"LAY CATCHWORDS TRADE PRACTICES - consumer protection - anterlocutory aimjunctive relief - whether conduct misleading amd deceptive - whether first respondent's use of "Interdependant*® similar to applicant's use of "Independent" - serious question to be tried - where balance of convenzrence falls. Trade Practices Act 1974 (Cth): ss. 52, 53. INDEPENDENT LOCKSMITHS (N.S.Ws) PTY. LIMITEN v. A. _AAARDIVARK MASTER LOCKSMITHS PIY._LIMITED ard AUSTRALIAN TELECOMMUNICATIONS COMMISSION LOCKHART J. 4 DECEMBER 1986 SYDNEY NEW SOUTH WALES DISTRICT REGISTRY > No. G5S5 af 1986 GENERAL [LIVIS TON BETWEEN? INHEPENDENT _______LOCKSMITHS (N.S.W.)_ PTY. LIMITED Applicant ANE: fi. _____ AAARDVARK ___ MASTER LOCKSMITHS PLY. LIMITED Farst Respondent AUSTRALIAN TELECOMMUNICAT IONS Second Respondent JURGE MAKING ORDER: LOCKHART J. EATE GE ORDER: 4 DECEMBER 1986 WHERE ORDER MAIDEs SYDNEY MINUTES OF _ ORDER THE COURT ORDERS THATS 1. The First Respondent by autself its servants or agents he restrained from using im trade or commerce the words '"Interdependant Locksmiths Co." or the words "Interdependant Parramatta" or the words "Interdependant Locksmiths Company" or any combination of such words or any words substantially or deceptively similar thereto. a. The Farst Kespondent ty itself its servants or agents ke restrained from publishing any advertisement or document using the words "Interdependant Locksmiths Co." or the words "Interdependant Parramatta' or the words "Interdependant Locksmiths Company" or any combination of such words or any words substantially or deceptively Similar thereto. 3. The First Respondent forthwith and until 1 January, 1988 attach to the telephone service mumber 683 2880 an answering machine message in the following words:- "G83 2880. If you wish to contact Independent Locksmiths of 79 Phillip Street, Parramatta please telephone 633 5877. I repeat 633 5877. If you wish to comtact A. Asardvark Master Locksmaths Pty. Limited of Westpoint Blacktown please telephone 621 43198. I repeat 621 4318.* 4. Tne Farst Respondent forthwith apply to the Second Respondent for the cancellation of the telephone service number 831 1717. Se The First Respondent by atself ats servants and agents he restrained from taking any steps to cause to be published or entered im future editions of the Sydney White Fages or Yellow Pages telephone directory or any Sydney district community telephone directory or any similar darectory the words '"Interdependant Locksmiths Co." or the words '"'Interdependant Parramatta" or the words "Interdependant Locksmiths Company' or any combination of such words or any words substantially or deceptively simalar thereto. G. The First Respondent redirect any enquiries for or about the applicant or 'Interdependant Locksmiths Co.* or 'Interdependant Farramnatta®' or "Interdependant Locksmiths Company" to the applicant at its telephone number 633 5877 or at ai1ts addre ss 79 Phillip Street, Parramatta. 7 « The First Respondent by itself its servants and agents ke restrained from representing im conmection with the business of a locksmith or of sale, anstallation, service, repair or maintenance of locks, safes, keys and security products generslly that the goods or services which 1t supplies or provide have the sponsorship or approval of the Applicant or that the First Respondent has any connection affiliation or relationship to the Applicant. 8. The First Respondent within fourteen (14) days from the date of this order do all such things and execute 311 such documents as shall be necessary to be done or executed in order to cease to carry on business under and to remove from the Register of Business Names Fept and maintained by the Corporate Affairs Commission of New South Wales the business name "Interdependant Locksmiths Co.". 9. The First Respondent pay the Applicant's costs. Otherwise no order 3s to costs. NOTES Settlement and emtry of orders is dealt with ain Order 36 of the Federal Court Rules. NEW SOUTH WALES DISTRICT REGISTRY ) No. G5S5 of 1986 GENERAL _DIVIS TON ) BETWEEN? INDEPENDENT ________LOCKSMITHS (N.S.W.) PTY. _ LIMITER Applicant AND: 4. __ AAARIVARK ~~ _ MASTER LOCKSMITHS PTY. LIMITED First Respondent AUSTRALIAN TELECOMMUNICATIONS Second Respondent 4 Ylecemker 1986 REASONS FOR _ JUNGMENT LOCKHART J. This 1s an application for interlocutory iumjunctive relief. The case commenced with the filing of an application on Monday, 1 December by the applicant, Independent Locksmiths (NSW) Pty. Limited. The applicant seeks to restrain the first respondent, 4 Aaardvark Master Locksmiths Fty. Lamited, from engaging im misleading or deceptive conduct within the meaning of s. 52 of the Trade Practices Act 1974 ("the Act') and from mabing certain representations which are said to contravene paras. S$3(c) and (4) of the Act. The second respondent submits. Frior to 1976 the managing director of the applicant, Mr. ae MeGovern, Was in partnership wath Stephanie Jane Griffin ain the business of master locksmiths. In 1976 a company was incorporated and has since operated the business. The partnership amd the company have sumee 1973, though, of course, at different times, carried on the business of master locksmiths under the name "Independent Locksmiths & Co. Pty. Laimited* and more recently under "Independent Locksmaths (N.S.W.) Pty. Limited'. The business, whem 1t was a partnership, initially operated from an address ain Northmead, near Parramatta; but between 1975 and 1983 it was conducted from an address in George Street, Parramatta. Sinee 1983 1t has been conducted from 79 Phillip Street, Parramatta in conjunction with eleven radio controlled vehicles. It employs about 22 pecple and has 3 large turnover. Its business 1s centred an Parramatta, but covers the Western Suburbs generally. The first respondent slso engages in the business of master locksmiths and has done so for 3 considerable number of years. However, 1t 1s only ain recent times that the first respondent has sought to use, 1m the conduct of ats husiness, the words * Interdependent Locksmiths", "Interdependent Lock smiths Co.", "Interdependant Locksmiths Company" or "Interdependant, Parramatta". There 15 a bold type entry am the Sydney White Pages telephone directory for 1986, which was inserted at the request of the first respondent, for ""Interdependamt Locksmiths Company', O'Connell Street, Parramatta, telephone nmumber 831 1717, a Blacktown address, 3. Telephone number 621 4318 and a Castle Hill address, telephone number 634 4443. In the 1987 Yellow Pages under the heading "Locksmiths" there 1s am entry for the applicant as "Independent Locksmiths" with ats Phallip Street, Parramatta address and telephone number and after one other entry there appears also in bold type "Interdependant Locksmiths Co., Interdependant Parramatta" with certain other words showing am address in O'Conneli Street, Parramatta and 32 telephone munber of 683 2880 with an after hours mumber of 634 4443. The evidence shows that the Farramatta telephone mumber for Lhe first respondent 15 1m fact a recorded message system located in the office of its solicitors. The first respondent has no showroom or workshop at the Parramatta address, though 1t seems from the evidence there may be some form of office maintained at the back of the solicitor's office by the first respondent. The Klackhtown number 621 4318 15 the telephone number of the first respondent's principal place of business. The telephone nmumber 634 4443 1s the home of the principal of the first respondent, Mr. Cattnan. The evidence establishes that the use of the mame "Interdependant Locksmiths" whether in conjunction wath the words "Co.", "Company", or "Parramatta", 15 used by the farst respondent only im the 1986 White Pages and the 1987 Yellow Pages and is not used on any letterhead, stationery or other documents of the first respondent. Otherwise, it seems it 15 not the mame used by 1t im the conduct of its business of locksmiths. There 1s evidence as to how the first respondent came to use . 4. the words "Interdependant Locksmiths". I say nothing about that because to deal with that would be to deal with issues of credit, as Mr. Cattnan has given evidence and been cross-examined, and I do not think 1t appropriate at this interlocutory stage of the case to form any views on matters of credit. As this is an interlocutory hearing I form no concluded views on anything. I simply enquire as to whether there 15 a serious question to be tried and, 1f there is, whether the balance of convenience calls for the grant or refusal of interlocutory injunctive relief. Like many cases of this Find the two concepts of serious question to be tried and the balsnce of convenience are not unrelated - andeed, I think ain this case they are closely related. Sometimes an applicant's case is fairly weak but yet sufficrent to say that there 1s a serious question to be tried and ome must approach, in these cases, the question of kalames of convenience wrth aéievery watchful eye. Other times, the case of an applicant 18 stromg at the interlocutory stage and that 1s relevant ain considering where the balance of convenience lies. In this case I think the applicant's case 1s strong and 1t 15 right that I say so. This 15 mot to say that if I were to hear the ease finally I would retain that view; that would depend on the evidence then adduced. The applicant has not only shown 4a serious question to be tried but also that the balance of convenience favours the grant of interlocutory anjunctive relief. The respondent has some farty two registered business or company mames under which it can continue to carry om its business of locksmiths. The respondent's Parramatta telephone mumber which 1S recorded in the Yellow Fages 15, Ss. as I suid, simply the solicitors' office im Parramatta with, 3t most, some small office premises. The Parramatta telephone mumber an the White Pages' entry of the first respondent 15 831 1717. It 1s in fact a number that, through modern technology, rings im other premises of the first respondent amd 1s answered there. The applicant 215 entitled to interlocutory protection to ensure that, until the final hearing, the first respondent does not in trade or commerce use the words "Interdependant Co." or *Interdependant Parramatta" or 'Interdependant Locksmiths Company", or any words substantially or deceptively similar thereto. Also, the first respondent should be restrained in the meantime from publishing any advertisement or document containing those words or any of them. It 1s not necessary to deal with interlocutory relief on the basis of $s. 53¢€c) or S3(d) of the Act because what I have sard and what I will say 1S covered adequately, I think, by s. 52 of the Act. The more troublesome question 1s what should be done about the two telephone mumbers which are recorded opposite the name of "Interdependant Locksmiths Company" 1m the White Pages for O'Connell Street, Parramatta and opposite the Yellow Pages entry for O'Comnell Street, Parramatta. I am mot convinced that orders should be made of a mandatory nature that they be discomnected, but I certainly think that the present position cannot be allowed to continue pending any final hearing. In my view the appropriate course to tare 15 that, first, 23 6. recorded message be used until the hearing of the suzt, which would tell enquirers who ring either of the nmumbers 683 2880 or 831 1717 that, if they wish to get im touch with the applicant, they should do so by calling the applicant's telephone number tut 1f they wish to get am = otouch, with not "Interdependant Locksmiths", tut some other recognised mame by which the first respondent carries om business, having mo conmection with the words "Independent Locksmiths" or "Interdependent Locksmiths", to call the first respondent at an appropriate telephone number. Second, the first respondent should mot take any steps to enter in the Sydney White or Yellow telephone directories future entries of the kind which I have said, on a prima facie footing, offend s. 52. Third, the first respondent should also be directed that, if any enquiries are made by persons, by telephone or atherwise, seeking to communicate with the applicant then all such enquiries should be redirected toa the applicant at its telephone number. Fourth, costs should be the applicant's costs in the proceeding. I direct the applicant to bring in short minutes of order this afternoon to give effect to these orders. (Later the same day counsel for the parties announced that the case had been settled and the Court was asked to make the following final consent orders: 1. The Farst Respondent by atself its servants or agents te 7. restrained from using in trade or commerce the words "Interdependant Locksmiths Co." or the words "Interdependant Parramatta" or the words *Interdependant Locksmiths Company" or amy combination of such words, or any words substanmtaslly or deceptively similar thereto. ae Tne First Respondent by atself 1ts servants or agents te restrained from publishing any advertisement or document using the words 'Interdependant Locksmiths Co.* or the words '"Interdependant Parramatta' or the words "Interdependant Locksmiths Company" or any combination of such words or any words substantzally or deceptively Similar thereto. 3. The Farst Respondent forthwrth and unmtizl 1 January, 1988 attach to the telephone service number 683 2880 an answering machine mess3ge im the following words:~ "683 2880. If you wish to contact Independent Locksmiths of 79 Phillip Street, Parramatta plesse telephone 633 5877. I repeat 633 5877. If you wash to contact A. Aaardvark Master Locksmiths Fty. Limited of Westpoznt Blacktown please telephone 621 4318. I repeat 621 4318." 4. The First Respondent forthwith apply to the Second Respondent for the cancellation of the telephone service number 831 1717. 8. Wa The First Respondent by itself ats servants and agents be restrained from' taking any steps to cause to be published or entered in future editions of the Sydney White Pages or Yellow Pages telephone directory or any Sydney district community telephone directory or = any similar directory the words 'Interdependant Locksmiths Co.* or the words '"Interdependant Parramatta" or the words "Interdependant Locksmiths Company" or any combination of such words or any wards substantially or deceptively similar thereto. G. The First Respondent redirect any enquiries for or about the applicant or "Interdependant Locksmiths Co." or "Interdependant Parramatta" or ""Interdependant Locksmiths Company" to the applicant at ats telephone mumber 633 5877 or at its addre ss 79 Phillip Street, Parramatta. 7. The First Respondent by itself its servants and agents be restrained from representing im commectionm with the tusiness of a locksmith or of sale, installation, service, repair or maintenance of locks, safes, keys and security products generally that the goods or services which 1t supplies or provide fave the sponsorship or approval of the Applicant or that the Farst Respondent has any connection affilistion or relationship to the Applicant. 8. The First Respondent within fourteen (14) days from the date of this order do all such things and execute all such documents as shall be necessary to be done or executed im order to cease to carry on business under and to remove from the Register of Business Names 9. kept and maintained ty the Corporate Affarrs Commission of New South Wales the business name "Interdependant Locksmiths Co.". 9. The First Respondent pay the Applicant's costs. Otherwise no order as to costs.) Counsel and solicitors the Applicant Counsel and solicitors the first Respondent Solicitor for Second Re Date of Hearing: Date of Judgment: | certify that this and the eds Ce) pseced.ng paces erc a true copy of the Reo br Jusice Lockhart. S for Jucsarrt Keren ef his Honour wd, sscc,ate Gated \ DWecem\ser \ABG for J.-F. Boultee instructed by H.«M. Symons & Rratten for TD. Reid instructed by Colter Roberson & Webb spondent L. Brady of Australian Government Solicitor 4 December 1986 4 December 1986