zea CATCHWORDS (ee Trade Practices - Application for suspension of operation of interim injunction restraining respondents from using the word "Visa" in connection with business name - Application to use word "Visa" with disclaimer of association - Consideration of effectiveness of disclaimer - Consideration of balance of convenience - Mitigation of interim loss of goodwill. Trade Practices Act, s.52 Travel Agents Act, 1973 (N.S.W.) Visa International Service Association v. Beiser Corporation Pty. Limited; Mark Beiser; Jack Beiser No. G167 of 1983 Beaumont, J. 16 August, 1983. Sydney. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION No. G1l67 of 1983 BETWEEN : VISA INTERNATIONAL SERVICE ASSOCIATION Applicant AND BEISER CORPORATION PTY. LIMITED MARK BEISER JACK BEISER Respondents ORDER Judge making order; Beaumont, J. Date of order: 16 August, 1983. Where made: Sydney THE COURT ORDERS THAT: 1. I grant leave to the first respondent to use the name "World Visa Travel Service" 1n connection with its ragistration as a travel agent under the provisions of the Travel Agents Act, 1973 (N.S.W.) or under any similar legislation and in connection with its accreditation with International Air Transport Association ("T.A.T.A."). Leave is otherwise refused. 2. ZI suspend the operation of the injunction (being Order 1 made on 25 July, 1983) up to and including 22 August, 1983. 3. I order that the costs of this application be the applicant's costs in the proceedings. 4, I fix 16 August, 1983 as the date within twenty one days after which any notice of appeal shall be filed and served for the purposes of Order 52 Rule 15(1) (a) (211). IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION No. G167 of 1983 BETWEEN VISA INTERNATIONAL SERVICE ASSOCIATION Applicant AND BEISER CORPORATION PTY. LIMITED MARK BEISER JACK BEISER Respondents CORAM Beaumont, J. os Dated: 16 August, 1983 REASONS FOR JUDGMENT (No. 2) In the principal proceedings in this matter on 25 July, 1983, I granted an interim injunction, pending a final hearing, restraining the respondents from using the word "Visa" in or in connection with the1r business name without the consent of the applicant or the leave of the Court. The operation of the injunction was suspended until 12 August, 1983. I reserved to any party general liberty to apply and I further resexved to the respondents specific liberty to apply in respect of the further suspension of the operation of the injunction. Pursuant to the leave reserved to them, the respondents have filed a notice of motion seeking the leave of the Court to use the name "World Visa Travel Service" orovided tnat tne worés "not associated with Visa International Service Association" apoear immediately beneath the said name whereve ta] ct ae iN) ci : ct) a fu he o 1) io uw cy ion - 2 - by Yhe respondenis. The present application has, to some degree, involved an attempt by the respondents to agitate again matters determinec _ adversely to them upon the application for interlocutory relief. In particular, the respondents again submitted that the appro- priate interim relief, if any, in the present case would be the grant of a limited injunction which restrained the use of the word "Visa" except where it clearly distinguished its business from that of the applicant. In my earlier judgment, I reZzerred to the difficulties of correcting first impressions in this context (at p.13). I had in mind the evidence proferred at the time of proposed additions to the letterhead of the first respondent. That evidence failed to convince me then, as it does now, that mem- bers of the public would pick up the intended significance of the disclaimer. In a case such as the present where the applic- ant has established a strong case in respect of the word in question, 1t 1s difficult in the extreme to formulate a dis- claimer which will be effective so as to dispel in the minds of consumers or potential consumers an association with the business of the applicant. Although the respondents have tendered further evidence of suggested disclaimers, I doubt whether it is possible to devise a formula of disclaimer which would sufficiently detract from the overriding prominence which the word "Visa" has in the minds of consumers by reason of its well-established association with tne business of the applicant. The position 1s made.more difficuis by the circun- stance that, to a significant degree, there are common fields of activities between tne vacties: where the activities of the parties do not overlap, it is no doubt feasible to devise a disclaimer which effectively distinguishes the two businesses. In the end, the question 1s one of impression but I am far from satisfied that any of the steps proposed by the respondents to be taken to distinguish the two businesses would do so effectively. In any event, the problems raised by such an approach in terms of supervision by the Court of the various steps proposed to be taken are by no means insignificant. On the balance of convenience, a number of further matters have emerged. First, the Union Steamship Company Limited, the seller of the travel business to the first respondent, has indicated that, pending the outcome of these proceedings, the respondents may continue the use of the name "Union Travel". This circumstance should at least mitigate any interim loss of good- will suffered by the respondents by reason of the interlocutory restraint. At the hearing of the application for interlocutory relief, Mr. Beiser gave evidence that the first respondent had contractually bound itself to the Union Steamship Company Limited not to use the name "Union Travel" notwithstanding its purchase of the goodwill of that business. In the present application, evidence was given that, before the interlocutory hearing, Union Steamship Company Limited, contrary to my previous impression, had agreed to tne use of the name "Union disbute with the applicant. Since the goodwi1l1 of the "Union Travel" business was onlv recantly surchased by che first respondent, presumably there are advantages in its continuing to use that name. Indeed, again contrary to my previous impression, the first respondent has continued to use the name "Union Travel" at its branch offices at Blacktown and : Penrith, N.S.W. and in Brisbane, Queensland. In Brisbane, the business name "Trans-Tours Travel Shop" is also used. The Carlingford, N.S.W. branch carries on business under the name of "Carlingford International Travel". : The present position then is as follows. The applicant presents a strong prima facie case. The respondents proffer a disclaimer. There are practical difficulties in ensuring that the disclaimer will be effective so far as consumers or potential consumers are concerned. On the balance of convenience, . the respondents will suffer little, 1f any, prejudice by reason of the interim restraint, since 1t is able to continue to use Lt the name of the business only recently acquired by it. follows, in my opinion, that the present application should be refused. As a separate matter, the first respondent has indicated prejudice which it would suffer in terms of its registration ' under its present business name for statutory purposes such as ' the Travel Agents Act, 1973 (N.S.W.) and for commercial purposes such as accreditation with the Internationai Air Transport Association ("I.A.T.A."). Drama Facre at least, consumers would 20c be affected 12, for such purposes, the first respordéent continued to use 1ts present business name. The apolicant does Ps not object to use of the name for these pursoses which are -5- - substantially of an internal kind. I therefore propose to make the follow1ng orders on this application: l. I grant leave to the first respondent to use the name "World Visa Travel Service" in connection with its registration as a travel agent under the provisions of the Travei Agents Act, 1973 (N.S.W.) or under any similar legislation and in con- nection with its accreditation with I.A.T.A. Leave is otherwise refused. ~ 2. I suspend the operation of the injunction (being Order l made on 25 July, 1983) up to and including 22 August, 1983. 3. I order that the costs of this application be th applicart's costs in the proceedings. 4, I fix 16 August, 1983 as the date within twenty one days after which any notice of appeal shall be filed and served for the purposes of Order 52 Rule 15(1) (a) (111). io s = 4 { z rus copy of the i Reasons for vudgment herein of his Sonour art a Amenan-ta-s + 77 lg ASSOCLAUES AN