Hallett v Gay HC Auckland CIV-2011-404-000173
[2011] NZHC 220
•17 March 2011
IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY
CIV-2011-404-000173
BETWEEN JOSEPH GREGORY HALLETT Plaintiff
ANDEDWARD GAY First Defendant
ANDTIM MURPHY Second Defendant
ANDPHILLIP JOHN EUSTACE Third Defendant
ANDJOHN HENDRIK MAASLAND Fourth Defendant
CIV-2011-404-000174
AND BETWEEN JOSEPH GREGORY HALLETT Plaintiff
ANDPETER ALDERIDGE WILLIAMS Defendant
Hearing: 17 March 2011
Appearances: J G Hallett, Plaintiff in both proceedings in person
A L Ringwood for Defendants in 173
P A Williams QC (Defendant in person in 174) Judgment: 17 March 2011
ORAL JUDGMENT OF ASSOCIATE JUDGE BELL
Solicitors:
Bell Gully, PO Box 4199, Auckland (for defendants in CIV-2011-404-000173)
DCS Reid, 1/1/Ruskin Street, Parnell, Auckland (for Defendant in CIV-2011-404-000174)
Copy to:
J G Hallett, PO Box 109 624, Newmarket, Auckland (Plaintiff in both proceedings in person)
JOSEPH GREGORY HALLETT V EDWARD GAY HC AK CIV-2011-404-000173 17 March 2011
[1] Both proceedings have been called in the summary judgment list. In both proceedings, the plaintiff and the defendants seek summary judgment against each other. The normal course with summary judgment applications is to fix a date when the opposed applications can be heard. In the summary judgment list directions are simply given for the matter to be heard, including directions for the exchange of submissions. These cases are clear-cut. There are reasons in the public interest why this matter needs to be dealt with them today. I have heard submissions from all parties – at some length from Mr Hallett.
[2] Both applications have been made under r 12.2 of the High Court Rules:
12.2 Judgment when there is no defence or when no cause of action can succeed
(1) The court may give judgment against a defendant if the plaintiff satisfies the court that the defendant has no defence to a cause of action in the statement of claim or to a particular part of any such cause of action.
(2) The court may give judgment against a plaintiff if the defendant satisfies the court that none of the causes of action in the plaintiff's statement of claim can succeed.
[3] In a plaintiff ’s application, the plaintiff has the burden of satisfying the Court that the defendant has no defence to the cause of action in the statement of claim. In a defendant’s application, the defendant has the burden of satisfying the Court that the causes of action in the plaintiff’s statement of claim cannot succeed.
[4] The background facts to this matter are that Peter Williams QC, a well-known barrister, now retired, the defendant in the proceeding 174, sued Mr Hallett in the District Court at Auckland (CIV-2008-004-2897) in defamation for statements made about Mr Williams in a book that Mr Hallett wrote called ―New Zealand – a Blackmailer’s Guide‖. That case was heard in June 2010. District Court Judge Hinton gave his decision on 18 October 2010. Mr Hallett took no part in the proceeding. In his judgment, Judge Hinton found that the defamation had been proved and he awarded Mr Williams damages of $140,000. That was made up of compensatory damages of $125,000, and punitive damages of $15,000. He also issued an injunction against Mr Hallett restraining him from further distribution of his book with any reference to Mr Williams in it.
[5] The Weekend Herald, published by APN Publishing, ran an article about the judgment in its issue of 23 October 2010. The article was headed ―Mr Asia lawyer wins damages‖. The reporter is Edward Gay, the first defendant in proceeding 173. The article appears to refer to Mr Hallett by name six times, although I would have to say on reading the article that the focus is more on Mr Williams than it is on Mr Hallett. The article concludes ―Hallett was phoned to comment but did not return the Herald’s calls‖.
[6] The District Court judgment and the article in The Weekend Herald have led to the present proceedings. Mr Hallett, the defendant in the defamation proceeding, has sued for trade mark infringement. The intituling of his statements of claim refers expressly to the Trade Marks Act. The statement of claim in both proceedings under the heading ―Nature of claim‖, makes it clear that the claim is for trade mark infringement. Each application for summary judgment says it is for breaches of a gazetted trade mark. Each application refers to provisions of the Trade Mark Act and does not refer to any other head of law under which a claim is made. I say that because during submissions, Mr Hallett complained of having been defamed. The proceeding before me today does not concern defamation and anything I say in my judgment today is not intended to address any defamation issues. My judgment is solely about trade mark issues because those are the only matters in Mr Hallett’s proceedings that are in issue in these applications.
[7] Mr Hallett owns a trade mark, registration No. 791573. The mark is the words ―Joseph Gregory Hallett‖ written in three different ways. First of all, all in capitals. Next, the initial letters of each word in capitals, and finally, all the words in lower case. The mark is for two classes under the Nice classification: services within class 36 and services within class 45. The services under class 36 that are covered by the registration are:
banking services, credit institution services, monetary affairs, and services connected with monetary affairs vouched for by trustees
The services within class 45 are:
investigation and surveillance services relating to the safety of persons and entities, legal services, security services for the protection of property and
individuals and social services rendered by others to meet the needs of individuals
[8] Mr Hallett says that the way his name has been used by the defendants is trade mark infringement.
[9] For their part, the defendants in both proceedings say that whatever use they made of Mr Hallett’s name does not amount to trade mark infringement under the Trade Marks Act 2002. They do not contest the validity of the registration of Mr Hallet’s mark.
[10] It is helpful here, before I refer to the specific provisions of the Trade Marks Act referred to in argument, to outline the general purpose of trade mark law. Trade marks originally were used to brand goods. That is, people who manufactured goods and distributed them into the market were keen to make sure that those who might purchase goods would be able to identify the goods as having come from one source. And so marks were used to identify their goods so that the purchasing public could know that they came from that source. Trade mark legislation was passed so that those putting goods into the market could have protection for the brands they used to identify the goods. This was so that the purchasing public could not be confused or deceived about the source of the goods that they were buying, so that they would know that a particular mark was used in relation to goods, either on the goods themselves or in advertising. Other people were not allowed to use that mark so as to take a free ride on the reputation of the person who made the goods and to otherwise confuse the purchasing public.
[11] Nowadays, the Trade Marks Act has been extended to cover services as well, but trade mark registration for services covers the same essential purpose. That is, it is simply to ensure that when services are promoted, the purchasing public can identify where those services come from and to prevent other people taking a free ride on the reputation of another. I can take a simple example. Banking is a service. No doubt the trading banks in New Zealand have trade marks to protect their services so that if someone were to start operating a bank and to use the trade mark used by one of the trading banks in this country, they would be infringing the trade
mark of that bank. I say that to explain how provisions of the Trade Marks Act as to infringement operate in this case.
[12] Section 6 of the Trade Marks Act deals with use of a sign or a trade mark. Section 6(b) says:
6 Meaning of use of sign
In this Act, unless the context otherwise requires, every reference to—
(a) the use of a sign in relation to goods is a reference to the use of the sign on, or in physical or other relation to, goods:
(b) the use of a sign in relation to services is a reference to the use of the sign in relation to the provision or availability of services:
...
[13] So in these these cases about use of the mark ―Joseph Gregory Hallett‖, we have to see whether it is used in relation to the provision or availability of services, in particular, as I show, whether it is used in relation to the classes of services for which the mark is registered.
[14] Section 89 of the Trade Marks Act says:
89 Infringement where identical or similar sign used in course of trade
(1) A person infringes a registered trade mark if the person does not have the right to use the registered trade mark and uses in the course of trade a sign—
(a) identical with the registered trade mark in relation to any goods or services in respect of which the trade mark is registered; or
(b) identical with the registered trade mark in relation to any goods or services that are similar to any goods or services in respect of which the trade mark is registered, if that use would be likely to deceive or confuse; or
(c) similar to the registered trade mark in relation to any goods or services that are identical with or similar to any goods or services in respect of which the trade mark is registered, if that use would be likely to deceive or confuse; or
(d) identical with or similar to the registered trade mark in relation to any goods or services that are not similar to the goods or services in respect of which the trade mark is registered where the trade mark is well known in New
Zealand and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.
(2) Subsection (1) applies only if the sign is used in such a manner as to render the use of the sign as likely to be taken as being use as a trade mark.
(3) Sections 92 to 98 override this section.
[15] Section 89(1) refers to use in the course of trade. It is quite apparent that Mr Williams has not used the words ―Joseph Gregory Hallett‖, or any variation of the mark, in the course of trade. Mr Williams is retired. He has used the name Hallett in evidence in the District Court and also arguably in an interview with the NZ Herald. But when he used the name Hallett in giving evidence in Court or in an interview with the NZ Herald, he was not using a variation of Mr Hallett’s mark in the course of trade.
[16] Arguably, the NZ Herald was using the name Hallett in the course of trade because it was carrying on the business activity of publishing a newspaper. But the matter does not finish there.
[17] Mr Ringwood identifies the particular use that is in question here. That is use within s 89(1)(c). That is because the exact trade mark has not been used in the NZ Herald article. Instead, variations of the mark, that is, simply the words Gregory Hallett and Hallett, instead of the full words Joseph Gregory Hallett have been used. In other words, the words used are similar to the mark, but not identical. There can only be an infringement under s 89(1)(c) if it is used in relation to goods or services in respect of which the trade mark is registered, if that use would be likely to deceive or confuse.
[18] First of all, the use of the words Gregory Hallett and Hallett have been used to refer to Mr Hallett personally. They have not been used to deal with the provision of banking services or credit institution services or any of the services in respect of which the trade mark has been registered. Secondly, they have not been used in a way that would be likely to deceive or confuse. ―Deceive or confuse‖ is being used in its intellectual property sense. That is, it is being used in the sense that the public would be confused into thinking that instead of going to deal with Joseph Gregory
Hallett they are going to deal with someone else providing services, for which the mark is registered. Here, it is quite clear that the use has been simply to identify Mr Hallett as the man who was sued by Mr Williams and who was the subject of the judgment of the District Court.
[19] The matter is also made clear by s 89(2). Subsection (1) applies only if the sign is used in such a manner as to render the use of the sign likely to have been used as a trade mark. That comes back to the point I made at the beginning. There can only be infringement when there is a use in a trade mark sense that is to identify products or services. In these cases there is simply reference to Mr Hallett in person. There is no attempt to refer to any goods or services being provided by Mr Hallett which come within the trade mark registration.
[20] Mr Hallett makes the point that under s 89(3), ss 92 to 98 prevail over s 89. These provide defences, if there is infringement under s 89. If there is no infringement under s 89, it is not necessary to consider the defences.
[21] S 92 says:
No infringement where trade mark used in circumstances not covered by registration
A registered trade mark is not infringed by the use of a trade mark in any way or in any circumstances to which, having regard to any conditions entered on the register in relation to the trade mark, the registration does not extend.
[22] Section 92 makes it clear that a registered trade mark is not infringed by use of a trade mark in any way or in any circumstances to which having regard to the conditions entered on the register, the registration does not extend. Mr Ringwood’s argument is that the classes of services for which the mark is registered are conditions within s 92. Mr Hallett did not suggest that ―conditions‖ meant anything other than that. The conditions make it clear that registration does not extend to general use of Mr Hallett’s name, which is really the essence of what he is complaining about here.
[23] Mr Hallett also referred to s 94 of the Trade Marks Act. Section 94 deals with there being no infringements of a trade mark if it is used for comparative advertising subject to a number of conditions being satisfied. There is no comparative advertising in this case. Further, as there is no infringement under s 89, it is not necessary to go on to consider s 94.
[24] Similarly, Mr Hallett referred to s 97. Section 97 is one of the defence provisions, but if there has been no infringement under s 89, then s 97 does not require separate consideration.
[25] These matters go in favour of both the defendants in 173 and also the defendant in 174. These matters are sufficient to show that there has not been any use of the trade mark which would constitute an infringement under the Trade Marks Act.
[26] There is an additional matter in respect of the defendants under 173. They say that Mr Gay is the journalist – he wrote the article, but they say that the other defendants did not have any part in the writing of the article or its dissemination. Mr Eustace and Mr Maasland are directors of APN companies. I can quite accept that they would have no part in the publication. Mr Tim Murphy is the chief editor of the NZ Herald. For summary judgment purposes, I would have to leave it open as a question of fact whether he has had any part. It is not something I can determine for summary judgment purposes.
[27] I am grounding my decision on the fact that there has been an absence of infringement and that absence of infringement is sufficient for me to hold that the defendants’ application for summary judgment succeeds. It also means that Mr Hallett’s application for summary judgment must fail.
[28] I need to add some other comments as well. As I have already stated, this is a judgment only about trade mark infringement. It is not a judgment about defamation. Defamation has not been raised in the pleadings. There was an attempt by Mr Hallett, and to a certain extent by Mr Williams, to re-argue the proceeding before Judge Hinton. It is not my role in this case to consider the merits of that.
[29] I also want to say something about Mr Hallett himself. Mr Hallett has issued these proceedings himself. He has not been legally represented. He has exhibited many of the characteristics of a vexatious litigant. His paperwork in this proceeding is baffling and diffuse. There is much extraneous material in it which is unfocused. Similarly, I found his submissions today to be long winded and unfocused. The circumstances of this case make it necessary to place on record that he has conducted himself vexatiously in this litigation. It is quite unmeritorious litigation. He seems to be intent on trying to establish a monopoly for his own name and to use trade mark registration to stop publication in the media of any references to him, unless he agrees with what is said. That is quite frankly an abuse of his trade mark. I find the present proceedings a clear abuse of procedure.
[30] I have now heard the parties as to costs. The defendants in 173 wrote a Calderbank letter to Mr Hallett spelling out to him the basis for saying that he had no case against them, predicting that his case would fail and offering not to seek costs against him if he were simply to drop the claim. That is a fairly standard Calderbank letter. Simply because a Calderbank letter is sent, does not give grounds for increased costs. A Calderbank letter can be sent which still simply justifies the award of normal scale costs. So the mere fact of sending a Calderbank letter is not grounds for increasing costs in this letter. There are, however, grounds for increasing costs in this case and that is because I regard these proceedings as devoid of any merit at all. The fact that Mr Hallett chose to pursue the proceeding despite the defendants’ lawyers spelling out for him clearly the defects in the case simply shows that Mr Hallett cannot complain that he was taken by surprise.
[31] This is an appropriate case for indemnity costs in the matter of 173. In giving indemnity costs though I emphasise that the costs must be fair and reasonable. The Court retains a discretion to determine what is reasonable. To allow that to be done I ask that the defendants’ lawyer file a memorandum setting out the costs and detailing the steps that have been taken and the basis for the charges so that I can determine the reasonableness of the charges.
[32] In the matter of 174, Mr Williams has largely undertaken the defence himself but he has had the assistance of a solicitor, Mr Reid. While Mr Reid may not have
had too much work to do, I am sure that there would have been some charge for his services and I make an award for indemnity costs in 174 as well. Again I ask that Mr Reid file a memorandum detailing the steps he has taken and a breakdown so that the Court can determine the reasonableness of those charges.
[33] Both defendants are to file their memorandum by the end of next week and I
will expect a reply from Mr Hallett by the end of the following week.
R M Bell
Associate Judge
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