JUDGMENT No. 2S3 wt, NOT FOR DISTRIBUTION FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES REGISTRY No NG 730 of 1994 GENERAL DIVISION AUSTRALIAN PRIME REALTY T/as SYDNEY PRIME REALTY Applicant AND: GALBID PTY LIMITED T/as SYDNEY FIRST REALTY Respondent RECEIVED CORAM: SACKVILLE J. Seats SYONET romeo DATE: 10 NOVEMBER 1994 AUSTRALIA oF PRINCIPAL REGISTRY HIS HONOUR: In this matter an issue has arisen concerning answers that have been made by the applicant, and by individuals with some association with the applicant, in response to a notice to produce and subpoenas that have been issued. The notice to produce and subpoenas are in substantially identical form. The applicant has respon." 4e notice tic produce and the individuals mentioned in the subpoenas have responded to those subpoenas by producing certain documents to the court. There is no dispute as to a number of paragraphs within the notice to produce and the subpoenas. Those paragraphs are 1, 2, 5, 6, 8, 9, 10 and 12. Issues have arisen, however, with respect to paragraphs 3, 4, 7 and 11. The documents sought by those paragraphs are as follows: e All banker's receipt books and deposit books in respect of any bank accounts held by Sydney Prime Realty between 1 September 1993 and 31 March 1994. e The original or copy of the lease of the premises between Sydney Prime Realty and the registered proprietor of the premises from which Sydney Prime Realty conducted its business between 1 September 1993 and 31 March 1994. e Originals and copies of all accounts paid or payable by Sydney Prime Realty between 1 September 1993 and 31 March 1994. e Copies of all invoices issued by Sydney Prime Realty between 1 September 1993 and 31 March 1994. Mr Gray, who appears for the applicant, objects to production of documents pursuant to those paragraphs on the ground that the documents referred to bear no apparent relevance to the issues in the proceedings. Miss Gleeson, on t'~ other hand, submits that the documents sought are relevant and ought to be produced. I raised the question as to whether as a matter of form, the appropriate application by Mr Gray might not be to set aside the relevant paragraphs in the subpoenas or notice to produce, rather than to object to access being granted to the documents. In the event I do not think anything turns on this. The proceedings themselves have been commenced by way of application. The applicant seeks an order under the Trade Practices Act 1974 restraining the respondent from using, in relation to the provision of real estate services, the name "Sydney First Realty" or "Sydney Prime Realty" or any name substantially identical or deceptively similar thereto. Other relief is sought. However, the case seems to revolve around the applicant's reputation in the use of the name "Sydney First Realty" and "Sydney Prime Realty". As there are no pleadings it is necessary to look to the evidence that has, or might be, adduced in the case. Miss Gleeson has drawn my attention to the affidavit of Tony Reuben Braham in support of the application. That affidavit attests to the fact that the applicant trades as Sydney Prime Realty and has operated a real estate business in Double Bay since January 1994. The affidavit indicates that, from August 1993 to January 1994, Sydney Prime Realty operated under that name from an address at Vaucluse. The affidavit goes on to deal with the registration of the name "Sydney Prime Realty" in August 1993. It also states that, since commencing business, Sydney Prime Realty has established a considerable reputation in Sydney and in particular the Eastern Suburbs. The nature of the business undertaken by the company is set out in the affidavit. Certain information is provided as to the company's activities as selling agent for a development in Bondi. Miss Gleeson informs me that the question of whether the applicant is trading and the extent of the trading is in issue between the parties. Mr Gray points out that there is a considerable volume of evidence which, on its face, provides support for the proposition that the applicant is indeed trading. Nonetheless, it seems to me that it is, or may well be, an issue in the proceedings how far the applicant has engaged in trading. That question may bear upon the question of the reputation the applicant has acquired in the relevant market place. Miss Gleeson quoted me a passage from Ricketson's Intellectual Property, at paragraph 25.50, which indicates that evidence of sale and turnover may be adduced in support of a claim to reputation in cases under the Trade Practices Act 1974. That seems to me to accord with principle and indeed common sense. The material that is sought in the subpoenas and notice to produce relates, in part, to management reports, profit and loss statements, balance sheets and copies of accounts paid or payable, as well as copies of invoices issued by the applicant. It is perfectly true, as Mr Gray points out, that the question of the profitability of the applicant is not, as such, an issue. However, the material that has been sought, in my opinion, might be relevant to the extent of trading undertaken by the applicant and in turn might be relevant to the question of reputation that goes to the heart of the proceedings. It is not for me at this stage of the proceedings to second guess Miss Gleeson's statement that the extent of trading is in issue in the proceedings. Paragraph 4 of the notice to produce and subpoenas relates to a lease of premises between the applicant and the registered proprietor of the premises from which the applicant conducts its business. Miss Gleeson says that this relates to the nature of the premises and of the business undertaken by the applicant. Again, it may be that the lease itself will prove of marginal relevance to the question of reputation, but I can readily see how it might have some relevance to the proceedings. In particular, the size of the premises subject to the lease (and the terms of the lease) could be relevant to the extent of the activities of the applicant and accordingly the extent of the reputation that it acquired in the market place. Accordingly, treating Mr Gray's submissions as either an application to set aside the relevant paragraphs of the notice to produce and the subpoenas or as an objection to access to the documents, I reject his arguments. Accordingly, I will grant access to the respondent to the documents that have been produced in response to the notice to produce and subpoenas. RECORDED 3 NOT TRANSCRIBED HIS HONOUR: I indicated that access should be granted to the respondent to the documents produced by the applicant pursuant to paragraphs 3, 4, 7 and 11 of the subpoenas and the notice to produce to which I have already referred. Mr Gray has applied for a confidentiality order in relation to documents produced by the applicant pursuant to paragraphs 3, 4, 7, and 11 of the notice to produce and the subpoenas. He submits that access to those documents should be restricted to counsel and solicitors acting on behalf of the respondent in the proceedings. It seems to me that such an order should be made. The reason is that the material that has been produced and to which access will be granted concerns commercially confidential information, or at least information that one can readily understand might be commercially confidential and significant. It must be remembered that the applicant and the respondent are competitors within the same market. Indeed, as I understand the evidence, they trade very close to each other in the eastern suburbs of Sydney. Accordingly I propose to and do make the orders sought by Mr Gray. However, should this present a difficulty that requires a further order then I will grant liberty to apply to the parties on 48 hours notice if any such issue arises the preferable course would be for it to be referred to the trial judge, Foster J, having regard to the fact that the matter has been set down for hearing on 18 Novemr-~ 1994. RECORDED : NOT TRANSCRIBED HIS HONOUR: I will reserve the question of costs because I am not quite sure how today's application fits in with the totality of the matter. So I will reserve the question of costs. Foster J. can deal with the question of costs when his Honour resolves the entirety of the proceedings. Heard: Places Decision: Appearances: I certify that this and the preceding 6 Pages are a true copy of the Reasons for Judgment of the Honourable Justice Sackville. Associate: Va Je f-e~—_Ay Dated: 16 November, 1994 10 November, 1994 Sydney 16 November, 1994 Mr P.W. Gray instructed by Gilbert & Tobin, solicitors, appeared for the applicant. Miss J. Gleeson instructed by Andrew Thorpe, solicitors, appeared for the respondent.