Ecopro Cleaning Services Limited v Ecopro Limited - [2018] NZHC 3075

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2018-404-001869

[2018] NZHC 3075

BETWEEN ECOPRO CLEANING SERVICES LIMITED
Applicant

AND

ECOPRO LIMITED

First Respondent

MATTHEW JOHN ROURKE

Second Respondent

Hearing: 22 November 2018

Appearances:

E W Davies for Applicant

No appearance by or on behalf of Respondents

Judgment:

26 November 2018

JUDGMENT OF WOOLFORD J

This judgment was delivered by me on Monday, 26 November 2018 at 11.00 am pursuant to r 11.5 of the High Court Rules.

Registrar/Deputy Registrar

Solicitors: Skinners Law, Auckland

ECOPRO CLEANING SERVICES LIMITED v ECOPRO LIMITED [2018] NZHC 3075 [26 November 2018]

Introduction

[1] On 26 September 2018, Palmer J granted an interim injunction against Ecopro Limited and Matthew John Rourke (the respondents) on the application of Ecopro Cleaning Services Limited (the applicant) to restrain the respondents’ use of the name “Ecopro” or “Ecopro NZ”.1

[2] The applicant now applies for a permanent injunction against the respondents as a matter of formal proof.

Background

[3] On 30 August 2018, the applicant filed its claim against the respondents. The causes of action pleaded in the statement of claim are passing off, misleading or deceptive conduct or statements under the Fair Trading Act 1986, and breach of the Trade Marks Act 2002. The applicant sought both an interim and permanent injunction.

[4] The proceeding was served on the respondents. Neither of the respondents have taken any steps in the proceeding despite numerous attempts by the applicant to engage with them. No statement of defence has been filed. No notice of opposition to the application for an injunction has been filed. There was no appearance by or on behalf of the respondents when the application for an interim injunction was called before Palmer J.

[5] Palmer J granted an interim injunction to restrain the respondents’ use of “Ecopro” or “Ecopro NZ”. He thought there was a serious question to be tried and considered that the balance of convenience favoured the applicant. He stated:2
… I infer from Ecopro’s failure to take any steps in the proceeding that it either does not oppose it or has decided to live with the consequences of failing to take steps. In that case, the inconvenience to it of the orders sought cannot be significant.

1 Ecopro Cleaning Services Ltd v Ecopro Ltd [2018] NZHC 2527.
2 At [4].

Discussion

[6] Anne Margaret Quaid, a director of the applicant, has filed two affidavits, dated 30 August 2018 and 19 November 2018. On the basis of these affidavits, I am satisfied the tort of passing off has been proved:3

(a)there is some reputation or goodwill in the applicant’s name / mark;

(b)the respondent has used the same or a deceptively similar name / mark so as to confuse or deceive the relevant public, or if unrestrained is likely to do so; and

(c)as a result, damage has been or is likely to be caused to the applicant’s business, reputation or goodwill.

[7] I accept…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] NZHC 3075
Decision Date: 26 November 2018

CaseChat Overview and Summary

Ecopro Cleaning Services Limited sought an injunction against Ecopro Limited and Matthew John Rourke to prevent them from using the names “Ecopro” or “Ecopro NZ”. The respondents failed to defend the proceeding or appear in court. The Court was required to decide whether to grant a permanent injunction against the respondents, restraining them from using the name “Ecopro” or “Ecopro NZ”.

The Court found that the applicant had a distinctive name in the environmentally friendly cleaning services industry in the Auckland region, with a reputation for high quality services. The respondents were using the same name in the same industry, which was highly likely to cause confusion among the public, resulting in reputational damage and diversion of custom. The Court also found that the respondents’ conduct breached section 9 of the Fair Trading Act, as there was a real risk that the respondents’ conduct would mislead or deceive the reasonable consumer. The Court did not consider it necessary to discuss the Trade Marks Act. The Court held that the form of the permanent injunction should restrain the respondents from using the names “Ecopro” or “Ecopro NZ” in the marketing and operation of their business, including the use of certain email addresses and telephone numbers, but did not consider mandatory injunctions were warranted.

The Court granted a permanent injunction restraining the respondents from using the names “Ecopro” or “Ecopro NZ” in the marketing and operation of their business, including the use of the specified email addresses and telephone numbers. The respondents were ordered to pay costs to the applicant on a 2B basis.

Orders