CATCHWORDS Trade and commerce - trade practices ~ conduct likely to mislead or deceive - passing off - company about to commence businesS as a_ stockbroker in name of Bridge Stockbrokers Limited - applicants an established stockbroking firm carrying on business as Bridges, Son and Shepherd - applicants' firm sometimes known as "Bridqges" ~ application to restrain company from carrying on business un 1ts corporate name. Trade Practices Act 1974. sub-sec. 92(1) BFIDGES AND ORS. v. BRIDGE STOCKBROKERS LIMITED AND OPS. No. 3200 of 1984 Coram: Sheppard J. 17. 18 July 1384 Svaney IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. G200 of 1984 ) GENERAL DIVISION ) BETWEEN: BRIDGES AND ORS. Applicants AND: BRIDGE STOCKBROKERS LIMITED AND ORS. Respondents ORDER JUDGE MAKING ORDER : Sheppard J. DATE OF ORDER : 118 July 1984 WHERE MADE : Sydney THE COURT ORDERS THAT lL. The existing injunctions be dissolved. 2: The first respondent by itself its servants and aqents be restrained from selling, offering for sale, providing or advertisirg any of its services or otherwise carrying on its business under the name "Bridge Stockbrokers Limited". 3. The first respondent by itself. 1ts servants and agents be restrained from selling, offering for sale, providing or advertising any of its services or otherwise carrving on its business under any name incorporating the word 2. "Bridge" without clearly distinguishing such business from the business carried on by the applicants under the name "Bridges Son and Shepherd". The cross-claim be dismissed. 7. The first and second respondents pay the applicants' costs of the proceedings. There be no order in relation to the costs of the third respondent. Exhibits 1, 2 and 11 may be returned. The remaining exhibits may be returned after the expiration of 21 days if in the meantime no appeal has been lodged. IN_THE COURT OF AUS IA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. G200 of 1984 ) GENERAL DIVISTON ) BETWEEN: BRIDGES AND ORS. Applicants AND: BRIDGE STOCKBROKERS LIMITED AND ORS. Respondents SHEPPARD J. 17_ JULY 1984 REASONS FOR JUDGMENT These are cross applications for injunctive relief. The applicants seek injunctions restraining the first respondent from carrying on business as a_ stockbroker in its corporate name. The causes of action relied upon are threatened breaches of s. 52 of the Trade Practices Act and a threatened passing off. The second respondent, Mr. Moore, is the managing director of the first respondent. The applicants seek to restrain him from causing or permitting the first respondent to carry on business as aforesaid. The third respondent, the Corporate Affairs Commission, has threatened to cancel the registration of a business name, "Bridge Stockbrokers", which the applicants have registered in New South Wales. The third respondent has submitted to such order as the Court sees fit to make except as to costs. By 2. their cross claim the first and second respondents seek to restrain the applicants from using the name "Bridge Stockbrokers". Originally both applications for injunctions were interlocutory applications. At the conclusion of the hearing counsel for the first and second respondents (referred to hereafter as "the respondents") said that his clients were prepared to have the hearing treated as a final one. Counsel for the applicants did not then agree to that course. Since I reserved my decision, however, counsel has informed me that the applicants are also prepared to have the hearing treated as a final one. I shall proceed accordingly. The first applicant, Mr. Bridges, is the senior partner of a Sydney stockbroking firm known as Bridges, Son & Shepherd. Members of the firm are members of the Sydney Stock Exchange. The applicants are all the partners in the firm. The firm was formed in 1976 when Mr. Bridges left another partnership, Mullens and Co., of which he had been a partner for some years. The original partners of the firm were Mr. Bridges and his son and Mr. Shepherd who are the second and third applicants. Earlier this year the firm opened an office in Melbourne. It trades in its own name on the Melbourne Stock Exchange and onthe Brisbane Stock Exchange through an agent. 3. Until recently the rules of the Sydney Stock Exchange precluded advertising by firms of stockbrokers and most Clients were introduced by recommendations made by their friends, associates and existing clients. Advertising is now permitted. The firm has commenced to advertise in the financial press and magazines. In anticipation of the deregulation of the stockbroking industry the firm has spent over $35,000 on promoting itself as a "Full Service Broker" by means of advertisements and promotional material. It proposes to continue to advertise. According to the unchallenged evidence of Mr. Barton, who is another of the applicants, it was in anticipation of deregulation that the firm decided to promote itself as one which offered thorough and extensive service to its clients going far beyond acting as broker in relation to transactions entered into by them. The firm has adopted a policy of offering private investors "a thorough and comprehensive service rather than acting simply as the agent of clients on the trading floor or endeavouring to attract business from large institutional investors". In evidence are various brochures, advertisements and newspaper and magazine articles about the firm. In its own material, that is, in its advertisements and brochures, the firm is invariably referred to as "Bridges, Son and Shepherd". But in some of the newspaper articles the firm is 4. referred to as "Bridges". That is how it is known amongst stockbrokers and some of the larger investors in the community. The Stock Exchange issues badges to its member firms, many of whom are known and referred to in an abbreviated way. The firm's badge simply says "Bridges". The firm's booth on the trading floor of the Sydney Stock Exchange has for many years been marked "Bridges". There are a number of affidavits from other stockbrokers and from senior executives of institutional investors which confirm that the firm is known as "Bridges". These affidavits have been sworn by Mr. L.G.I. Bode, Mr. J.H. Cooper, Mr. K.J. Polkinghorne, Mr. W.M. Flitcroft and Mr. J.R. Warner, all of whom are stockbrokers, and by Mr. Gunnar Seck, who is an investment officer of Amev Life Assurance Company Limited, Mr. J.M. Kouvelis, a director of a company trading. as "Retireinvest", Mr. W.R. Gates, a portfolio manager employed by Westpac Investment Management Pty. Limited and Mr. V.T. Christie who is the managing director of the Commonwealth Banking Corporation. The second respondent, Mr. Moore, has been involved in the stockbroking industry for most of his working life. In 1968 he became the senior partner of a newly established firm, Jackson Graham Moore and Partners. The clientele of the firm covered a wide spectrum from small and irregular investors to large local and overseas institutions. The firm 5. had branch offices at one time or another in Melbourne, London and Singapore. Mr. Moore retired from the firm in 1976 and began to develop a business which was then carried on and is presently carried on internationally under the name, "Bridge Data Company". That firm did not operate in Australia until early in 1982. The business of the firm is to provide investors in Stock markets, option markets and commodity markets with "highly detailed, highly sophisticated and virtually instantaneous information on movements and influences in all such major markets throughout the world". The information is provided through computer links with computers operated by the firm in St. Louis, in the United States of America, Bures in Suffolk in the United Kingdom and in Sydney. The information is received by subscribers on terminals installed in their premises. The business of the firm was first established in the United States in 1976. Since then it has extended to Canada, the United Kingdom, and Europe, and more recently, to Australia. Offices are presently being established in Hong Kong and Johannesburg. "Bridge Data Company" was registered in Victoria asa business name on 31 May 1982. The owner of the name is Bridge Data (Far East) Pty. Limited of which Mr. Moore is the 6. managing director. The name was registered as a business name in New South Wales at about the same time. The business of the firm is the supply of information to approximately 2,000 terminals throughout the world. It is conducted in all places under the name "Bridge Data Company". Mr. Moore said that the name of the firm was chosen by him. He gave a number of reasons for this mostly to do with bridges or other features or institutions in centres where the firm carries on business. Mr. Moore said that he had for many years wished to establish in Australia a discount stockbroking business when the rules of Australian stock exchanges permitted that to be done. He continued:- "The key to ny concept of operating successfully a discount stockbroking business is and has been since 1976, a service for supplying to investors or clients of the stockbroking business the most detailed and up-to-date information on the stock market, coupled with fast and efficient execution of transactions. In my opinion, this can only be achieved by the use of a computer based system and it was partly to this end, in the long term, that the Bridge Data Company has been developed." In December 1983 Mr. Moore began to organise the establishment of a stockbroking business which would charge a flat fee of $75 per transaction regardless of the amount of 7. the consideration. He said that there was considerable discussion between Mr. Lough, the secretary of Bridge Data (Far East) Pty. Limited, and the New South Wales Corporate Affairs Commission about the acceptability of various names incorporating the word "Bridge". Evidence to which I shall refer in more detail later on establishes that the word "Bridge" is used as part of the names of many businesses and companies carrying on business in Australia. On 16 April 1984 a shelf company, Lesiner investments Limited, was acquired for the purpose of conducting Mr. Moore's stockbroking business in Australia. The name of the company was changed to Bridge Stockbrokers Limited by resolution of the shareholders passed on 19 April 1984. The change of name was registered by the Corporate Affairs Commission in Queensland where the company was incorporated on 15 June 1984. It is intended that Bridge Stockbrokers Limited will operate on the Sydney and Melbourne Stock Exchanges amongst others. It is the applicant's submission that if Bridge Stockbrokers Limited is permitted to do so, there will not only arise the distinct likelihood of confusion of it with their firm amongst other brokers, institutional investors and the investing public at large; there is also the distinct likelihood that many of these people will be misled or deceived into thinking that the company is carrying on the applicant's business or an offshoot thereof. Whether that latter contention is sound or not is the difficult question which arises for decision in this case. I make it clear that all the parties have at all times acted in good faith. Each of the parties has a genuine connection with their respective names, the applicants because of Mr. Bridge's use for so many years of his personal name in connection with his business, and the company and Mr. Moore because of Mr. Moore's long association with the Bridge Data Company. There has been little cross examination of the witnesses in the case. This may have been due, at least to a degree, to the limited amount of time which the Court had been able to make available for the hearing of the applications which the parties, until the hearing was almost over, wished determined on an interlocutory basis. But the fact that both sides now wish the hearing treated as a final one suggests that they are satisfied that no further evidence which might have been led would have shed much further light on the matter. In addition to the evidence to which I have referred the parties led evidence froma number of persons in an endeavour to persuade me that there either was, or was not, a real likelihood of persons being misled or deceived if the 9. company carried on business as a stockbroker in its existing name. This evidence, although admissible and, to a degree helpful, cannot be determinative of the outcome. In the end the matter is one for the Court. Evidence was also led by the respondents in an attempt to demonstrate that the company was aiming at a different market from that in which the applicants' firm operates. The applicants' evidence was from the applicants themselves or members of their staff. Miss Millham is employed by the firm as a receptionist/telephonist. She said that in the last week of March or the first week of April 1984 she received a number of telephone calls from persons not known to her. One of the callers asked whether the firm had advertised on Nationwide. This was a reference toa current affairs programme in which Bridge Stockbrokers Limited and Mr. Moore had featured and to which I shall later refer. She put the caller through to one of the partners. She deposed to other similar incidents and said approximately nine calls in all were involved. She answers the telephone by saying, "Bridges, Son and Shepherd". Miss Millham gave evidence of a further call which occurred on 6 July 1984. Quite obviously the callers in each case had mistaken the applicants' firm for Bridge Stockbrokers Limited. Mr. Barton took some of the calls referred to partners by Miss Millham as did Mr. Shepherd. It is unnecessary to 10. refer to the detail of this evidence except to say that it plainly indicates that the callers mistook the firm for the company. This led Mr. Barton to speak to Mr. Moore about the problem. He did so in the first week of April 1984. According to Mr. Barton, whose evidence is unchallenged, the conversation was as follows:- "I said: "Greg (Mr. Moore), there's going to be some confusion. We have received quite a few calls from people looking for you as a result of recent publicity. We've spent a lot of money promoting our image which is completely different from the image you are now promoting. I have nothing against your setting up as a cut price Broker but our firms are going to be confused and that is not in the interest of either of us." Mr. Moore replied: "It won't hurt you if you pick up the odd client from my publicity. Good for you." I said: "Our images are completely different and the clientele attracted by flat rates are not the clients we are aiming at. of course, you are entitled to conduct a cut rate business but would you consider using a different name when you apply for membership of the Stock Exchange?" Mr. Moore said: "No." Mr. Barton attempted to speak to Mr. Moore again in May but was unable to get in touch with him. On 15 June 1984 he hand delivered a letter to Mr. Moore in which, amongst other things, the firm asked him to stop trading under the name, 11. "Bridge Stockbrokers". At the time he delivered the letter he had a conversation with Mr. Moore which was as follows:- "I said "The terms of this letter are fairly abrupt. I thought that it would be better for me to hand deliver it so that we can discuss this matter in an effort to resolve the problems that concern us. We are concerned that our firm's image is directly opposite to the image you are promoting under the name 'Bridge Stockbrokers'. We have registered the business name 'Bridge Stockbrokers' in Sydney and Melbourne and to prevent confusion again ask that you use another name." Mr. Moore replied: "You may have got in under my guard but you can be sure that I will use the name 'Bridge'. Are you doing this for money?" I said: "No. Our only concern is that there is and will be confusion and we wish to avoid that." Mr. Moore said: "You will hear from me." In addition to Mr. Barton and Mr. Shepherd, Mr. Taylor, who is employed by the firm as office manager and client adviser, gave evidence of a telephone call from another potential client who had confused the company with the firm. It is unnecessary to refer to the detail of the conversation. A number of witnesses called on behalf of the respondents gave evidence of the various types of institutions, companies and persons who buy and sell shares and require the services of stockbrokers. This evidence differs in detail but not in substance. It is sufficient if 12. I refer to the evidence of Mr. J.D. Grice who is a partner in a firm of Melbourne stockbrokers, Messrs. Roach, Tilley, Grice & Company. The firm has a branch office in Sydney. Mr. Grice said that the clientele of his own firm could be divided into the following categories:- "(a) Major institutional clients controlling funds for investment on stock exchanges ranging to hundreds of millions of dollars. The members of this category of client are generally actively engaged in investment on stock exchanges and closely monitor stock markets on a daily or weekly basis. (b) Small institutional clients controlling funds ranging to a few million dollars. The members of this category are also very familar with stock markets and the stockbroking industry generally. (c) Major individual clients. The members of this category range from active traders involved in transactions approximately once a week to inactive traders who engage in a few transactions per year. The members of this category are generally well informed about stock markets and the stockbroking industry generally. (ad) Smaller individual clients comprising both active and inactive traders engaging in transactions ranging from approximately $1,000.00 to $5,000.00." The inference is open from Mr. Grice's evidence and from that of other witnesses called by the respondents that his statement of the various categories that make up his own firm's clientele is, broadly speaking, an accurate statement of the categories that make up the clients of most 13. stockbroking offices. Mr. Grice said that the nature of the relationship between investors in all of his four categories and stockbroking firms "emphasises a personal relationship between the investor and an individual stockbroker." He said that that relationship must be a close personal one. Mr. Grice is aware of the general nature of the business of the applicant's firm, of the activities of Bridge Data Company and of Mr. Moore's proposal to commence business as Bridge Stockbrokers Limited as a discount broker offering a flat rate to investors who buy and sell shares. He thought that the flat rate offered by the company would be more attractive to institutional clients than to individual clients. He continued: - "In my opinion, it is unlikely that any active investors in the four categories described in paragraph 3 above would be likely to think there was any relationship between Bridges Son & Shepherd and Bridge Stockbrokers Limited. Of the institutional investors, I do not believe that any one experienced in stock Markets and the stockbroking industry generally would believe there was any relationship between Bridges Son & Shepherd and Bridge Stockbrokers Limited. of individual investors, I believe it is possible that the small inactive investor may, on looking up a telephone book after not having dealt for a period of time, be caused to wonder whether there was a relationship. From what I understand of the way Bridge Stockbrokers Limited proposes to carry on business, it is, in my opinion, highly unlikely that any one would deal with Bridge Stockbrokers Limited and believe that they were dealing 14. with Bridges Son & Shepherd." Mr. Rivkin was until recently a partner ina firm of stockbrokers known as Rivkin and Company. The firm no longer carries on business but Mr. Rivkin carries on a business under his own name. The clients of the firm were predominantly institutional. The firm also dealt with private clients who ranged from those who took an active interest in stock markets and were closely familiar with them and those who had no such familiarity. Mr. Rivkin is aware of the Bridge Data System and of the proposal of Bridge Stockbrokers Limited to conduct the business of a discount broking house. He said:- "I say that I will not be confused by the co-existence of Bridges, Son & Shepherd and Bridge Stockbrokers Limited in the stockbroking industry. If the two businesses were known on the trading floor as Bridges and Bridge respectively, If believe that there would be confusion on the trading floor. I believe that no professional institutional clients will be confused by the co-existence of the two names. I believe there is slight scope for potential confusion amongst would be private investors." Another witness who gave evidence to the same effect is Mr. P.M. Davies who is the managing director of Economic Research Pty. Limited which carries on business as a consulting economist to large financial institutions. He is highly qualified and vastly experienced in the Australian 15. financial system. He has advised, not only private institutions, but governments or government agencies as well. He is aware of the activities of Bridge Data Company and of Mr. Moore's proposals for Bridge Stockbrokers Limited. His evidence of possible confusion, however, is rather limited to the possibility of his becoming confused rather than the use of the two names confusing others. As might be expected, he would be most unlikely to mistake the firm for the company or the company for the firm. Along the same lines as the evidence already referred to is that of Mr. R.G. Lander. He too is aware of ail the surrounding circumstances and has a close knowledge of the stockbroking industry. Then I should mention evidence of surveys conducted of persons selected at random by three people. The three persons conducting the survey have sworn affidavits describing how the surveys were carried out. Each of the persons questioned has also sworn an affidavit. The persons questioned were not shown certain advertising material until after they had been asked whether they thought there was any relationship between the firm and the company by reference to the names thereof alone. They were earlier asked if they had heard of either the firm or the company previously. In almost all cases they had not. The question was answered in various ways, some thinking there was no connection and some 16. thinking that there was. Once they had seen the advertising material of the two, those who thought there was a connection changed their minds. Some perceived the different marketing objectives of the two, noticing that one gave full service and the other did no more than facilitate the transfer of shares. I have taken this evidence generally into account but I have not obtained a lot of assistance from it. The two names were put to each of those questioned together so that they were able to draw a comparison. Similarly the advertising material of the two could be compared. It seems unlikely that members of the public will encounter the names and the advertising material in this way. Usually they will encounter the name or the advertising material of one and will not be able to draw the comparison which those questioned were able to draw. It remains to mention further evidence of the difference in the marketing approaches of the firm and the company led by the respondents. This consisted of evidence given by Mr. Moore and of statements made by him in advertising material and in a television programme, Nationwide, and a community service radio programme broadcast over one of the Sydney FM stations. I have not obtained a great deal of assistance from this latter evidence except that it establishes quite clearly, in my opinion, that Mr. Moore is seeking to offer his company's services over the whole spectrum of the market. He said so much in the community service radio programme. In a 17. answer to the question, "Your clients are probably going to be people who are really skilled traders?" he said, "I think we will have the whole spectrum from our market research that we have done". He went on to elaborate on this. Similar statements are to be found in the other material. This evidence also emphasises the fact that the services which the company will offer will be limited to facilitating the transfer of shares for a flat fee of $75 for each transaction. On no account will advice be offered. If people wish advice they will be told to consult a conventional broker. Mr. Moore confirmed this in his oral evidence. I accept that evidence. Until he gave oral evidence I thought that he may not have been stating the position accurately because of some material to be found in the community service radio programme. But I accept the explanation for that material which he gave from the witness box. A further difference between the way the company will operate and the way conventional brokers will operate will be that he will not permit credit. In a transaction of purchase the company will either have to be placed in funds or have unconditional access to funds before it will act. In a transaction of sale it will have to have in its possession the share scrip and a signed transfer. If a client is not prepared to deal with the company on that basis, the company 18. will not act. Towards the close of the proceedings Mr. Moore and his company offered undertakings to the Court, a copy of which I have appended to these reasons. They were offered openly in Court but not as an admission that the applicants are entitled to any relief. The primary contention of counsel for the respondents is that the application should be dismissed. The undertakings are not acceptable to the applicants. During the course of the hearing it emerged that the name "Bridge Stockbrokers" was not Mr. Moore's first choice. He preferred "Bridge Trading" or "Bridge Securities." "Bridge Stockbrokers" was his third preference. Some doubt arose as to whether the names "Bridge Trading" and "Bridge Securities" were available. The solicitor for the Corporate Affairs Commission had enquiries made and wrote to me after I had reserved my decision. His enquiries establish that neither of the names is available. His enquiries also reveal how popular are business names or company names which contain the word "bridge". Amongst the exhibits 1s an extract taken from the registration indices of names. These include Bridge Acceptance, Bridge and Associates, Bridgecorp. International, Bridgecourt, Bridge Data (which is Mr. Moore's firm), Bridge Discount, Bridge Finance, Bridge Industries, Bridge Investments, Bridge Management, Bridge Marketing and Bridge 19. Nominees, as well as Bridge Stockbroking. During the argument it occurred to me to ask whether it would make any difference if Mr. Moore were to adopt the name Bridge Data Stockbrokers rather than Bridge Stockbrokers. I was informed by counsel that he was unwilling to do this because of possible confusion between the stockbroking company and Bridge Data Company. This explanation puzzled me, particularly as one of the exhibits, although it is distributed at the moment only to people in countries outside Austrailia, is a brochure which refers with equal prominence to Bridge Data Company (abbreviated to ""BDC") and Bridge Stockbrokers Limited ("BSL"). Both have a logo which consists of the letter B printed ina particular way, underneath which is the word "Bridge" prominently displayed. The brochure makes it quite clear what the activities of each company is and the relationship which each has to the other. The brochure says that it is of special interest to British and overseas investors. On the same page it gives the London address of Bridge Data Company and the Sydney and Melbourne addresses of Bridge Stockbrokers Limited. All are shown with equal prominence. When the matter was again in the list counsel for the respondents sought leave to lead oral evidence from Mr. Moore as to a number of matters including the reason why Mr. Moore did not want to include the word "Data" in the company name. 20. Mr. Moore said:- "Your Honour, Bridge Data is known throughout the world, as shown in my affidavit, as an independent information data company. Bridge Stockbrokers Limited is a public company of which I am 50 per cent shareholder. As soon as these proceedings are through we propose to list the company as a listed public stock exchange company; and by having the name Data in the stockbroking company would imply to me that some form of income in the stockbroking company is coming from the Data Company and that is not the case - they are two separate entities. And I think it would mislead the public at alater stage who bought shares that the name Data was involved in it. And I think that is to me the primary reason why - whilst we want to have the name Bridge because the two companies really go hand in glove and they are sister companies they are nevertheless two - they do two totally separate different things. The stockbroking company relies upon the computerisation and the computers of the Data company to be able to effect its business properly and accurately." He was referred by me to the brochure which I have mentioned. His evidence continued:- "And it (the brochure) - as you are well aware - is about Bridge Data and Bridge Stockbrokers and would suggest - correct me if I am wrong - would suggest to any reasonable person reading it that the two companies were connected? --- Well, they are to the degree, your Honour, that Bridge Data Company has contracted over $1,000,000 worth of soft commission dollars coming in and part of the agreement between Bridge Data Company and Bridge Stockbrokers Limited is that the business will be executed through the stockbroking company. They are connected; and they are also connected because' the Data Company supplies the -te- 21. computers through which we can execute our transactions. I appreciate this (the brochure) at the moment is only an overseas - for overseas consumption; but nevertheless in it they are together? --- Yes. Well, what is wrong with calling your stockbroking company Bridge Data Stockbrokers Limited? I am not sure whether that is going to get us out of the problem but I think it might be better than what you have got at the moment? --- Well, your Honour, if we did that I think the general public - that is the people who are going to invest in Bridge Stockbrokers Limited - would think that some of the income which now is the income of Bridge Data Company would be that of the stockbroking company. I think it would tend to mislead. But if I saw that I would think that anyway now. If I had this brochure that is exactly what I would think, rightly or wrongly. Whether it would matter to me if I did think that, I do not know? --- Well, hopefully - well, we tried to get away from it, to say that they are: the stockbroking company's income will come from stockbroking."" He gave some further evidence about the matter which was to the same effect. That completes the account of the evidence which it is necessary to give. I should next refer to some authorities. In Hornsby Building Information Centre Pty. Limited v. Sydney Building Information Centre Limited (1978) 140 C.L.R. 216 Stephen J. said (pp. 227-8):- 22. "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. C1907] 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 R.P.C. 493, at p. 506, a statement which is literally true and accurate may nevertheless carry with ita false representation. Lord Morris expressed much the same notion in Parker-Knoli Ltd. v. Knoll International Ltd. (19623 R.P.C. 265, at p. 279. The same will apply in relation to s. 52 (1)." 23. In Lego Australia Pty. Limited v. Paul's (Merchants) Pty. Limited (1982) 42 A.L.R. 344 Deane and Fitzgerald JJ. said (pp. 350 - 351):- "In Taco Co. of Australia Inc. v. Taco Bell Pty. Ltd. (1982) 42 A.L.R. 177, a Full Court of this court had occasion to consider the principles relevant to the operation of s. 52 of the Act in the context of a dispute between rival traders concerning the use of a similar name. In our joint judgment (sic.) in that case, we were at pains to stress that the question whether particular conduct of which complaint is made is misleading or deceptive or is likely to mislead or deceive is, in the ordinary case, a question of fact to be answered in the context of the evidence as to the alleged conduct and as to relevant surrounding facts and circumstances and that, irrespective of whether conduct produces or is likely to produce confusion or misconception, it cannot, for the purposes of s. 52, be categorized as misleading or deceptive unless it contains or conveys in all the circumstances of the case, a misrepresentation. We went on to point out that the difficulty which will commonly arise ina s. 52 case is in determining whether the conduct contains or conveys, in all the circumstances, a misrepresentation and in assessing the significance to that question of evidence that one or more persons were lead into error". In Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty Limited (1982) 42 A.L.R. 1 Gibbs C.J. said (p. 6):- "The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct 24. was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive.....The words "likely to mislead or deceive", which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to 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, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant." In the same case Mason J. said (p. 15):- ",..-the onus is on the plaintiff to show that the conduct 18s likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52." More recently in Glob Sportsman Limited v. Mirror Newspapers Limited (19 June 1984, unreported) the Full Court of this Court said (pp. 9-10):- a 25. "A contravention of sub-s. 52 (1) dis established by conduct which is misleading or deceptive or which is likely to mislead or deceive. Conduct is likely to mislead or deceive if that is a "real or not remote chance or possibility regardless of whether it is less or more than fifty per cent": cf. Tillmanns Butcheries Pty Ltd v. Australasian Meat Industry Employees' Union (1979) 42 F.L.R. 331, per Deane J. at p. 346; Sheen v. Fields Pty Ltd 1984) 58 A.L.J.R. 93. Evidence that an erroneous conclusion has been formed by reference to conduct is admissible to establish that the conduct was misleading or deceptive or likely to mislead or deceive; such evidence may be persuasive but it is not essential. Evidence of acts or omissions resulting from the erroneous belief may also be admissible but again is not essential. Sub-section 52 (1) is concerned with the effect or likely effect of conduct upon the minds of those by reference to whom the question of whether the conduct is or is likely to be misleading or deceptive falls to be tested. The test is objective and the Court must determine the question for itself: Taco Company of Australia Inc. v. Taco Bell Pty Ltd (1982) 42 A.L.R. 177, at p. 202". In order to succeed on the cause of action based on s. 52 of the Trade Practices Act the applicants must therefore establish that the threatened use by the first respondent of the name Bridge Stockbrokers is conduct on its part which amounts to a misrepresentation to significant numbers of the public or a section thereof that the business carried on by the company is either the applicants' business or is connected therewith. Only then will it be established that it is threatening to engage in conduct which would be misleading or deceptive. The question is one of fact. It is 26. to be determined by the Court objectively, notwithstanding that evidence from persons who say that they have either been misled or have not been mislead may provide guidance as to what the outcome of a case should be. I do not think that the cause of action based on passing off raises very different considerations. Passing off is established if a defendant's conduct is likely to mislead the public and involves an appreciable risk of detriment to an applicant for relief, whether in diversion of sales or impairment of his credit or commercial repute; Fleming on Torts, Sth Edition, p. 673. Neither counsel suggested that substantially different considerations were involved in passing off from those involved in the cause of action based on s. 52. It may be that an element of fraudulent conduct, using that expression in the sense in which it is understood in this branch of the law, is required in passing off but is not required in a cause of action based on s. 52. I do not pause to consider that question. It is enough to refer to Turner v. General Motors (Australia) Pty. Limited (1929) 42 C.L.R. 352 per Isaacs J. at p. 362 and to B.M. Auto Sales v. Budget Rent A Car System Pty. Limited (1976) 51 A.L.J.R. 254 per Gibbs J. (as he then was) at p. 258. So far I have approached the matter without reference to the respondents' cross-claim. They seek to restrain the applicants from using the name Bridge (or Bridges) 27. Stockbrokers. In ny opinion the outcome of the cross-claim depends substantially on the outcome of the applicants' claim. If that fails, the cross-claim must succeed. If the applicants' claim succeeds, it seems unlikely that the respondents will be much interested in their cross-claim although the Corporate Affairs Commission may be, notwithstanding that it has submitted to such order as the Court may make. In the event of the applicants' succeeding, there may be a question as to whether they should nevertheless be permitted to retain the registration of the name. But they may not then be much concerned about that matter. Their purpose in registering the name seems to have been defensive rather than anything else. Both counsel were in agreement that the outcome of the applicants' claim would in practical terms, settle the dispute between the parties. I should begin the task of deciding the applicants' claim by stating my conclusions as to the relevant market or section of the market in 'which the firm and the company will operate once the company begins to carry on business. Clearly the applicants' firm will continue to cover the whole field mentioned in Mr. Grice's evidence earlier quoted. But the emphasis will be upon private clients rather than upon institutional investors. There will continue in most cases the personal relationship which is mentioned in the evidence. On the other hand, it must be borne in mind that the nature of the applicants' business may undergo some change due to 28. the advertising which the firm is undertaking. It seems likely that there will be attracted to it numbers of prospective clients who are not amongst its existing clients and who do not come by reason of recommendations or introductions from its clients or their associates. Notwithstanding submissions to the contrary by counsel for the respondents, I think the company's business too will cover the whole range of investors and potential investors mentioned in Mr. Grice's evidence. The purport of Mr. Moore's evidence and of the advertising material put out by the company is that this is what it wishes to achieve. But in its case the emphasis is likely to be, at least for the time being, on institutional investors or those with large sums to invest who know exactly what they wish to buy or sell. The appeal of the company is likely tobe its willingness to operate for a flat fee no matter how large the transaction. Obviously, those involved in large transactions will have the most to gain by dealing with the company. So it seems likely that whilst the two undertakings will have customers from the whole spectrum of the market, the company will, at least initially, act mainly for investors in large transactions and the firm mainly for personal clients engaged in transactions which are not so0 large. But from a marketing point of view, that will not be the 29. major distinction between them. That distinction arises not because of the type of client which they will have, but from the way they will do business. The firm will continue to act as a conventional stockbroker affording credit to its clients, giving them advice and having with them a close personal relationship. The company will act only as a discount broker. No credit will be available. No advice or information will be given. The company will expressly decline to give advice if it is asked. It seems unlikely that personal relationships will develop between it and many of its clients. Counsel for the respondents made two substantial submissions. They were:- 1. The names were not sufficiently similar to cause any reasonable member of the public to be misled or deceived. At the most some people might be caused to wonder whether there was any connection between the two. 2. The areas of the market in which the two undertakings were discrete, if not because the respondents acted for people in one section of it and the applicants for people in the another, then because of the very different methods of the two in doing business. If someone were confused, he would soon be put right by contact with either the company or the firn. If he contacted the company, he would be told that it gave no advice nor credit and operated for a flat fee for each back are 30. transaction. If he contacted the firm, he would be told that both credit and advice were given, but that commission was payable on a sliding scale. Those responding to an advertisement by the firm would expect service of one kind; those responding to an advertisement by the company would expect service of a different kind. If one were to take into account as one should, the differences in the two methods of conducting business and the different requirements of the potential clients of the two, it seemed unlikely, bearing in mind the differences between the two names, that there could be confusion let alone deception. It was true that the applicants were known as Bridges on the trading floors of the Sydney and Melbourne Stock Exchanges and amongst other stockbrokers. They were also known as Bridges by many of the institutional investors. But these people would be most unlikely to be confused, as evidence led by the respondents showed. To overcome any problem on the trading floor, the company would not be known as Bridges or by a name which included the name Bridge. Rather it would be known, subject to the approval of the committees of the stock exchanges, as BSL. As mentioned the respondents were prepared, as a fall position, to enter into undertakings, copies of which appended to this judgment. In summary the first undertaking obliges the company to include in all advertising 31. material a statement to the effect that it has no connection with the applicants' firm. The second obliges the company to use in all written or visual advertising or promotional material the logo which is to be found in the brochure to which I have earlier referred. The third obliges it not to transact any business with any customer, not being a stockbroker or an overseas customer or a local financial institution, unless the customer has signed an agreement proposed to be enclosed with each brochure. A _ copy of the agreement was tendered. I shall refer to the detail of it in a moment. The fourth undertaking requires the company not to use any name or abbreviation which includes the word "bridge" to identify itself on the trading floor of any stock exchange in Australia. As [I have said, it proposes to use the initials "BSL". There may be a problem about that because of the use of those initials by an unassociated company, Brick Securities Limited, in its advertising in the financial press. That was a matter relied upon by counsel for the applicants, but I do not think it is of any consequence because the respondents are plainly willing to find an alternative which will not contain the word "Bridge". One matter that should he mentioned about the undertakings, a matter not discussed in argument, is the question whether each of them is such that the Court ought to accept. There is a question of whether it is able properly to supervise the second and third undertakings 32. satisfactorily. That is a matter which I shall mention again. The undertakings were foreshadowed on the second day of hearing. It was then thought that that would be the last hearing day. I asked that they be supplied to the applicants and to my Associate in written forn. For various reasons I listed the matter on a third occasion in order to note on the transcript some formal matters, particularly the agreement of the parties that the hearing should be a final one. Counsel for the respondents then tendered the undertakings to which I have referred and a draft brochure and attached customer agreement which is the agreement referred to in the undertaking offered in para. l(c). Unfortunately, neither counsel for the applicants nor myself had time to give the agreement very much consideration nor to compare its terms with the evidence and the terms of the undertakings. The agreement is not only in draft form; it is in some respects, incomplete. That makes it very difficult to give effect to an undertaking which incorporates the agreement by reference into its operation. Apart from that matter, there is nothing in the agreement dealing with the terms upon which the company will act for clients. In particular there is nothing in it which deals with the question of advice or credit. When that is taken into account along with the words of the undertaking in para. 1(c) which suggest that the 33. agreement, in any event, will not apply where the client is, inter alia, a local financial institution, the position becomes even more uncertain. Unfortunately, the case has had to be dealt with as a matter of great urgency. The company wishes to commence business forthwith. If the hearing had taken place in a little more leisurely fashion, these are matters which could have been discussed in argument and perhaps raised with Mr. Moore whilst he was in the witness box. However, it does not seem convenient once again to put the matter in the list and I must deal with the matter as best I can. The important point I make is that there is nothing in the undertakings which would oblige the company not to carry on business otherwise than on a cash basis and on the basis that it gave no advice. Counsel for the applicants was unwilling to accept any of the undertakings in satisfaction of his clients' claim. On instructions he informed me that they were unwilling to accept the first undertaking which obliged the company to include statements in its advertising and promotional material that it had no connection with the applicants' firm. The applicants have two reasons for this. Firstly, they would regard any statement to that effect as possibly reflecting upon their own business. Secondly, they say that it may not be possible for the respondents to control the position. There is much discussion, from time to time, about the way stockbrokers do business in the financial press. In 34. any article published the writer would not be obliged to distinguish between the two concerns. I can understand the applicants' views in not wishing a competitor to state that it is not connected with the business of their firm. I say that, not overlooking that many cases of this kind have been solved in this way. The case of Turner v. General Motors (Austalia) Pty. Limited (supra.) is an example. General Motors apparently did not have the same difficulty about this course as do the applicants. At first instance the primary judge ordered (42 C.L.R. at pp. 359-360) that the appellants be restrained from using the words "General Motor" or "General Motors" in connection with any business carried on by them without adding the words, "This business has no connection with General Motors (Australia) Proprietary Limited". This order was varied on appeal but that is not the point I make. What then should be the outcome of the case? Having given the matter a good deal of anxious consideration, I have reached the conclusion that the respondents' submissions should be rejected and that the applicants are entitled to succeed on their clain. I think that the relief to which they are entitled is more extensive than that which would be afforded by the acceptance of the undertakings to the Court offered by the company. In reaching my conclusion I have had to engage in a not insubstantial judgmental exercise. But in performing it I have taken into account the following 35. factors. Neither of the names in question is descriptive of the business of either undertaking. It is true that the company uses the word "Stockbrokers" but the word in question is "Bridge". It is the use of that word which may mislead members of the public. It follows that this case is different from cases such as Hornsby Building Information Centre Pty. Limited v. Sydne Buildin: Information Centre Limited (supra.) and Motorcharge Pty. Limited v. Motorcard Pty. Limited (1982) 42 A.L.R. 136 where the names in question were descriptive of the businesses carried on by the parties in those cases. It is well recognised that the task of an applicant for relief in a case where the name in question is descriptive of the business carried on is more difficult than it may be in other cases. The name by which Mr. Moore's international activities in the field of investment are known 138 not "Bridge" but "Bridge Data". For reasons given in his evidence he is quite unwilling to use a name for the stockbroking company which includes the word "Data". He sees what to him is an undesirable likelihood of confusion between Bridge Data Company and the stockbroking company if the word "Data" is included in the latter's name. I do not find his reasons for this convincing but that is not to 36. the point. What is is the fact that he is not prepared to contemplate using a name such as Bridge Data Stockbrokers Limited. What the position would be if he were to do so, I do not need to consider, but it does seem to me that his case may have been stronger if he had been prepared to adopt such a name. Although the names "Bridges, Son & Shepherd" and "Bridge Stockbrokers Limited" are apparently different when used in juxtaposition, people encountering one or other of them may not find them so different. That, in my opinion, applies not only to members of the public lacking familiarity with the stockbroking industry, but also to those engaged in it. No industry is static. Personnel involved in it change constantly. And it is all very well for persons in senior positions in the industry, whether stockbrokers or executives of institutional investors, to be quite clear about the position. But is it so clear that more junior and less experienced people will have the same knowledge and awareness. Deregulation is expected to bring over the years substantial changes in the industry. Mr. Moore makes that clear in the various statements he has made in advertising and to the media. This will bring in its train all sorts of people into the industry presently only on the fringes of it or not familiar with it at all. 37. The applicants' firm is known widely in the industry as "Bridges". It is not only known in this way on the trading floors of stock exchanges. And many of the investing public, albeit that they are institutional or large investors, know it as such. One knows from one's own experience that it is becoming increasingly common for professional firms to be known by shortened names, often by the first name of a partnership. This spreads not only to those with a close familiarity with an industry. They in turn use the same jargon when talking to outsiders and so a reputation is built up, a reputation which is that of those carrying on the business with the abbreviated name. It is true that the applicants advertise under their full firm name, but in the industry or trade, they are clearly known by many as "Bridges". This is to be seen in some of the articles in the financial press which are in evidence. One needs to bear in mind that it is the respondents' conduct which is in question. It would be wrong to visit on it the consequences of conduct of others, who for various reasons, abbreviate a name. But it is the respondents' conduct in using the word "Bridge" in the company's name which is in question. No variation or shortening of its name by the media or others for whon it is not responsible has caused the problem which 38. exists. And the shortening of the applicants' name has been done, either by them directly, or by a number of persons with their consent or tacit approval. That has occurred over a period of years and is no doubt a matter of satisfaction to the firm, particularly to its senior partner, Mr. Bridges, and to his son. I instance the stock exchanges. The fact that the two concerns will operate, to a large extent, in different sections of the market is important. But there must be a degree of overlapping. In my opinion the important factor is that both will be operating on Australian Stock Exchanges and in the Australian stockbroking industry. The parties in both the General Motors and Motorcharge cases were not engaged in identical markets but the Courts did not deny relief on that account. In this regard I refer also to Visa International Service Association v. Beiser Corporation Pty Limited £19831 ATPR para. 40-373 especially at p. 44,439. I have had regard to the decision of this Court in Weitmann v. Katies Limited (1977) 29 F.L.R. 336 but in my opinion the facts of that case are clearly distinguishable from those of the present. Certainly the name "Bridge" is in common use as the commencing word in company and business names in 39. Australia. The material produced by the Corporate Affairs Commission establishes this. But the use of the word "Bridge" along with the word "Stockbrokers" in the name of a company trading on the stock exchange plainly distinguishes its field of operation from that of many other companies and businesses. When that field is occupied in part by an existing firm the name of which commences with the word "Bridges" I think the multiplicity of names which commence with the word "Bridge" loses significance for the purposes of this case. 8. In the end the matter must be one of impression. It is a question of fact and degree. The ultimate question is whether significant numbers of the public who in various capacities have occasion to deal with stockbrokers are likely to be misled or deceived (not merely confused) by the respondents' conduct in using the "Bridge" name. In all the circumstances I have reached the conclusion that that question should be answered in the affirmative. What then is the relief to which the applicants are entitled? In Turner v. General Motors (Australia) Pty. Limited (supra.) the High Court considered that the appropriate relief was an injunction restraining the defendants from using the words "General Motor" or "General Motors" without clearly distinguishing such business from the 40. business carried on by General Motors (Australia) Proprietary Limited (see 42 C.L.R. at pp. 360 and 370). On the other hand the High Court in B.M. Auto Sales Pty. Limited v. Budget Rent A Car System Pty. Limited (supra.) thought that the decision of the primary judge that the respondents' goodwill demanded that the appellant cease to use the word "Budget" at all was a decision which wags open to him in all the circumstances of the case (see 51 A.L.J.R. at p. 259). Toohey J. took a similar view in the Motorcharge case (supra.) (see 42 A.L.R. at p. 146). Counsel for the applicants has asked me to follow the course taken by the primary judge in the B.M. Auto Sales case and by Toohey J. in the Motorcharge case in this case. In other words, he seeks an injunction restraining the respondents from using the name "Bridge" at all. I do not feel disposed to accede to this submission without hearing counsel further on the question of the relief to be granted. But I do say that I am not prepared to accept the undertakings offered by the respondent in paras. 1(b) and (c) of the document annexed to these reasons. To my mind there is not only the problem of supervision by the Court mentioned earlier. There is also the question, bearing in mind the terms of the customer agreement referred to therein, of whether they are at all adequate to protect the applicants. In all the circumstances I propose to stand the matter 41. over to enable counsel to consider what I have said. When the matter is again in the list I shall hear counsel on the form of orders which should be made both in relation to the claim and the cross-claim. Jorn' thatceesandt + 2 4.0 preceding copy 7 the reasons for judgm ant herein cf Tr Honourable Mr Justice Sheppard. S. P. HUTCH ISow Anopinis QM 47 Tey 18 pages sre airec oD lL. UNDERTAKINGS OFFERED BY RESPONDENTS The first respondent undertakes that it will, for a period of two years from such date as the court fixes: (a) include in all advertising or promotional material issued to the general public in Australia by whatever medium a statement to the effect that the first respondent has no connection whatsoever with Bridges Son & Shepherd, Stockbrokers; (b) use in all written or visual advertising or promotional material issued to the general public in Australia the logo of the first respondent appearing in Exhibit 5; (c) not transact any business with any customer, not being a stockbroker or an overseas customer or a local financial institution, unless the customer has first signed one of the customer agreements proposed to be enclosed with a brochure containing material substantially to the effect of that appearing in Exhibit 5 and Exhibit 12. The first respondent undertakes to the court that it will not at any time hereafter use any name or abbreviation which includes the word "pridge" to identify itself on the trading floor of any Stock Exchange in Australia. " 1. IN THE FEDERAL COURT OF AUSTRALIA ) ) No. G200 of 1984 NEW SOUTH WALES DISTRICT REGISTRY ) ) GENERAL DIVISION ) BETWEEN : BRIDGES AND ORS. Applicants AND: BRIDGE STOCKBROKERS LIMITED AND ORS. Respondents SHEPPARD J. 18 JULY 1984 SUPPLEMENTARY REASONS FOR JUDGMENT This matter has been placed in the list this afternoon for the purpose of deciding upon the relief to which the applicants are entitled. I have not found this question any less aifficult than the principal question which the case raised for decision. In the end, the exercise involves the making of a value judgment and 1t 1s not possible to aqive fully one's reasons for one's decision. The question really 1s whether the first respondent be allowed to use any name for the purpose of carrying on its business, which includes the word ""Bridge"" at all. If, as I think it is, it is right not to restrain the first respondent from using the name "Bridge" at all, I see little alternative from making what I would think is a fairly conventional ~ _* 2. order, if not in matters under the Trade Practices Act, then certainly in passing off cases. The fact that no example was referred to in'arqument of an order of that kind in trade practices cases does not mean I think that such an order is not appropriate for a case under section 52 of the Trade Practices Act as well, if the circumstances of such a case demand it. Having given the matter the best consideration I can, and realizing nevertheless that no solution will be reaarded by either party as perfect, I have decided the appropriate order 1s along the lines formulated in paragraph 3 of the short minutes of order submitted by the respondents which I have marked with the letter B. Accordingly, the orders I make in this matter are as follows:- l. The existing injunctions pe dissolved. 2. The first respondent by 1tself its servants and agents be restrained from selling, offering for saie, providing or advertising any of its services or otherwise carrying on its business under the name S5ridae Stockbrokers Limited". 3. The first respondent by itself, 1ts servants and agents be restrained from selling, offering for sale, providing or advertising any of its services or otherwise carrying ye atten os 3. on its business under any name incorporating the word "Bridge" without clearly distinguishing such business from the business carried on by the applicants under the name "Bridges Son and Shepherd". The cross-claim be dismissed. The first and second respondents pay the applicants' costs of the proceedings, There be no order in relation to the costs of the third respondent. Exhibits 1, 2 and 11 may be returned. The remaining exhibits may be returned after the expiration of 21 days if ain the meantime no appeal has been lodged. Lcetify thet this aad the e& preceding wcpy oi wig }easons for roe rue prges are a t judgment nere'n of The nonourable Mr Justice Sheppard. SP. HUTCHISON Associate Dated 1& sory (984