Section 52 (now section 18 of the Australian Consumer Law) applies broadly to all misleading or deceptive conduct in trade or commerce regardless of whether consumers as defined in section 4(3) are involved, but the use of merely descriptive trade names by competitors will not ordinarily constitute a contravention.
Later decisions that cite Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd
Decisions cited by Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd
HORNSBY BUILDING INFORMATION CENTRE PTY. LTD. v. SYDNEY BUILDING INFORMATION
CENTRE LTD. [1978] HCA 11; (1978) 140 CLR 216
Trade Practices - Injunction
High Court of Australia
Barwick C.J.(1), Stephen(2), Jacobs(3), Murphy(4) and Aickin(5) JJ.
CATCHWORDS
Trade Practices - Consumer protection - Misleading or deceptive conduct - Name similar to that of company with established business - Passing off - Trade Practices Act 1974 (Cth), ss. 4 (3), 52*, 80**, 82.Injunction - Interim - Interlocutory - Principles to be applied.
* Trade Practices Act 1974 (Cth), s, 52 is set out at p. 22, post.
** The relevant provisions of s. 80 are set out at pp. 221-222, post.
HEARING
Sydney, 1977, October 25. 1978, April 19. 19:4:1978DECISION
1978, April 19.2. In my opinion, there was no ground whatever upon which the Industrial Court could properly have granted that injunction. Consequently, I would allow this appeal. (at p220)
3. In support of that course, I have formed the following conclusions:
(1) Section 52 is concerned with conduct which is deceptive of members of
the public in their capacity as consumers of goods or
services: it is
not
concerned merely with the protection of the reputation or goodwill of
competitors in trade or commerce.
(2) For the purposes of s. 52, consumers are not limited to the persons
described in s. 4 (3) of the Act.
(3) Whilst it may not be a valid objection to a proceeding brought to
restrain a deception of the public that, if successful, the
proceedings will
benefit the moving party in its trade or business, s. 52 does not give to the
Industrial Court a jurisdiction to
entertain passing off suits.
(4) The present suit was no more than a proceeding to protect the respondent
in its trade or business.
(5) The use by the appellant of its name was not deceptive within the
meaning and operation of s. 52 and s. 80.
(6) The names under which the appellant and the respondent operate were no
more than merely descriptive of the nature of the businesses
respectively
carried on by them.
(7) In any case, it is only in the most exceptional cases that the
Industrial Court should by interlocutory order restrain the
carrying on of a
business. As a general rule, the keeping of accounts in the interim whilst the
rights of the parties are determined
is not only preferable but sufficient to
protect the interest of the moving party. (at p221)
4. Since forming these views, I have had the advantage of reading the reasons for judgment prepared by my brother Stephen. I agree with those of the reasons which my brother expresses which support the above conclusions. I agree that the appeal should be allowed. The order of the Industrial Court should be set aside and the application for interlocutory relief dismissed with costs. (at p221)
5. It is apparent from the reasons expressed by this Court that no basis exists for the continuance of the proceedings in the Industrial Court, now the Federal Court of Australia. Unfortunately, the parties had not agreed to treat the motion for interlocutory relief as a motion for decree. Thus, this Court is unable to dismiss the proceedings commenced in the Industrial Court. No doubt, however, the Federal Court will now dismiss them. (at p221)
STEPHEN J. Section 52 of the Trade Practices Act 1974 (Cth) is in Pt V of
that Act and provides:
"(1) A corporation shall not, in trade or commerce, engage in conduct
that is misleading or deceptive.
(2) Nothing in the succeeding provisions of this Division shall be taken
as limiting by implication the generality of sub-section
(1).".
Section 80 (1) and (2) provides in part:constitutes or would constitute -
"(1) The Court may, on the application of
(a) the Attorney-General;
(b) the Commission; or
(c) any other person,
grant an injunction restraining a person from engaging in conduct that
(d) a contravention of a provision of Part IV or V;Court may grant an interim injunction pending determination of an application under sub-section (1)." (at p222)
(e)-(j) . . .
(2) Where in the opinion of the Court it is desirable to do so, the
2. Involved in this appeal is the meaning and effect of these two sections:
in particular whether they may be used by a trader to
safeguard its business
and reputation by preventing a competitor from trading under a deceptively
similar name. (at p222)
3. In December 1975 Sydney Building Information Centre Ltd. ("the Sydney Centre") obtained in the Australian Industrial Court an order calling upon Hornsby Building Information Centre Pty. Ltd. ("the Hornsby Centre") and a Mr. Flammang to show cause why the Hornsby Centre should not be restrained from engaging in conduct alleged to be misleading and deceptive. The relief sought was an injunction under s. 80 (1) of the Act and the order also fixed a time for the hearing of an application for an interim injunction under s. 80 (2). (at p222)
4. The conduct complained of was the carrying on of business by the Hornsby Centre under its corporate name, which was said to be likely to mislead or deceive because its use suggested some affiliation of the newly established Hornsby Centre with the long established Sydney Centre. (at p222)
5. On the hearing of the application for interim relief the Sydney Centre expressly disclaimed any monopoly in the words "Building Information Centre" and sought, by way of interim relief, only that the Hornsby Centre should include on all letterheads and the like and on all signs on which its name appeared the words "No connexion with the Sydney Building Information Centre Ltd.". Nevertheless, the order of the Industrial Court, made at the conclusion of argument on the application for interim relief, was one which, without qualification, then and there restrained the Hornsby Centre from continuing to carry on business under its own name or any name including the words "Building Information Centre". The Court also restrained Mr. Flammang, a former employee of the Sydney Centre and now managing the affairs of the Hornsby Centre, from aiding and abetting, inducing or being concerned in any contravention by the Hornsby Centre of the order made against it. An undertaking as to damages was taken from the Sydney Centre. The Court gave no reasons for its decision. From this order the Hornsby Centre now appeals, by leave of this Court. (at p223)
6. Section 52 (1) of the Act is expressed in wide terms and its generality is expressly preserved by sub-s. (2). Its operation requires the existence of three factors, a "corporation", its engagement in conduct answering the description of "misleading or deceptive" and the occurrence of that conduct "in trade or commerce". If each of those factors be present a contravention of s. 52 will occur. Section 80 (1) will then apply and the Court, at the relevant time the Industrial Court but now the Federal Court, may grant an injunction restraining that conduct as a contravention of Pt V of the Act. (at p223)
7. The kind of business which each of these Centres carries on is conveyed by their corporate names, a fact which, as will appear, is of itself of considerable importance. They each provide a display or exhibition centre where building products and techniques, including exhibition houses and room settings, may be displayed to the public by builders and suppliers of materials who choose to become exhibitors. A great variety of associated services, all connected with the building industry and its promotion, are also provided. The premises of the Sydney Centre are in the city of Sydney itself, its business has been established for almost twenty years and it has built up a valuable goodwill. Until the Hornsby Centre was established it was the only building information centre in the Sydney area. The Hornsby Centre has its premises in the Sydney suburb of Hornsby. It began business only in 1975. Entrance to each Centre's exhibition is free to members of the public, who are, of course, encouraged to attend; but it is with those who wish to become exhibitors and display their products at the Centres that each Centre has its business dealings and from whom it derives its revenue. (at p223)
8. The Hornsby Centre contends that for a variety of reasons the Industrial Court was wrong to make any interim injunction against it. Its broadest contention is that s. 52 may not be used, as the Sydney Centre has used it, to enforce rights and protect interests more usually enforced and protected by recourse to a passing off action; the section, it is said, is concerned only with the protection of consumers and not of traders who, like the Sydney Centre, complain of the effect upon their business of the conduct of a competitor. (at p223)
9. This contention has some merit, although its merit does not, I think, lie quite where counsel for the Hornsby Centre seeks to locate it. It was upon the heading to Pt V of the Act, "Consumer Protection", that reliance was principally sought to be placed, that heading being interpreted in the light of the quasi-definition of "consumer" in s. 4 (3) of the Act. In my view this heading does not restrict the effect of s. 52 in the manner contended for, although it does colour the meaning to be given to the sort of conduct against which the section is aimed. (at p224)
10. Let me first state why I reject the Hornsby Centre's submission in the form in which it was urged on this appeal, for that purpose restating what I understand to be its substance. It is said that the heading "Consumer Protection" operates to confine s. 52 so that it only applies to dealings with consumers, who are to be understood as limited to those referred to in s. 4 (3) of the Act; since the Hornsby Centre does not trade with any such consumers, has no business relations with them, s. 52 will not apply to it. (at p224)
11. A consumer, in the traditional vocabulary of political economy, is the
opposite of a producer (Oxford English Dictionary) and,
although the
description is commonly applied to one who uses up substances so as to result
in their destruction, whether by eating
them, burning them, wearing them away
or the like, modern usage has extended its meaning to include those who make
use of services
(Oxford English Dictionary Supplement (1972)). The Act has
adopted this wider usage: in Div. 2 of Pt V, concerned with conditions
and
warranties in consumer transactions, those in receipt of services are, equally
with those in receipt
of goods, spoken of as consumers.
The provisions of s. 4
(3) (b) of the Act, which appear below, reflect this wider usage. However it
is said on behalf of the Hornsby
Centre that although consumer protection
will
extend to services it is to be confined to the protection of those who receive
services
for their own personal use and not for
purposes of trade or business
and who may, for brevity, be called "private users". Section
4 (3) (b) is
invoked in support of this submission. I set out the whole of s. 4 (3):
"(3) For the purposes of this Act, unless the contrary intention appears
-
(a) a person who acquires goods shall be taken to be a consumer of the
goods if the goods are of a kind ordinarily acquired for
private use or
consumption and the person does not acquire the goods or hold himself out as
acquiring the goods for the purposes
of re-supply; and
(b) a person who acquires services shall be taken to be a consumer of the
services if the services are of a kind ordinarily acquired
for private use or
consumption and the person does not acquire the services for the purposes of,
or in the course of, a profession,
business, trade or occupation or for a
public purpose."
These quasi-definitions of consumers of goods and of services are said to
limit the meaning of the heading to Pt V, "Consumer Protection",
the heading
in turn limiting the operation of Pt V and, in consequence, of s. 52 by
confining its application, so far as concerns
services, either to corporations
engaged in trade or commerce with private users
or, less narrowly, to conduct
which misleads private
users. (at p225)
12. Because of some of the differences appearing in the descriptions in s. 4
(3) of consumers of goods and consumers of services,
any general limitation
upon the operation of Pt V which is said to result from these
quasi-definitions of "consumer", working through
the effect of the heading
"Consumer Protection",
would be one the boundaries of which would be both
obscure and intricate. But it
is not upon this ground that I reject this
suggested
limitation; it is rather because I do not regard it as appropriate
that the
unambiguous words of s. 52 should be given some unnaturally confined
meaning because of the heading to Pt V. Even were that heading
to be regarded
as controlling, it is, I think, by no means clear that it would be appropriate
to import into
the heading the quasi-definitions
of "consumer" in s. 4 (3). Be
that as it may, I would adopt what was said by Latham C.J. in Silk Bros Pty.
Ltd. v. State Electricity
Commission (Vict.)
[1943] HCA 2; (1943) 67 CLR 1, at p 16
concerning the use of headings in the interpretation of statutes. His
Honour
said:
"The headings in a statute or in Regulations can be taken into
consideration in determining the meaning of a provision where
that provision
is ambiguous, and may sometimes be of service in determining the scope of a
provision (see In re Commercial Bank of
Australia Ltd. (1893) 19 VLR 333, at p
375 ). 'But where the enacting words are clear and unambiguous, the title, or
headings, must
give way, and full effect must be given to the enactment'
(Bennett v. Minister for Public Works (N.S.W.) [1908] HCA 50; (1908) 7
CLR 372, at p 383
,
per Isaacs J.)." (at p225)
13. To subject the clear and quite general words of s. 52 to some limitation
derived from the heading to Pt V is, I think, especially
inappropriate in the
case of this particular legislation. The Act is intricately drafted, some of
its provisions being expressed
in terms of broad generalities, as is s. 52,
others in elaborate detail. Each may be seen to take the precise form it does
because
of the particular work intended for it. That
s. 52 (1) is intended to
be a provision having a broad reach is made clear by the express
provision in
s. 52 (2) preserving its "generality" from any limitation which might be
thought to arise from the more specific provisions
of succeeding
sections. It
is also significant that the quasi-definitions of "consumer" in s. 4 (3)
appear to have little application
to most of the provisions of Div. 1 of Pt V;
it is on Div. 2 that they principally operate. To interpret the provisions of
Div. 1
in the light of the quasi-definitions, applied,
through this heading,
to the entire Part, will be to distort in numerous respects
the otherwise
clearly apparent legislative pattern
manifest in Pt V. (at p226)
14. It is, no doubt, somewhat of a novelty that a quite extensive jurisdiction in passing off actions, traditionally the concern of the Supreme Courts of the States, should be conferred upon the Industrial Court and that this should be done by an Act described as one "relating to certain Trade Practices" and by sections not very explicitly directed to such a subject matter. However this is, I think, but a consequence of the very direct relationship which necessarily exists between the deception of consumers in the course of trade and the injury caused by the unfair practices of a trade rival. Such deception will quite often be the means adopted to produce that injury. Legislation which aims at the prevention of the former will at the same time tend to put an end to the latter. If, moreover, the legislative prohibition can be enforced by an injunction which "any other person" may seek (see s. 80 (1)), it then becomes possible for a trader, injured by the competition of his trade rival, to gain a remedy under the Act instead of having recourse to civil action by way of proceedings for passing off. The remedy in such a case will not, as in passing off, be founded upon any protection of the trader's goodwill but, being directed to preventing that very deception of the public which is injuring his goodwill, it will nevertheless be an effective remedy for that of which he complains. The provisions of s. 82, not invoked in this case, which allow a person who suffers loss by another's act which is contravention of s. 52 to recover by action the amount of his loss, may render the statutory remedy even more complete. (at p226)
15. It follows from what I have said that in my view the Sydney Centre is not to be excluded from recourse to relief under s. 80 against contravention of s. 52 (1) because there are no private users of its services or because it has initiated these proceedings essentially for its own purposes in protection of its own interests and not those of consumers. (at p226)
16. The Sydney Centre will, however, only be entitled to relief if what is in question is truly a contravention of s. 52 (1); that is to say, is conduct which is misleading or deceptive. It is only this with which s. 52 (1) is at all concerned. It is not concerned, as such, with any unfairness of competition in trade as between two traders. The section is said to have been modelled on s. 5 of the United States Federal Trade Commission Act (15 U.S.C. 45) but is significantly different both in form and in origin. The United States section, when first enacted in 1914, was exclusively concerned with "unfair methods of competition in commerce" and only in 1938, when amended so as to strike at "unfair or deceptive acts or practices in commerce", did it for the first time also embrace within its scope the subject of consumer protection (55 Am. Jur. 2d par. 736). Section 52 of our Act is on the contrary exclusively concerned with consumer protection. It says nothing about unfair acts or practices but devotes itself to the prohibition of conduct which misleads or deceives. It is in its emphasis upon this aspect of s. 52 that the merits of the Hornsby Centre's submissions lie. (at p227)
17. In determining the meaning of "misleading or deceptive" in s. 52 (1) and in applying it to particular circumstances the law which has developed around the tort of passing off, founded as that tort is upon the protection of the plaintiff's intangible property rights, may not always provide any safe guide. However the long experience of the courts in that field should not be disregarded, some principles which have been developed appear equally applicable to s. 52 (1). One of these bears upon the circumstance that what the Hornsby Centre has done is, in a sense, no more than to use its own corporate name in association with its activities. No doubt the meaning of the statutory prohibition which s. 52 (1) enunciates must be gained from the terms of the sub-section itself; but nothing in those terms suggests that a statement made which is literally true, i.e., that the centre at Hornsby is conducted by Hornsby Building Information Centre Pty. Ltd. may not at the same time be misleading and deceptive. It clearly may be. To announce an opera as one in which a named and famous prima donna will appear and then to produce an unknown young lady bearing by chance that name will clearly be to mislead and deceive. The announcement would be literally true but none the less deceptive, and this because it conveyed to others something more than the literal meaning which the words spelled out. Thus, in passing off, a newly incorporated defendant company may not use, in its newly established business, its true corporate name if it be deceptively similar to that of a plaintiff with an established reputation (Fine Cotton Spinners and Doublers' Association Ltd. v. Harwood Cash & Co. Ltd. (1907) 2 Ch 184, at p 190 ). What has been said of passing off actions applies equally in the present case; as Buckley L.J. remarked in John Brinsmead & Sons Ltd. v. Brinsmead (1913) 30 RPC 493, at p 506 , a statement which is literally true and accurate may nevertheless carry with it a false representation. Lord Morris expressed much the same notion in Parker-Knoll Ltd. v. Knoll International Ltd. (1962) RPC 265, at p 279 . The same will apply in relation to s. 52 (1). (at p228)
18. Again, in s. 52 (1) nothing turns, I think, upon the intent of the Hornsby Centre. In the tort of passing off the defendant's absence of intention to deceive will not provide him with a defence (Baume & Co. Ltd. v. A. H. Moore Ltd. (1958) 1 Ch 907, at p 916 ); "trading must not only be honest but must not even unintentionally be unfair" (Parker-Knoll Ltd. v. Knoll International Ltd. (1962) RPC, at p 278 per Lord Morris; and see Ewing v. Buttercup Margarine Co. Ltd. (1917) 2 Ch 1 ). As I read s. 52 (1) the same may be said of it, it is concerned with consequences as giving to particular conduct a particular colour. If the consequence is deception, that suffices to make the conduct deceptive. Section 52 (1) creates no offence, it only prescribes a course of conduct deviation from which may result in an order of the Court, made under s. 80 of the Act, forbidding further deviation in the future. The section should be understood as meaning precisely what it says and as involving no questions of intent upon the part of the corporation whose conduct is in question. (at p228)
19. When, as in s. 52 (1), the focus is upon the misleading of others rather than upon the injury to a competitor, it becomes of particular importance to identify the respect in which there is said to be any misleading or deception. The particular feature of the Hornsby Centre's conduct of which the Sydney Centre complains as being misleading and deceptive is not simply the use of its corporate name, so similar in part to its own name, but rather that by that use others are led to believe that the Hornsby Centre is a branch of, or is otherwise associated with, the Sydney Centre. (at p228)
20. The Sydney Centre tendered some evidence that persons had been misled in this way and for present purposes I will assume that this has occurred. But to determine whether there has been any contravention of s. 52 (1) it is necessary to inquire why this misconception has arisen in the minds of others. This necessarily leads one to examine the name of the Sydney Centre. The name which it adopted as its own consists of three descriptive words, prefixed by a word of locality, the whole of which it uses as its trade and corporate name. Having done so it cannot, as it acknowledges, claim any monopoly in the descriptive words; yet it does in fact seek to impose conditions upon another's use of those words, the condition being that an explanatory disclaimer should accompany that use. The Court, of course, has gone much further, it has granted to the applicant an interim monopoly in those words, despite the fact that the Sydney Centre neither claimed that monopoly nor now seeks to retain in that extreme form the injunctive relief which it has now obtained below. (at p229)
21. The use by the Sydney Centre of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities. That it has, over the years, appreciated their value as descriptive of its business is shown by the fact that some of the signs on its premises have been confined to the two words "Building Centre" and that the large illuminated signs and the like which it has displayed on its premises, and which are perhaps more in the nature of advertising material then mere identification, have omitted the word "Ltd.", using all three descritive words prefixed by "Sydney". (at p229)
22. There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42 , per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43 , the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to 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 p229)
23. If this be so in the case of passing off actions the case of s. 52 (1), concerned only with the interests of third parties, is a fortiori. 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. (at p230)
24. There is an additional factor, quite special to these parties and their names, which is material to the present case. The descriptive words which each of the parties have used in their names have somewhat of a non-commercial air to them. They rather suggest that these centres are places removed from the crass influences of commerce, that they are, rather, some sort of non-profit organization, perhaps industry-supported, perhaps government-funded; at all events dedicated to purveying, for the public good, information about building. Names of this sort are, of all descriptive names, perhaps most prone to foster in the minds of the public the impression that the premises and activities to which they are applied are in some way linked to those of other like premises. This will be enhanced when the descriptive words are prefixed by a regional name, so as to suggest that the premises are the centres provided for the region in question. In our community a wide spectrum of needs are met by entities described as baby health centres, family planning centres, elderly citizens' centres, rape crisis centres, each is a familiar form of community facility. For the Sydney centre to adopt a name suggestive in this way of a non-profit, community facility may readily lead to some persons believing that other like centres set up in the State are in some way connected with it. (at p231)
25. There was evidence before the Industrial Court about the antecedents and activities of the Hornsby Centre from which it could have concluded that those concerned with that Centre's activities were intent to benefit from the good repute which the Sydney Centre had, over the years, created for the particular kind of services, unique of their kind, which it had offered as the only building information centre in the Sydney area. However to say this is not to suggest any wrongdoing on their part. Neither the concept of such a centre nor its conduct is anything for which a monopoly can be claimed, any more than it could be claimed for, say, an art gallery. If the first commercial art gallery in a city meets with an enthusiastic response from the public, competitive galleries are likely to be attracted to the field. They will be free to enter it and to describe themselves as art galleries, that being the descriptive name appropriate to their business; and this despite the fact that the pioneer gallery might have chosen also to style itself "art gallery", prefixed by a regional name. For competitors' conduct to be misleading and deceptive they would have to have adopted as their names the same or a similar regional prefix followed by "art gallery". A quite distinct regional prefix, followed by "art gallery" would neither mislead nor deceive. The opposite view would involve treating this provision of the trade practices legislation as the source of a newly created monopoly heretofore unknown to the law and likely to deter new entrants into a field which ought to be open to legitimate competition. It is difficult to contemplate any less likely legislative source of such a consequence. The present case of building information centres is, I think, no different in principle. (at p231)
26. It follows that I do not consider that there was here any material upon which the Industrial Court could properly have concluded that anything in the nature of a contravention of s. 52 (1) had been made out. What it was which led it into error and the precise nature of that error must remain a matter for speculation. Its failure to give reasons for the making of its order is to be regretted, not least because in consequence the task of an appellate court is made the more difficult since it is thereby deprived of whatever assistance reasons for judgment might have afforded in revealing the reasoning below. One example will suffice: it cannot be known whether the Court approached the grant of interlocutory relief upon the basis adopted by this Court in Beecham Group Ltd. v. Bristol Laboratories Pty. Ltd. [1968] HCA 1; (1968) 118 CLR 618 or instead preferred that adopted by their Lordships in American Cyanamid Co. v. Ethicon Ltd. [1975] UKHL 1; (1975) AC 396 ; both authorities were cited to the Court in argument. (at p232)
27. I would allow this appeal and would dissolve the interim injunctions granted against the Hornsby Centre and the secondnamed appellant. (at p232)
JACOBS J. I would allow the appeal. I have read the reasons for judgment prepared by Stephen J. I agree with those reasons and do not wish to add anything. (at p232)
MURPHY J. On the application of the respondent, the Australian Industrial Court restrained the first appellant until further order from carrying on business under the name of "Hornsby Building Information Centre Pty. Ltd.", or any name including the words "building information centre". It also restrained the second appellant from aiding (etc.) in any breach of the first order. The second appellant's position need not be dealt with separately. (at p232)
2. The application was founded on ss. 52 and 80 (2) of the Trade Practices
Act 1974, as amended. These state:
"52 (1) A corporation shall not, in trade or commerce, engage in conduct
that is misleading or deceptive.
(2) Nothing in the succeeding provisions of this Division shall be taken
as limiting by implication the generality of sub-section
(1)."
"80 (2) Where in the opinion of the Court it is desirable to do so, the
Court may grant an interim injunction pending determination
of an application
. . ."
The expression "interim injunction" includes "interlocutory" injunction. (at
p232)
3. Injunction pending determination should not be granted routinely, but courts should not be inhibited from granting it where to do so is desirable for the public's protection. There is no simple formula for defining the circumstances in which it should be granted. The apparent strength of an applicant's case is an important factor, but there is no rule that an applicant must show that it is more likely than not to finally succeed. For example, where safety or health are involved, interim injunctions may be properly granted if an applicant may succeed at the hearing (or on appeal) although it does not appear that he is likely to succeed, but should not be granted if there is no real chance of final success. (at p233)
4. The appellants seek to set aside this interim injunction granted by the Australian Industrial Court. The respondent had sought a more qualified injunction. In this Court the respondent did not support the Australian Industrial Court's order, but still sought a more limited order. Much argument was addressed to the question whether the respondent could succeed on the final determination of the application for injunction. In my view (irrespective of any proprietary rights in the respondent), if the appellant's conduct in using the words "Hornsby Building Information Centre", is capable in the circumstances of misleading or deceiving persons into regarding its Centre as associated with the Sydney Building Information Centre, then the Court may under s. 80 (1) enjoin the appellants from the conduct unless precautions are taken to overcome the misleading or deceptive nature of the conduct (for example, by identifying the Centre as the first appellant's own). The requirement that such precautions be taken should be reviewable, in order to meet the practical necessities. The case raises considerations resembling those in Sears, Roebuck & Co. v. Stiffel Co. [1964] USSC 68; (1964) 376 US 225, at pp 231-233 (11 Law Ed 2d 661, at pp 666-668) and Compco Corp. v. Day-Brite Lighting Inc. [1964] USSC 77; (1964) 376 US 234 (11 Law Ed 669) (in which the national-state legislative roles were opposite to those here). There was much evidence to the effect that the Sydney Building Information Centre was conducting a service primarily of "presenting and disseminating information on past building techniques, modern trends and progress in the building industry, particularly with reference to building materials, building practice and building industry products and their correct use, to professional trade and private users of information, materials and products". It had become accredited with the international Permanent Conference of Building Centres and had received much official recognition for its educational activities and services to the building industry and the public. (at p233)
5. However, I agree that the Australian Industrial Court was in error in granting the unqualified injunction pending the hearing and its order should be set aside. In my opinion, on the material before the Court, it could have properly granted an interim injunction against using the name unless precautions were taken to overcome any misleading or deceptive effect by identifying the appellant's Centre as unassociated with any other. (at p233)
6. In the course of argument, many contentions were canvassed on the interpretation and proper application of the Trade Practices Act. I will express brief conclusions on some of these. (at p234)
7. Section 52 which is in Pt V of the Trade Practices Act is not limited or qualified by the heading of the Part "Consumer Protection". The section applies wherever a corporation (or a person in the circumstances mentioned in s. 6) in trade or commerce engages in misleading or deceptive conduct. The words, "trade or commerce", are extremely wide. The conduct of the appellant was obviously in trade or commerce. Conduct is deceptive or misleading if it has a capacity or tendency to mislead or deceive; intention to mislead or deceive is not required. The section is of course not confined to passing-off, although passing-off is a classical example of misleading or deceptive conduct which may be dealt with under these provisions. Where misleading or deceptive conduct relates to confusion between the corporation's products or services and those of another, s. 52 extends to, but is not confined to, conduct which infringes some proprietary right of that other. (at p234)
8. Section 80 (1) provides:
"The Court may, on the application of -constitutes or would constitute -
(a) the Attorney-General;
(b) the Commission; or
(c) any other person,
grant an injunction restraining a person from engaging in conduct that
(d) a contravention of a provision of Part IV or V;a provision;
(e) attempting to contravene such a provision;
(f) aiding, abetting, counselling or procuring a person to contravene such
9. This remedy may be applied for by anyone, including a person who does not
fear being deceived or misled. Indeed, the circumstances
would be very unusual
where the person seeking an injunction against deceptive or misleading conduct
would be apprehensive of being
deceived or misled. A trade competitor may
claim an injunction, even if its motivation is to prevent the defendant from
passing-off
its goods or services as those of the claimant. (at p234)
10. In the granting of an interim injunction in proceedings such as this, the convenience of the defendant is, of course, relevant, and the public interest is a powerful consideration. The principles to be applied in such cases will differ markedly from those evolved by equity courts in cases concerned with competing private rights and obligations. Some equitable doctrines and practices are grounded on principles of fairness and justice which are applicable generally. Some are so connected with competing private rights that they are quite foreign to the application of s. 80 of the Trade Practices Act in relation to s. 52. The wholesale carry over of such principles concerning the granting of permanent or interlocutory injunctions would frustrate the evolution of principles more appropriate to the Trade Practices Act. (at p235)
11. The appeal should be upheld and the order set aside. (at p235)
AICKIN J. I agree with the reasons for judgment prepared by the Chief Justice and have nothing to add. (at p235)
ORDER
Appeal allowed with costs.Order of the Industrial Court granting interlocutory injunctions set aside.