CATCHWORDS TRADE PRACTICES - injunction ~- use of telephone number jurisdiction - claim for interlocutory relief - balance convenience - record required to be kept - registration business name. Trade Practices Act, s5.6(3), 52, 53{c} Business Names Act, 1962 (Q) AUSTRALIAN FUNERALS PYY LTD Vv. GREATER BRISBANE FUNGRALS and ELLENJAY HOLDINGS P2r¥Y LTD QLD G86 of 1985 PINCUS J. BRISBANE 23 SEPTEMBER 1985 of of neater uname ie see meee eames = IN THE FEDERAL COURT OF AUSTRALIA ) QUEENSLAND DISTRICT REGISTRY ) QLD G86 of 1985 GENERAL DIVISION BETWEEN : AUSTRALIAN FUNERALS PIY LTD Applicant GREATER BRISBANE FUNERALS and ELLENJAY HOLDINGS PITY LTD Respondents MINUTES OF ORDER JUDGE MAKING ORDER: PINCUS J. DATE OF ORDER: WHERE MADE: 20 SEPTEMBER 1985 BRISBANE THE COURT ORDERS THAT: 1. The proceedings be amended by adding Ellenjay Holdings Pry Ltd as an additional respondent. The order for amendment may be sufficiently complied with by including the name of the newly-joined respondent in any further proceedings filed in this Matter. The costs of the agplication be costs in the proceedings. NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. te th In pe i" ae nme ae we ee gees oot per . » ., * IN THE FEDERAL UEENSLAND DIS COURT OF AUSTRALIA ) TRICT REGISTRY ) ON ) GENERAL DIVIST BETWEEN : AUSTRALIAN FUNERALS PTY LTD Applicant AND: GREATER BRISBANE FUNERALS and ELLENJAY HOLDINGS PTY LID Respondents MINUTES OF ORDER JUDGE MAKING ORDER: PINCUS J. DATE OF ORDER: WHERE MADE: 23 SEPTEMBER 1985 BRISBANE THE COURT ACCEPTED TRE FOLLOWING UNDERTAKINGS: The respondents upon the applicant's giving the usual undertaking to pay damages undertake:- That upon the respondents or their servants, agents, or representatives answering a potential business call during business hours, the statement by the respondents shall be "funeral directors". That upon any caller stating an interest in the conduct of a funeral or cremation, an inquiry shall be made during the course of such call as to the source of the telephone call, and the respondents shall use their best endeavours to determine whether or not the inquiry arose out of an entry, advertisement, or referral of the business name "Crematorium Chapel Funerals". QLD G86 of 1985 feok "Dy RR eee ne te pre eons Tt ee "TT vy SF is Dales tated wea tas perce ey cn pacer ' ' NOTE The respondents shall, until the trial of the action, make and keep two lists - (a) a list of funerals conducted subsequent to the inquiry, ascertaining in the affirmative that the source of the call was an entry, advertisement, or referral of "Crematorium Chapel Funerals", (b) a list of all funerals and cremations conducted by the respondents or any of their associated businesses. Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. sep ra eo IN THE FEDERAL COURT OF AUSTRALIA ) QUEENSLAND DISTRICT REGISTRY ) OLD G86 of 1985 GENERAL DIVISION ) BETWEEN : AUSTRALTAN FUNERALS PTY LID Applicant AND: GREATER BRISBANE FUNERALS and ELLENJAY HOLDINGS PTY LTD Respondents PINCUS J. 20 SEPTEMBER 1985 REASONS FOR JUDGMENT The applicant applies for an interlocutory injunction to restrain the respondent Greater Brisbane Funerals, a "firm" constituted by a single individual, Mr L.d. Staunton, from engaging in conduct in breach cf ss.5Z2 and 53(c) of the Trade Practices Act. The applicant says - and it seems to me correct - that the Court has jurisdiction under s.6(3) since the conduct sought to be restrained involved the "use of postal, telegraphic or telephonic services". It follows that the provisions on which the applicant relies may be applied as if the reference in each section "to a corporation included a reference to a person not being a corporation": see s.6(3)(c). 5 23 ; Veen toa By a written agreement dated 22 April 1985 the applicant purchased a funeral business from D.J. Bishopp and others (the vendors) including the business name "Crematorium Chapel Funerals". The case for the applicant is that the respondent is using that name in the telephone directory and that, having bought the right to use it from the vendors, that is, from Mr Bishopp and others, it may restrain the respondent from using it. An initial difficulty for the applicant, pointed out by Mr Wilson, who appeared for the respondent, is that it does not appear to be established that the respondent is making any use of the name. On the evidence before me, the use complained of was made by a "firm" called Greater Brisbane Funeral Directors (my underlining) constituted by a company, Ellenjay Holdings Pty Ltd, in which the respondent, Mr L.Jd. Staunton, 1s interested. However, were the case for the applicant otherwise made out, there would, as it seems to me, be no rational objection to amending the proceedings with a view to granting an injunction. I therefore propose, for the moment, to consider the matter as if that amendment had been made and, for simplicity, speak of Greater Brisbane Funeral Directors as if it were the respondent. rouse a vs eee mee eee eee re 4. . Ly Tee Sten me ore = © oe ore a4 erentend Ha The application seeks relief in fairly wide terms, but the specific complaint which brings the applicant to Court for interlocutory relief is of publication in the white pages of the Brisbane telephone directory of an entry in the following terms:- CREMATORIUM CHAPEL FUNERALS (NORTHSIDE) 501 ANN ....-..-.-.-+--- 832 5668 (SOUTHSIDE) Pacific Hwy, Springwood 341 9133 In this entry, the address and telephone number shown adjacent to the word "(Northside)" are those of the applicant, and the address and telephone number adjacent to the word "(Southside)" are those of the respondent. It is established that under the register kept in pursuance of the Business Names Act 1962 (Q) as amended, the respondent is not registered in respect of the name in issue, Crematorium Chapel Funerals, and some of the vendors are so registered. The detailed provisions of that statute need not be set out. It ais enough to say that by s.5 it imposes a prohibition on the carrying on of business in the State of Queensland under a business name in circumstances which here apply, unless the name 1s registered. Counsel for the applicant argued that non-registration of a name would be some evidence of lack of ownership of the name. I note that the effect of registration was dealt with by Gibbs J., as he then was, in Re Johnson and Another; ex parte Greendale Endineering and Cables a Wea ero csp oe TR TIII Te een Pty Ltd (1967) 11 F.L.R. 335, especially on pp.341 and following. It appears to me from that case and on general principles that the proof of a registration may ground an estoppel. It is not quite so clear what proof of non-registration shows, but, on the whole, I am inclined to agree with the contention made that it is some evidence of lack of right to the name. Indeed, one could go somewhat further here, because on the case for the respondent it seems likely that an offence was committed in that it used the name, although not registered. The respondent, however, while not conceding that non-registration is prima facie evidence of lack of right to use the name, says that 1t is entitled to the use of the name for two reasons. Firstly, 1t says that the name is the property of a business formerly carried on by the vendors and it. Secondly, the respondent says that it has acquired goodwill under that name by using it in its business for some years. As to the name having been used ina business carried on by the vendors and the respondent, there is ample documentary evidence that the name was used jointly by them; the precise basis upon which it was so used is not clear from the evidence so far adduced. It 1s said by Mr P.D. Bishopp in an affidavit that one term of the agreement for use of the name was that the vendors were entitled to determine the use of the name by the respondent, if "Crematorium Chapel Funerals" commenced to service both the north side and south side of Brisbane, or if the business was sold to a third party. That is, however, denied in the evidence adduced on behalf of the respondent, The closeness of the connection between the vendors and the respondent in the use of the name is exemplified by Exhibit BFS7, a letter written on a letterhead which has at the top "Crematorium Chapel Funerals". Immediately under that on one side there is to be found the address of the vendors, and on the other side, the address of the respondent, followed in each case by the appropriate phone number. That document is signed, as it seems tome, by aMr Simpson on behalf of the vendors, is addressed to the respondent, and says:- "Please find enclosed copy of accounts for your perusal, together with account for your share of same." At the foot 1s a table setting out expenditure made in connection with the use of the name, and showing an equal division of that expenditure. In addition to material of the sort I have mentioned, other correspondence more recent in origin tends to support the general notion that there is a serious dispute as to the present right to the name, and I propose briefly to review some of that. yen eet ca pent ay ay weeps t On 4 February 1985 the respondent wrote to the vendors a letter headed "Re Crematorium Chapel Funerals", This recited that the parties were using an "Austas" telephone number and had agreed to cancel that from 1 November 1984. The letter complained of the vendors "purporting to act solely on behalf of 'Crematorium Chapel Funerals'" and said that:- "As joint owners of the business named 'Crematorium Chapel Funerals' we anxiously await your co-operation in finalising our present situation in relation to Austas." It 1s said in an affidavit made by Mr B.F. Staunton, at par. 13, that there was a conversation between Mr McEachern about the agreement between the respondent and the vendors, that the business Crematorium Chapel Funerals was a continuing one, that the respondent had an interest in the name, and he intended continuing to trade thereunder on the south side of the river. Counsel for the applicant said that his instructions were that the conversation sworn to did not take place, but mentioned that he was in some difficulty because Mr McEachern is elsewhere today, and the material filed on behalf of the respondent came very late. It does not seem to me, however, that the paragraph an question touches upon the essential point, which is whether or not the name in question is one in which the respondent has rights. The paragraph is merely swearing to an assertion by Mr B.F. Staunton, consistent with the present case advanced on behalf of the respondent, and there is other evidence of such assertions. ah hee So on d } | 'L. 3: On 22 April 1985, the day of the agreement above referred to, solicitors for the vendors wrote to the respondent a letter reading as follows:- "Re Crematorium Chapel Funerals We wish to advise that we act for Mrs Cheryl Bishopp and Mr Peter Bishopp the registered owners of the business name 'Crematorium Chapel Funerals'. You are hereby advised that all arrangements which our clients had with you with regard to the business name are hereby determined. Accordingly you no longer have our clients' consent to advertise under or in any way use the business name 'Crematorium Chapel Funerals'." That letter was replied to by one written by solicitors on behalf of the respondent, saying that it had been a term of the agreement between the partzres that registration of the business name would be transferred to both of them. That letter made various other complaints and threatened legal action. On the same date, solicitors for the respondent wrote to the Manager, Yellow Pages Directories (Aust) Pty Limited about the matter, referring to the fact that advertisements had been placed in the yellow pages under the name "Crematorium Chapel Funerals", and to the fact that there was then a dispute between the parties concerning the right to use of the name. On 2 May 1985, the solicitors for the applicant wrote to the respondent complaining of an advertisement which appeared in the Courier-Mail on that day, and referring to the letter written by the vendors on 22 April 1985, the day of the written agreement. On 2 May 1985, . Yt een es ere eee ee ait eens er, wee olen be further, solicitors for the vendors wrote to the solicitors for the respondent, referring to a letter of 1 May written by the latter, and in effect joined 1ssue on the contents of the letter. I do not propose to set out the terms of this letter of 2 May 1985 written by the solicitors for the vendors. It is unnecessary to do so because the point to be made is the negative one that there is no suggestion in that letter of the simple answer put forward by Mr Bishopp in his affidavit referred to above, namely, that it was an express term of the agreement that the arrangement between the parties could be terminated forthwith on sale of the business; rather, the implication of the letter was that the agreement was such that the vendors had no obligation to continue the arrangement. There does not appear to have been any direct response by the respondent, or solicitors on its behalf, to the complaint made by the solicitors for the applicant of 2 May 1985. However, not too much can be made of that, because it seems clear on the material that the respondent has not resiled from its stance that it has a right in the name in issue, and any inference against it from 1ts non-response to the letter of 2 May is weakened by the fact that on 13 August 1985 it instituted proceedings in the Supreme Court of Queensland against the vendors seeking relief in respect of the name in question, including an injunction restraining the use of that name by the vendors. It has also, as the material filed on behalf of the applicant shows, used the ee ee ' os oe pets ' aftr Ps. et ae Ase © 2 eye ween 8 wren oe erie ree on nt v1 ¢ ene ene ee TTS eS a Sa re tee ream a! ve eos ey ony fe Cn he an od Ste yee Me name subsequently to 2 April 1985 in other ways which it is unnecessary to detail. I am asked by counsel for the applicant, on the basis of the decision of the Full Court in Epitoma Pty Ltd v. Australasian Meat Industry Employees' Union (No. 2) 54 A.L.R. 730, to hold that there should be an interlocutory injunction if there is a serious question to be tried and the balance of convenience favours such a grant. In view of the decision in the Epitoma case, it seems clear that the test of "serious question to be tried" mentioned by counsel for the applicant is the one I should use, and indeed it seems currently to be used in the High Court. Although I hold that there is a serious question to be tried, I have not formed any clear impression from the papers as to the likely outcome of the dispute. The rélationship between the vendors and the respondent, which is at the heart of the matter, seems to be rather a complex question, and the resolution of it is likely to involve an examination of their conversations and mutual dealings over a period of some years. It seems to me rather odd that the vendors disposed of the name, or at least purported to do so, when, on any view of the matter, there were plainly unresolved issues between them and the respondent as to its use. On the other hand, there is no reason to think that the applicant acted other than in perfect good faith when it purchased on the assumption that 1t had no concern with the rights of the respondent. rere ales Tow Ay a) a Satie Saas Teh he rea ane heer ene ea an F be. en ee eas o,f ent > , of ee .¢ eee, poe en ere 10. However, I fail to see any reason why it should be thought more convenient that, pending the ultimate determination of this matter, the respondent should be restrained from making its present use of the name. What counsel for the applicant urged me to do as a means of preserving the status quo was to make an order having the effect that calls responding to the advertisement set out above should be intercepted or responded to by a recorded message, with the purpose of discriminating between those who wish to avail themselves of the services of the applicant and the customers who wish to avail themselves of the services of the respondent. I am not willing to do that. Ido not think that the preservation of the rights of the parties pending the final resolution of the matter reasonably requires that course. I note that the evidence of Mr B.F. Staunton includes a statement that he has kept a record of the funerals conducted by the respondent trading under the name in question between the months of March 1982 and March 1985. He does not say that he has kept a record subsequently to that, and it appears likely that, pending the final resolution of the matter, business will be obtained by the respondent, taking advantage of the advertisement which is the crux of the applicant's complaint. What I propose to do, wherher by an undertaking or making an order, is to require that the respondent keep a separate record, pendente lite, not only as to dates and names of customers, but as to receipts, so that there will be available a list of funerals conducted by use of the name peer Climate st MT te mee eens wy ee eee ee eee - Pa YY er hans li. and telephone number in the advertisement in question. I propose to order that the costs be costs in the proceedings. I invite counsel to make submissions as to the precise form of order, if any is necessary. I order that the proceedings be amended by adding Ellenjay Holdings Pty Ltd as an additional respondent. I further order that the order for amendment may be sufficiently complied with by including the name of the newly joined respondent in any further proceedings filed in the matter. 23 September 1985: The respondents now undertake:- 1. That upon the respondents or their servants, agents, orc representatives answering a potential business call during business hours, the statement by the respondents shall be "funeral directors". 2. That upon any caller stating an interest in the conduct of a funeral or cremation, an inquiry shall be made during the course of such call as to the source of the telephone call, and the respondents shall use their best endeavours to determine whether or not fe the 12. inquiry arose out of an entry, advertisement, or referral of the business name "Crematorium Chapel Funerals". The respondents shall, until the trial of the action, make and keep two lists - (a) (b) a list of funerals conducted subsequent to the inquiry, ascertaining in the affirmative that the source of the call was an entry, advertisement, or referral of "Crematorium Chapel Funerals", a list of all funerals and cremations conducted by the respondents or any of their associated businesses. * certify thar this and the // Preceding Pages are a true copy of the reasons for judgment herein of His Honour Mr. Justice Pincus DP... Pofas rink, Dated Associate *s ; oe oe ae eee ye epee pepe tes ve He tae Bt oo Oy TOs