500 customers. Approximately 70% of the applicant’s customers are to “direct to industry” customers. These customers comprise companies and firms that have a requirement for the applicant’s products, and include companies in the construction and mining industries. The other major group of customers are wholesale customers, who account for approximately 30% of the applicant’s customers.
Based on the evidence of Ms McKinnon-Elliot in cross-examination, I make the following findings as to the process for purchasing the applicant’s products.
The applicant’s customers purchase products from the applicant by completing and forwarding a purchase order directly to the applicant either by email or facsimile – 90% of the purchase orders are sent by email and 10% by facsimile. The majority of the applicant’s customers are repeat customers.
A purchase order submitted by a customer is required to contain the product code for the items which a customer wants to order. A customer would get the product code from the applicant’s website or from the applicant’s catalogue. Alternatively, a customer would contact Ms McKinnon-Elliot or a colleague of hers by email or by telephone to obtain the code for the product the customer wanted to order.
When a purchase order is received from a customer, the order is processed in the applicant’s computer system, which creates a sales order which then goes to the dispatch section of the business. The order is then dispatched along with the invoice to the customer. The invoice contains the applicant’s logo and the applicant’s full name and address as well as the information necessary to remit the required payment to the applicant.
In relation to big orders, the applicant would usually provide the customer with a specific quotation.
The majority of new customers first make contact with the applicant by making a telephone call to the applicant. The new customers are then required to complete forms to register as customers. Thereafter, the new customers comply with the ordinary process of placing a purchase order in writing in the manner referred to above.
On the basis of Ms Bernardi’s evidence in cross-examination, I find that an employee of a customer of the applicant who is responsible for paying the invoices rendered by a supplier of goods, such as the invoice rendered by the respondent, would, in the proper discharge of his or her duties, scrutinise all the information printed on the invoice to determine the account details and the address to which the remittance called for in the invoice was to be sent.
In my view, an ordinary or reasonable consumer, being in the context of this case, a customer of the applicant, would have the following attributes.
An ordinary or reasonable consumer would be a person who is purchasing the products in a business, rather than a personal context. In other words, the purchaser is not purchasing as a retail consumer for personal use. Further, the ordinary or reasonable consumer would be required to give detailed consideration to the product he or she intended to purchase. This is because the ordinary or reasonable consumer is required to complete a purchase order in writing as part of the purchasing process. This in turn requires the purchaser to identify the product to be purchased by reference to its brand name and a specific product code. This requires the purchaser to consult a catalogue, a website or to make specific inquiries to an officer of the applicant.
There is no scope for attributing as a characteristic of the ordinary or reasonable consumer in this context, the propensity to purchase one or more of the products as an impulse purchase.
In summary, the ordinary or reasonable consumer in this context is a person intending to purchase a product which bears a distinctive brand name in a commercial context, by a means which requires the precise identification of the product to be purchased by reference to a formal written purchasing process.
Insofar as regard is to be had to the attributes of an ordinary or reasonable consumer in the context of paying for products purchased, such consumer, having been advised of the total amount to be paid for the product by the receipt of an invoice, would have regard to all the information provided on the invoice in order to determine where the payment was to be directed.
Did the respondent’s conduct breach the statutory norm?
Section 18 of the Australian Consumer Law provides:
Misleading or deceptive conduct
(1)A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2)Nothing in Part 3-1 (which is about unfair practices) limits by implication subsection (1). (Original emphasis.)
The agreed facts referred to at [26]-[34] above, record a number of circumstances in which an employee of one of the applicant’s customers demonstrated some confusion between the applicant and the respondent. Further, three of the applicant’s employees (Ms McKinnon‑Elliot, Ms Lightfoot and Mr Silver) gave evidence of having encountered confusion of a similar kind. Also, an employee of each of three different customers gave evidence that he or she had also been confused in a similar way.
There are a number of principles which are relevant to the consideration and assessment of this evidence in the context of determining whether the respondent has engaged in conduct which was misleading or deceptive or likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law.
First, the question of whether the conduct in question contravened the statutory norm is to be assessed objectively by reference to the reaction of the ordinary or reasonable members of the class of consumers to which the impugned conduct was addressed. The conduct will be assessed by reference to whether it was of such a character that it caused or was likely to cause an ordinary or reasonable member of the class of consumers to labour under some erroneous assumption or misconception (Campomar at [104]-[107]). Evidence of confusion will, therefore, not be conclusive. The weight to be given to evidence of confusion will depend on the circumstances of each case.
Secondly, conduct causing confusion or uncertainty in the sense of causing a sense of wonder, is not necessarily sufficient to constitute conduct in contravention of the statutory norm. In the case of Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 198, Gibbs CJ observed:
[T]o prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source…
Further, in Campomar at [106], the High Court cited with approval the following observations of Deane and Fitzgerald JJ in Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 201:
The question whether particular conduct causes confusion or wonderment cannot be substituted for the question of whether the conduct answers the statutory description contained in s 52.
Thirdly, the error into which a consumer is led by the impugned conduct, or the misconception which is engendered by that conduct, must have an element of commercial significance for it to be characterised as conduct which contravenes the statutory norm. In the case of SAP Australia Pty Ltd v Sapient (Australia) Pty Ltd (1999) 169 ALR 1 at [51], the Full Court observed:
It is consistent with the general proposition, however, to accept that conduct may not be misleading or deceptive or likely to mislead or deceive, notwithstanding that it may engender temporary and commercial irrelevant error…
Also, in the case of Knight v Beyond Properties Pty Ltd (2007) 242 ALR 586 at [58], French J (as his Honour then was), Tamberlin and Rares JJ observed:
When characterising a course of conduct as misleading or deceptive, the practical consequences and effect which the conduct is likely to have must be taken into account. In this case, even if one assumes that a person consults a television guide and momentarily apprehends that there may be some association between Mr Knight’s Mythbusters books and the Mythbusters TV show, but on closer inspection is immediately disabused of that false or confused impression, then it is open to find that the respondents’ conduct is not misleading or deceptive. On the other hand, if the conduct leads that person to take action of a substantive nature or causes some significant detriment or financial loss, then the position may be different, and one may characterise the conduct in a different way. The descriptions “misleading” or “deceptive” in relation to the conduct are indicative of the importance of looking to the impact of that conduct. Put another way, if the conduct only produces the effect of misleading a person for a transient period and to an insubstantial extent, as it did in this case, then this indicates that the conduct is not likely to be misleading or deceptive in any commercially significant sense.
Fourthly, where two traders use descriptive words as part of their respective trade names, the risk of confusion by members of the public must be accepted. At 229, Stephen J in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 (Hornsby) observed:
The risk of confusion must be accepted, to do otherwise is to give one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
At 230, Stephen J observed as follows:
To allow this section of the Trade Practices Act to be used as an instrument for the creation of any monopoly in descriptive names would be to mock the manifest intent of the legislation. Given that a name is no more than merely descriptive of a particular type of business, its use by others who carry on that same type of business does not deceive or mislead as to the nature of the business described. Thus both the Hornsby and the Sydney Centres are building information centres and no one is being deceived as to the nature of the service which is available there. Any deception which does arise stems not so much from the Hornsby Centre’s use of the descriptive words as from the fact that the Sydney Centre initially chose descriptive words as its title and for many years thereafter was the only centre in Sydney which answered the description which those words provide. In consequence members of the public have come to associate its particular business with that type of activity. Evidence of confusion in the minds of members of the public is not evidence that the use of the Hornsby Centre’s name is itself misleading or deceptive but rather that its intrusion into the field originally occupied exclusively by the Sydney Centre has, naturally enough, caused a degree of confusion in the public mind. This is not, however, anything at which s 52(1) is directed.
Further, where two traders have used a descriptive word as part of their business name, only a small variation between the two names will be sufficient to differentiate the names so as to avoid a contravention of the statutory norm (Hornsby at 229).
It is only in exceptional circumstances where the use of a word or language embracing a general description will give rise to conduct in contravention of the statutory norm contained in s 18 of the Australian Consumer Law. One instance where this will occur is where the applicant establishes that the descriptive words have acquired a secondary meaning which is associated with its business. (See, for example, BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363.)
I have found already that the word “workwear” is a general descriptive word used to describe the products which are manufactured, sold and distributed by each of the applicant and respondent. Each of the applicant and the respondent has incorporated the word “workwear” into its business name and its logo.
In the case of REA Group Limited v Real Estate One Limited (2013) 102 IPR 1, Bromberg J undertook a detailed analysis of the evidence which had been relied on in support of the contention that the words, “realestate.com.au” had acquired a secondary meaning and had become distinctive of the business of REA Group. Amongst the evidence which Bromberg J considered was the extent of the advertising of the term and the high volume of access to the applicant’s website, There was also an analysis of the manner in which persons had accessed the applicant’s website. That evidence established that 53% of the visits to the website came from direct traffic, namely, by inserting the website address “ into the user’s website browser, rather than going through a search engine.
The applicant made no attempt to adduce evidence of this nature to prove widespread recognition of the name “Workwear Industries Group” or its logo or the logo’s colour scheme within the trade. Rather, to the contrary, the evidence showed that the emphasis in the applicant’s advertising and marketing materials was on promoting the recognition of the brand names of its products, rather than upon its corporate nomenclature and get‑up. Also, I have found that the applicant has only used the logo in its current form since 2010.
I also find that the evidence which was advanced by the applicant did not establish that the words “workwear”, “Workwear Industries” or “Workwear Industries Group”, had acquired any secondary meaning so as to be associated with the applicant’s business. The same is true in relation to the applicant’s logo.
Further, the evidence showed that more than 20 businesses which sold and distributed workwear in Australia used the colour blue in their logos, and I find that the applicant did not show that its businesses or logo was specifically associated with the colour scheme of its logo.
As mentioned, the applicant has sought to confine its claim to a contention that, by adopting and using its logo in trade or commerce, the respondent has contravened s 18 of the Australian Consumer Law.
However, in my view, even in relation to the applicant’s more limited case, it is not possible to preclude from consideration the legal principles associated with the use of the descriptive word “workwear” when considering the question of the nature of the confusion in this case. This is because in each of the two logos, the descriptive word is the dominant word. The other words “Industries” and “Group” (in the applicant’s logo), and the words “The” and “Group” (in the respondent’s logo), do not carry the same descriptive power as does the word “workwear” in describing the activities of each of the parties. The importance of the word “workwear” to the logo is properly recognised by the applicant when at para 12 of its fast track statement, it has pleaded that the respondent’s logo includes the words “The Workwear Group”. In my view, by reason of the dominance of the descriptive words in each of the party’s logos, the same considerations as are articulated by the cases in relation to descriptive words inform the approach of the Court to the assessment of customer confusion in this case.
An instructive case in this regard is the case of connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348 (connect.com.au). In that case, the applicant brought a claim against the respondent alleging that by adopting a logo which was similar to the applicant’s logo, it had contravened s 52 of the Trade Practices Act.
Each of the applicant and the respondent carried on business under a trading name which included the descriptive word “connect”. The applicant used the name “connect.com.au” and the respondent used the name “GoConnect”. The logo of the applicant included the word “connect”. The applicant complained that by a logo which included the words “GoConnect”, the respondent had made misrepresentations to the effect that the respondent’s services were the services of the applicant and that the respondent and the applicant were associated or affiliated.
In considering whether the respondent had contravened s 52 of the Trade Practices Act, Emmett J had regard to the cases which dealt with the causation issues arising from the use by two traders of descriptive words in their trade names.
In support of its claim, the applicant, connect.com.au, relied upon in excess of 40 short affidavits which were sworn by persons employed by, or in connection with, the applicant and its associated entities. There was also “considerable evidence” of emails and telephone communications with the applicant that suggested a degree of misunderstanding or misconception on the part of those speaking to the applicant’s officers.
Emmett J did not find that evidence “at all compelling”, because in the case of almost all the evidence, there was no evidence as to what had given rise to any misconception or misunderstanding. Emmett J went on to observe that in some cases the confused person “acknowledged a mistake unconnected with the respondent’s logo”. Emmett J observed that there were only two witnesses who actually gave evidence as to their own confusion.
Emmett J observed that whilst there was evidence of persons communicating with the applicant in the mistaken belief that it was associated with the respondent, there was no evidence of any persons communicating with the respondent in the mistaken belief that it was associated with the applicant.
Emmett J went on to conclude that the evidence was not indicative of confusion of any commercial significance.
In this case, in general, the instances of confusion deposed to by the applicant’s employees, or as set out in the agreed facts, involved a customer mistaking the applicant for the respondent in one way or another. As was the case in connect.com.au, the evidence did not disclose similar confusion in respect of customers communicating with the respondent in the belief that it was, or was associated with, the applicant.
Further, there was no evidence of a customer having purchased goods from the applicant or the respondent and returning those goods on the basis that the goods were purchased by mistake. In none of the instances of the customer’s confusion deposed to by the applicant’s employees, and set out in the agreed facts, is the reason for the customer’s confusion disclosed. In particular, there is no evidence that the confusion was caused by the respondent’s logo rather than some other circumstance, such as the similarity between the business names of the applicant and the respondent. The evidence does not, therefore, provide a basis upon which to conclude that it was the respondent’s logo which led each of the customers into error.
Further, the nature of the confusion which is revealed by the incidents of confusion which formed part of the agreed facts and which were deposed to by the applicant’s employees was of a minor nature. Of particular relevance, is the fact that the applicant has not adduced any evidence that it has suffered any quantifiable loss of sales by reason of the respondent’s impugned conduct. The majority of the incidents of confusion have occurred in a post-sales context.
Like Emmett J in connect.com.au, I regard the evidence of these instances of confusion as not being compelling and failing to demonstrate confusion which was commercially significant.
Further, in my view, such confusion as is evidenced by the instances of confusion deposed to by the applicant’s employees and those described in the agreed facts, is confusion of the type described by Stephen J in the Hornsby case when he observed that the risk of some confusion will have to be accepted when two traders use descriptive words as part of their business names. (See Hornsby at 229.)
It is apparent that such confusion as Ms Bernardi experienced when looking at the respondent’s invoice was only a temporary and fleeting confusion. This is because having sought assistance and having looked at the invoice more closely, Ms Bernardi realised that the invoice was from the respondent. In addition, Ms Bernardi did not depose that she took any action consequent upon her confusion which was prejudicial to the applicant’s business. In my view, the confusion was temporary and was also commercially insignificant.
All that Mr Golding’s evidence shows is that Mr Golding was temporarily confused. He accepted that on a closer look at the respondent’s invoice, he realised that it was the respondent’s invoice. The confusion was also commercially insignificant. This is because on seeing the invoice Mr Golding did no more than make a telephone call to the applicant inquiring about a change in its logo. Mr Golding took no action consequent upon the temporary confusion which caused any economic detriment to the applicant.
The evidence of Mr Deacon also discloses commercially insignificant confusion. The evidence of Mr Deacon goes no further than disclosing an unexpressed subjective thought. Mr Deacon’s evidence does not say that Mr Deacon took any action consequent upon his subjective confusion which had any detrimental consequence for the applicant.
Further, the confusion experienced by each of Ms Bernardi, Mr Golding and Mr Deacon was also of the nature referred to in [169] above.
Ultimately, the question of whether the respondent’s impugned conduct when viewed in its proper context, contravenes the statutory norm is to be assessed by reference to the impact of that conduct upon an ordinary or reasonable consumer.
At [134]-[138] above, I have identified the attributes of an ordinary or reasonable consumer in the context of the applicant’s claim that the impugned conduct contravened s 18 of the Australian Consumer Law.
In my view, the impugned conduct would not induce, nor be likely to induce, in an ordinary or reasonable consumer, the mistaken belief that he or she was purchasing a workwear product from the applicant when in fact he or she was purchasing it from the respondent. This is because the ordinary or reasonable consumer, intent on purchasing such a product, needs to complete a process which requires the precise identification of the product concerned, by reference to its distinctive name brand and its distinctive product code. This product specific identification process, when engaged in by an ordinary or reasonable consumer, would preclude the respondent’s logo from having a material influence in the purchasing process.
Nor, in my view, would the impugned conduct induce, or be likely to induce, in an ordinary or reasonable consumer who has received an invoice rendered by the respondent, a mistaken belief that the invoice was rendered by the applicant. This is because an ordinary or reasonable consumer would, in considering the invoice rendered by the respondent, have regard to all of the information on the invoice rendered by the respondent and by reason of the matters identified at [115]-[122] above, conclude that it was the respondent that had rendered the invoice. Nor, for the same reasons, would the impugned conduct cause, or be likely to cause, an ordinary or reasonable consumer to entertain the mistaken belief that the respondent’s business was associated or affiliated with the applicant’s business.
In addition, more generally, the respondent’s letterhead refers, specifically, to its five brand names, and contains the respondent’s address, and, for that reason, an ordinary or reasonable consumer would not mistake a letter from the respondent as being from the applicant, or that the applicant and respondent were associated or affiliated.
Further, an ordinary or reasonable consumer in dealing with invoices and other documents from the applicant and the respondent, would appreciate that there are significant differences between the two logos. The most significant difference is the fact that the applicant’s logo contains as its most prominent feature, a large “W” symbol, whereas the respondent’s logo contains no such symbol. Secondly, the applicant’s logo contains the word, “Industries” whilst the respondent’s logo does not. Thirdly, the respondent’s logo contains the words, “A division of Pacific Brands”, whilst the applicant’s does not.
It follows that, in my view, the applicant has not demonstrated that by adopting and using its logo, the respondent has engaged in conduct which is misleading or deceptive or likely to mislead or deceive, in contravention of s 18 of the Australian Consumer Law.
Accordingly, the applicant’s application filed on 5 December 2012 is dismissed.
I certify that the preceding one hundred and eighty-one (181) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Siopis. Associate:
Dated: 15 October 2013
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