AG3 (NOT INTENDED FOR PUBLICATION OR DI IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VG No. GENERAL DIVISION EX TEMPORE JUDGMENT Between: And: THE CONFEDERATION OF AUSTRALIAN SPORT INCORPORATED (Applicant) HUJOD PTY. LTD. and Coram: Smithers J. Date: 22 August 1985 REASONS FOR JUDGMENT HIS HONOUR: The applicant did seek GRAHAM G. LOVETT (Respondent ) an interlocutory injunction in accordance with the terms of the application, which would mean that the respondent would be restrained from using the name "Sport Australia" in connection with his business. eer - 2-0 D As the matter has developed it has been put to me that the real relief which the applicant would regard as proper would be an injunction to restrain the respondent from advertising over the air or on television or in the newspapers the name "Sport Australia" in connection with his business. It appears that in 1977 the applicant, being a senior executive of Dunlop Australia, conceived the idea that the words "Sport Australia" had potential as a name for a business dealing 1n some aspects of sport. The immediate aspect was probably the selling of sporting goods, or perhaps consultancies, and perhaps management of sportsmen. As a result, Dunlop registered a company called "Sport Australia Export Pty Limited" and later it also registered a company with the name "Sport Australia Pty Limited". Sport Australia Export Pty Limited carried on trade exporting sporting goods, using the trade name "Austral" for the goods that it sold and possibly engaging in other aspects of sporting exploitation. Sport Australia Pty Limited did not itself actually trade. In 1978 the applicant left Dunlop and it was part of the arrangement, under which he ceased to serve Dunlop, that the benefit and entitlement, sofaras there was such, that Dunlop had in the name "Sport Australia", should pass to him. Accordingly, in 1982, apparently towards the end, Mr Lovett acquired a shelf company called Hujod Pty Limited and in 1978 registered the name "Sport Australia" as the business name of that company. He commenced to trade as a sports consultant and Manager of sporting personalities and as an entrepreneur of, in particular, tennis tournaments. This involved seeking sponsors for quite major events and Sport Australia has made arrangements ona considerable scale in which it has undertaken liabilities in relation to the projects which it has managed, particularly major tennis tournaments. It, of course, ancurred considerable liabilities in doing this and it exercised itself in obtaining quite important sponsorships. These tournaments were conducted for the benefit of the players and, of course, for the benefit of Hujod Pty Limited and Mr Lovett, as the chief, at any rate, shareholder in that company. The company proposes to continue to trade in these various avenues of activity and it intends to expand the business in future. The conduct of the expanded business, as explained to me, is to be essentially the same in manner and nature as that at present carried on in the name ot "Sport Australia". It is said that this expansion may possibly involve publicity, which will cross the path of the applicant more intensely and perhaps to the disadvantage of the applicant than in the past. ---¢- vee on ry v mene ere Oo a nn . v The applicant 1s an organization with objectives involving the promotion in Australia of sport, the arranging ot sponsorships for large sporting events, such as the Australia Games of early 1985. It decided in 1978 to conduct seminars of sporting personalities and persons who had a business interest in sport. {It decided to use the name "Sport Australia" in connection with what were called a forum and also to institute awards to be known as "Sport Australia Awards", which would be awarded annually and given considerable publicity through Channel 7. It conducted seminars, and forums, and luncheons, and these events were on quite a large scale and involved the attention and interest of people who, commercially and in the sporting world, could be regarded as the leaders of Australia. Accordingly, the name "Sport Australia" in relation to sport must have become widely known and connected with the applicant as the Confederation of Australian Sport. The name "Sport Austrailia" used in all these activities of the applicant - was used, not in the ordinary sense of a commercial instrument or tool. It was used as a title for projects which it undertook. In 1983, however, the Confederation was minded to use the name for straightout commercial purposes. It obtained the advice of advertising and marketing experts and, as a result, it entered upon an intense campaign called the "Sport Australia" campaign. "ue eran ope or one ve egrures Ve wat west eee Si gee RITES It spent very large sums in obtaining advice and in launching the operations in connection with this project. Its aim is to harness banks and other financially well set-up companies in Australia to sponsorships of sport. In addition 1t has entered upon a programme in which it. auntends to licence various people to use the words "Sport Australia" and to exploit generally the name "Sport Australia" in relation to the selling of various articles such as ties, logos and badges and the like which are commonly used in sporting promotion. This is to be done to earn money for the Confederation. In June 1984, the applicant learned that the name "Sport Australia" had been registered as a business name in all the States of Australia. It 1s said that the applicant did not realize that the respondent was operating under the name "Sport Australia" until March 1985, About that time, Mr Lovett ascertained that the applicant was entering upon this project of licensing and was about to license other people to use the name "Sport Australia" for commercial purposes. He took objection to this and there was correspondence. The applicant claimed the right to exploit the name in the way described. Mr. Lovett demurred. The two parties were in dispute. Mr. Lovett claimed that he had a proprietary interest in this name, which was inconsistent with the use of it by the Confederation for We ene sor to - ot, these commercial purposes. Whether he was right in that, remains to be seen. The Confederation, however, took the view that it had built up goodwill in relation to the name and was entitled to exploit it to an unlimited extent commercially. The general method of the respondent's trading has not been by public advertising. It has apparently been a more direct approach to selected persons with reference to specific projects. There is one avenue in relation to the activities of the respondent and of the applicant where their activities may come together, perhaps clash, and that 1s in relation to the obtaining of sponsors. Up to date the respondent has sought sponsors apparently only tor those tennis tournaments whereas the applicant has sought sponsors for all kinds of sport and all kinds of large sporting events which it promotes. Apparently, because of the different way in which the two organizations carry on their business, one in a blaze of publicity and the other quietly by more or less personal contact, there 1s no evidence that up-to-date there has been any confusion on the part of persons who have had occasion to deal with or contemplate dealing with the respondent between its business and the business of the applicant. There is no evidence that, notwithstanding the large publicity by the Confederation using the words "Sport Australia" and the degree to which those words have been used by the respondent, have 7 i ul = 8 i dn Sond sige oer ae I Pr. ', epee eo ord we a csaovt sor aerw ey - —~ re ae eee caused anybody to regard the respondent's business as connected in any way with the business of the Confederation or with the business of whatever the entity might have been, which was conducting events under the title "Sport Australia". Of course, in conducting its events, although the applicant has used the name "Sport Australia", it has used 1t substantially in away in which it is always clear that those words are used, not by an entity trading as "Sport Australia" but by the Confederation using those words asa title for various activities. This was clear from the video displayed to me, with reference to one important event, and from such literature as has been put before me in the exhibits in this case. It does not seem likely that a person, doing business with the respondent under the name "Sport Australia" has believed or will believe that that entity is the Confederation or is connected with it. There 1s, of course, a body of people in Australia who are aware of the activities carried on in the name of "Sport Australia Award", the forum of the Confederation, the seminars of the Confederation, and such persons may or may not know that such activities are the activities of the Confederation. It is obviously possible that such persons could, in a contact with the respondent, wonder 1f£ it was the body which conducted the award and the forum. Some might even draw the conclusion that the respondent was the body which ran the awards, etcetera. But there is no evidence that that 1s so, and the private profit-oriented nature of the respondent's business would tend to distinguish it from the broad public idealistic style of the applicant. At any rate, Mr. Lovett said that no case or any confusion had ever come to his notification, and the applicant calls no evidence that it has discovered any such case. My general impression is that there has been no such confusion. In evidence, the secretary of the applicant, Mr. Daly, conceded quite frankly that up to date - [ think the words were - there had been no trouble from the activities of the respondent. And indeed, it is clear that the two businesses went along quite comfortably until in March 1985, Mr Lovett saw fit to object to the expansion of the activities of the applicant. Of course, with the expansion of the Confederation into more straight out commercial activities and the licensing of peorle to use these words, it is possible that the risk of confusion in the future will increase, but that of course will be inthe main from the expansion of the applicant's area of activities ata time when the respondent's business is well-established and appears to be quite a considerable business, ata time when the respondent's business 1s "causing no trouble" to the applicant. This situation which has arisen, has arisen because Mr Lovett says that he thought of the name, regarded the Dunlop organization as having some entitlements in the name which would exclude other people, and that when he acquired from Dunlop such entitlements as they had, and he regarded 1t as peritectly proper to commence business in 1982 under the name "Sport Australia Pty Limited". Presumably, he knew at that stage of the activities of the Confederation - he must have known - and the fact that it had its Sport Australia Awards and carried out seminars and the like. It seems clear that Dunlop had never intended to give away its rights, whatever they were, in connection with the words "Sport Australia". Indeed when the Confederation first began to use the words, it knew that Dunlop did not intend to part with its fundamental entitlements in relation to those words. This was quite consistent with Dunlop's acquirescing with the activities of this beneficial organization, the Confederation, and allowing it to use the words in connection with the Australia Sport Awards and seminars and other affairs of that character which were carried on by the Confederation. So that the Confederation started life really - not started life, but at that pom a Are pemege ese = ara 10. stage, in conmnection with the use ot the words "Sport Australia", was really using those words in a nationally beneticial way, for the general benefit of sport, and their use was probably good for everybody connected with sport, whether in the playing of games or the selling of things in and about the business of sport. And so the Confederation's interest in and the use of this name has increased. It no doubt has done much to publicize these words and, as far as I can see, that would have done good to anybody trading or wanting to trade under the words "Sport Australia". But at this stage the Confederation fears that the respondent, carrying on business in the name "Sport Australia", may extend its operations and its publicity to an extent that persons with whom the applicant desires to deal in the way of obtaining sponsorship may think that it has something to do with the Confederation itself or, in more general terms, the entity, whatever it is, which conducts the Sport Australia Awards, seminars and the like. So .i1thas sought in this motion, which in the first place was to restrain the respondent from using the name between the time otf the motion and the bringing on of the matter for trial. If I believe Mr. Lovett, that he intends to carry on in the future - not forever perhaps - but certainly for a period which would extend beyond » the time when this trial is expected to come on for een wspes em ears a? ne eee wepres Nees sore mA ll. hearing, that he intends to carry on in the same way as previously, which to my mind involves that he is telling me that he does not intend to change his methods and do what might colloquially be cailed "go public", it seems to me that the situation in the next three months or thereabouts, or however long it takes to get to trial, is not going to change. There has been, as far as I can see, no confusion up to date; and f would anticipate that during the next few months the situation will remain the same. It is to be noted that Mr. Lovett was not seriously challenged in cross-examination on the issue as to the degree of publicity that he was going to indulge in in the next few months. I took it quite clearly that what was going to happen in the next few months, perhaps on a wider scale, was nevertheless going to happen in the same way as it as been happening in the last two or three years, and that the same, what one might call low key use of the "Sport Australia" name in the sporting world, was going to persist. In these circumstances, it seems to me that although there may well be serious questions to decide as to the ownership and entitlement to use this name and the extent to which each of these parties 1s entitled to use this name, which will have to be decided at the trial, at this stage what I am really engaged in is to consider whether, ona balance of convenience, the injunction magento we een . ane wo se ee ee re ee rapes sapere - Ta va ar) pray oot 12. should be granted as sought, or even in the modest terms which were suggested to me this morning on behalf of the applicant. I think I mentioned that it seems that Mr Lovett must have known in 1982 the general activities of the Confederation, and in 1982 and 1983 the Confederation knew that although its idealistic activities it was carrying on were satisfactory to Dunlop, it also knew that Dunlop was not giving anything away from a legal point of view. The applicant considered it was entitled to use the name and so did Mr Lovett. The Confederation was right ain thinking that Dunlop would not object to the use of the name in the way in which 1t was used, and of course in that it was quite correct. It was used for the achievement of the objectives of the Confederation, which were of the widest character, but intrinsically directed to the general betterment of sport. It is to be noted that the applicant is at present not in a position to actually implement its campaign to enter upon its proposed intensification of the purely commercial side of its business, and it is unable to say when it will do so. If the respondent were restrained from using the name, his established business - which 1s well-established and quite considerable - would obviously suffer very severe interference and possibly irreparable harm. egypt ces eye te ooe 13. Having regard to the past histories of the conduct of the two businesses and the probable method and scope of their conduct in the near future, I am quite satisfied that the overwhelming balance of convenience, balancing the injury to the respondent of a restraining order and the possible injury to the interests of the applicant in my refraining from imposing that restraint, 1s overwhelmingly in favour of refusing to restrain the respondent in the manner suggested. I have of course considered whether it would be appropriate to refrain from asking for the wider injunction sought and to restrain the respondent from advertising with respect to the name of "Australia Sport" in newspapers, television or radio. I do not think I should do so. It was clear to me in the evidence given by Mr Lovett that he does not intend to expand his business in that way. In his evidence he certainly created that impression, I think told me in plain terms that in carrying on his business in the future, in the immediate future at any rate, which I would think means till well after this trial takes place to come on, in three months, or thereabouts, he does not intend to change the nature of his business. He would be changing the nature of his business if he suddenly developed an expansive public campaign featuring the name, "Sport Australia", as the title under which he carried out his operations. pennant a te = + woes a ea! 14. I am far from saying that if he were to do that he would be wrong from the point of view of the law, but certainly 1t would be a matter to be considered in relation to the granting of interlocutory relief. Having regard to the serious situation which exists between the business of the Confederation and the business of Mr Lovett which must be clarified and at least the limits defined at the trial, I do not think that it would be proper for the court to issue an injunction to Mr Lovett not to do something which I gather he does not intend to do. To have an injunction against one is a serious matter. It submits one to serious consequences in the event of a breach and I do not think that it ought to be imposed on anybody who does not threaten to commit a breach of the law or in circumstances such as this, to do something which would be incompatible with the maintenance of the situation between the two parties between now and the trial. Accordingly, I dismiss the motion. As to the matter of costs, I have already mentioned to counsel that it seems to me that the Confederation should pay the costs of this motion. Ido not think there was a probability of an injunction being granted unless some real attack was made on Mr Lovett that he was intending actually to change the whole nature of his business. No such case has been put to me. It 1s said he might. Of course he might. If he does it maght have 15. its own consequences, but no such case has been put to me and this case is not really about what is going to happen in the next few months. This is a case of what 1s go1ung to happen in this very difficult situation which has arisen through the two parties both carrying on their businesses, both doing so lawfully during the last few years. Accordingly I think this motion is misconceived and the respondent should have his costs and I have given directions for the trial to be placed in the next callover to seek a date for trial. I certify that this and the previous fourteen (14) pages area true copy of the judgment of the Honourable Mr. Justice Smithers. Date: 17 September 1985 o) 7 Omaso bh , Ck atl' Associate uy semamep een 8 zoe > arate tee rg pee