CATCHWORDS TRADE NAMES - passing off - real estate agent deliberately adopting a trading name and logo to suggest an association with a large well known property developer - action dismissed - action not quia timet and no actual damage proved by applicant TRADE PRACTICES - ss 52 and 53A the Trade Practices Act - injunction granted restraining real estate agent's conduct as infringing ss 52 and 53A - proper construction of s 53A considered Trade Practices Act 1974 (Cth) - ss 52, 53, 53A, 79, 80, 82 Cases Considered Australian Woollen Mills Limited v F S Walton and Company Limited (1937) 58 CLR 641 Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 32 ALR 387 Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375 Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82 Halloran v Henry F Halloran & Co Pty Ltd (1985) 7 ATPR 40-501 Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191 Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd [1979] AC 731 World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 Central Equity Limited v Central Corporation Pty Ltd VG 10 of 1994 Drummond J Brisbane 29 September, 1995 IN THE FEDERAL COURT OF AUSTRALIA) No. VG 10 of 1994 VICTORIA DISTRICT REGISTRY ) GENERAL DIVISION ) BETWEEN: CENTRAL EQUITY LIMITED Applicant AND: CENTRAL CORPORATION PTY. LTD. Respondent MINUTES OF ORDERS JUDGE MAKING ORDER: Drummond J DATE OF ORDER: 29 September, 1995 WHERE MADE: Melbourne THE COURT ORDERS THAT: 1. The applicant's claim for relief at common law is dismissed. 2. The respondent by its directors, servants and agents is restrained pursuant to ss. 52 and 53A of the Trade Practices Act 1974 (Cth) from using: (a) the name "Central Corporation" or any colourable imitation of that name; and (b) the graphic material consisting of the assemblage of structures depicted in Exhibit C5 or any colourable imitation of that material in the course of its business as a real estate agent in connection with any property located anywhere within the Melbourne metropolitan area. 3. Liberty to apply to vary Order 2 with respect to the geographical area within which the restraint is to operate, provided the parties are agreed on the terms of any such variation. 4. The respondent pay the applicant's costs of and incidental to the action. NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA) No. VG 10 of 1994 VICTORIA DISTRICT REGISTRY ) GENERAL DIVISION ) BETWEEN: CENTRAL EQUITY LIMITED Applicant AND: CENTRAL CORPORATION PTY. LTD. Respondent Coram: Drummond J Date: 29 September, 1995 Place: Melbourne REASONS FOR JUDGMENT The applicant complains of the use by the respondent of the word "Central" in its corporate name under which it carries on business as a real estate agent from premises in the Melbourne Central Business District. The applicant seeks injunctive relief based upon the respondent's alleged infringements of s. 52 and s. 53A the Trade Practices Act 1974 (Cth) ("the Act") and in respect of the alleged passing off by the respondent of its business for the applicant's business. A claim for damages, made in the application and the pleadings, was not pursued at trial. The conduct of which the applicant complains is conduct by the respondent that is said to suggest that there is a business association between the parties that does not in fact exist. The applicant's business At all relevant times, the applicant's business has consisted of developing and selling residential dwellings and, in particular, medium density residential dwellings within the Central Business District of Melbourne and the near-city suburbs. That part of its business involving the development and sale of detached residences attracts mostly occupiers. But a very significant part of its business, consisting of the development and sale of medium density and high rise residential units, attracts predominantly the support of investors, rather than occupiers. A relatively small, but still significant, part of its business comprises sales of its units to investors in South East Asia. It has been, and continues to be, very successful in operating in this segment of the Melbourne property market. Its current annual turnover is of the order of $150M. It is a public company. The number of its shareholders has steadily grown, there being over 2,000 in March 1994, the most recent date covered by the evidence before me; these investors include a number of leading institutional investors. The applicant has received considerable favourable publicity in the financial press, particularly in Melbourne, as a well run, successful and profitable organisation. One reason why it has achieved such notoriety is that it has identified what is called a countercyclical niche in an otherwise depressed property market. The applicant also has a good relationship with various State Government organs and has received public support from the Premier and the Minister for Planning and Development. It is not difficult to accept that it could be commercially advantageous for an organisation involved in the Melbourne property market to be perceived by consumers and others involved in that market as having an association with this successful applicant. The applicant advertises heavily, particularly in the electronic and print media in Melbourne, but also interstate and overseas; its annual promotional budget is of the order of $5M. In its advertising material, the applicant's name, "Central Equity Limited", is always prominently displayed, often in conjunction with its professionally designed logo. This logo depicts a segment of city skyline, enclosed in a representation of the applicant's corporate seal, which is overprinted on a rectangle containing the words "Central Equity". The segment of city skyline is depicted in silhouette; it includes a church with steeple and numerous high rise tower buildings, above a stylised depiction of a river reflecting that same skyline. Although Mr. Kutner, a director of the applicant, suggested in oral evidence that the logo depicted a portion of the Melbourne skyline, I prefer what he says in his affidavit about it being more in the nature of a representation of part of an anonymous city Central Business District skyline. The newspaper advertisements feature the name "Central Equity Limited" prominently, often in conjunction with the slogan "Leading the Way in Melbourne Inner City Residential", or a similarly worded slogan. The applicant also publishes a large number of brochures for each of its developments; these are available at numerous real estate agents throughout Melbourne, as well as at the sales office on the site, at the opening launch of marketing and thereafter. In these brochures (but not in the newspaper advertisements) Central Equity Limited's address at Level 9, 365 Queen Street generally appears, sometimes fairly prominently and at other times fairly inconspicuously, with its name, in the mass of information in the particular brochure. This address also appears on the applicant's business stationery, together with its name and logo. At all relevant times, the offices of the applicant have been located on the 9th Floor of a building at 365 Queen Street, on the corner of Queen and A'Beckett Streets, in the City of Melbourne. It has no signage displayed on any part of the exterior of the building: signs in the foyer identify the applicant's presence there. So far as its selling activities are concerned, while it does sometimes make use of outside real estate agents, it does not market the units it develops from this head office but from on-site sales offices and from display centres at completed developments and, as I have said, through extensive media advertising. While the word "Central" is incorporated in the names of many Melbourne businesses, there is no suggestion that there is in Melbourne any business other than the applicant which trades under the name "Central Equity", or a similar name. The respondent's business The respondent was incorporated in February 1993. It carries on business as a real estate agent. One of its directors, Mr. Graham, gave evidence. Immediately prior to the incorporation of the respondent, Mr. Graham was a principal of another real estate agency, Stockdale & Leggo Commercial Pty. Ltd. ("Stockdale & Leggo"). This company carried on business at 361 Queen Street, i.e., on the opposite corner of A'Beckett & Queen Streets to the building on the 9th Floor of which are located the applicant's offices. The lessor to Stockdale & Leggo was a company associated with Mr. Kutner. The lease was for a period of 12 months from 7 April, 1992, with an option of 12 months. Stockdale & Leggo was a franchised agency and it did not operate successfully. Its business was mainly concerned with the sale of commercial properties; however, by early 1993, this particular market had become depressed so Mr. Graham decided to concentrate on the leasing of commercial properties and to terminate his franchise with Stockdale & Leggo. He did not exercise Stockdale & Leggo's option to renew the lease at 361 Queen Street. Instead, Mr. Graham commenced to carry on business, through the newly formed respondent, from about April 1993, from premises in A'Beckett Street in the building adjacent to that fronting on 365 Queen Street, which houses the applicant's offices. Mr. Graham said that he and his partner, Mr. Cooke, decided not to renew the lease of the premises at 361 Queen Street, but to move to those in A'Beckett Street because the rent was much lower. The respondent has the office from which it conducts its own business at street level, with signage displaying its name and the description of its business as "Real Estate Agents". I accept that the way things have turned out, the respondent's business is now predominantly confined to the leasing of commercial and industrial properties. But in so far as the respondent both deals and is prepared to deal with both potential vendors and potential purchasers of residential units, if such persons come to it, in order to earn commission from any sales that eventuate, the respondent does operate in the same area of the Melbourne property market as that in which the applicant operates. Mr. Graham, in his affidavit of April 1994, said that the respondent's principal activity then was the sale of commercial businesses and industrial property and the leasing of commercial and industrial property "mainly in the Central Melbourne area", while approximately 10% of the respondent's business comprised residential sales. In oral evidence, he said that the respondent would, in effect, take on any real estate business in the Melbourne metropolitan area, including business concerned with the sale of residential units, that it could get and that the respondent's clients were located throughout the city, i.e., not just in the Central Business District. Although in its entry in the Melbourne "Yellow Pages" the respondent refers to itself as "The Leasing Specialist" as the only description of the nature of its business, in its letterhead, the respondent describes itself as "Real Estate Agents & Property Consultants". In this letterhead, there also appears at the foot of the page the following: "Commercial-Industrial-Business-Residential-Property Management". Its business cards contain the following descriptive material: "Real Estate & Property Consultants Commercial. Business. Residential." The respondent uses its letterhead not only in correspondence with clients and potential clients but also in a way that advertises the range of services it offers, as well as advertising particular properties: it regularly conducts mail drops of up to 1,000 letterheads at a time, including drops in the Melbourne Central Business District, to solicit new listings as well as to advertise existing listings. Like the applicant, the respondent uses graphic material, described both by the applicant's witnesses and also by Mr. Graham as a "logo", on its letterhead and other stationery. This logo incorporates the name "Central Corporation" overprinted on two stylised capital "C's" that are not, however, readily identifiable as such. The word "Central" is in more prominent print than the word "Corporation". This logo also includes a much more representational depiction than is found in the applicant's logo of a church with steeple and inner city buildings, including commercial tower buildings. In contradistinction to what appears in the applicant's logo, the individual buildings and other structures depicted in the respondent's logo are recognisable as structures in the Melbourne Central Business District. But the respondent's logo still depicts these individual buildings in an assemblage, in juxtaposition with the words "Central Corporation"; for that reason, it is I think evocative of the stylised assemblage of buildings juxtaposed with the words "Central Equity" that comprises the applicant's logo. In about mid May 1993, i.e., soon after Mr. Kutner learned of the respondent's existence and its activities, he spoke with Mr. Graham and was told that the respondent intended to market and sell both commercial and residential property in the Melbourne metropolitan area under the name "Central Corporation". Mr. Graham did not deny that this was the respondent's intention when the applicant's solicitor, Mr. Lovell, spoke with him immediately afterwards. Mr. Lovell faxed a letter to Mr. Graham on 14 May, 1993 recording the burden of his discussions with Mr. Graham. The letter also recorded what Mr. Graham had to say to Mr. Lovell about being prepared to change its name from "Central Corporation" if the applicant was prepared to reimburse Mr. Graham's company the costs associated in changing its current letterhead and signage, a position Mr. Lovell noted Mr. Graham immediately afterwards resiled from in discussions with Mr. Kutner. If Mr. Lovell's letter did not accurately set out the discussions between he and Mr. Graham, it was a letter which obviously called for a correcting reply. Mr. Graham did not, however, reply. I reject Mr. Graham's oral evidence of his discussions with Mr. Kutner and Mr. Lovell in so far as that evidence is inconsistent with what each of Messrs. Kutner and Lovell said and what appears in Mr. Lovell's letter of 14 May, 1993. Mr. Graham has given, at various times, inconsistent explanations for why he adopted the name "Central Corporation" for the respondent. In all, he disclaims any deliberate attempt to associate the respondent with the applicant. I reject these explanations and disclaimers. In oral evidence, he acknowledged that it did cross his mind, when he adopted the name "Central Corporation", that it bore a resemblance to "Central Equity" and that if some of the applicant's success were thereby to rub off on to the respondent, that would be "well and good". He supported his denial of any intention to deliberately associate the respondent with the applicant by adopting the name "Central Corporation" by saying: "We deal in a different market", (a proposition his own evidence shows not to be an accurate one). He added: "If I was a medium density developer I probably would have thought twice about using the name." The applicant was, at the relevant time, very well known as a highly successful property developer and Mr. Graham was well aware of this. I find that he chose "Central Corporation" as the name for the respondent against a background of the failure of his franchised real estate business, in the hope that people who might deal with the respondent, either as prospective vendors or lessors or as potential purchasers or lessees of commercial and residential properties, would associate the name "Central Corporation" with the well known, well established and successful entity in the property market, "Central Equity Limited". I find Mr. Graham did this because he considered that if such persons were to perceive that there was an association between the respondent's business and that of the applicant, it would be to the respondent's commercial advantage. Renting premises for the respondent close to the applicant was not, I think, something Mr. Graham did deliberately to foster the appearance of an association with the applicant. I accept that his main motive for moving to this address was the attractiveness of the rent, together, probably, with the fact that he would remain in business in the same location as previously. However, I think he was happy to obtain for the respondent any benefit, in the form of a perception among the relevant portion of the public that the respondent and applicant were associated, that this propinquity might generate. That 365 Queen Street is the applicant's base was sufficiently publicly known to create an expectation by Mr. Graham that such a perception might well be encouraged by the respondent operating close by, even though, unlike the respondent, the applicant did not have a shop or office front or even signage on either the Queen Street or A'Beckett Street alignments. Passing off The first question for decision is whether the respondent, by adopting, by Mr. Graham's actions, a trading style that included the word "Central" with the neutral word "Corporation" as its trading name, is guilty of the tort of passing off. In Erven Warnink Besloten Vennootschap v J. Townend & Sons (Hull) Ltd. [1979] A.C. 731, the Advocaat case, Lord Diplock, at 742, identified the five elements which must be present to create a valid cause of action in passing off as follows: "(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so." Where a trader seeks to protect a trade name that is not registered as a trade mark in reliance on the law of passing off, he must show, in order to make out elements (1) and (4) of that cause of action, that at the date of the actions of the respondent about which the trader complains, he has acquired an intangible proprietary right in the goodwill of the name. To do this he must show that, by that date, the name has come to be regarded by a sufficient proportion of the public as distinctive of a product or service or business, i.e., a product or service sold or provided or a business conducted by one particular trader, even though the identity of that trader may be unknown to the public: the Advocaat case, at 755. In Burberrys v J.C. Cording & Co. Ltd. (1909) 26 R.P.C. 693, Parker J, at 701, illuminated the basis on which a trader can restrain another from passing off his goods or business as that trader's by using a word or a name similar to the trader's own unregistered word mark or trading name: "... no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled by the use of any word or name, or indeed in any other way, to represent his goods as being the goods of another to that other's injury. If an injunction be granted restraining the use of a word or name, it is no doubt granted to protect property, but the property, to protect which it is granted, is not property in the word or name, but property in the trade or good-will which will be injured by its use. If the use of a word or name be restrained, it can only be on the ground that such use involves a misrepresentation, and that such misrepresentation has injured, or is calculated to injure another in his trade or business." The evidence is insufficient to justify a finding that Central Equity Limited has acquired any legally protectable rights in respect of the use of the word "Central" in relation to the property market in the Melbourne inner-city and near-city areas. There is no sufficient evidence that "Central", when used in relation to the entire, or to any segment of the, Melbourne property market, had come to be regarded by any section of the public by the time the respondent commenced its operations (or at any subsequent time, for that matter) as referring to the business of the applicant and of the applicant only. It would, I think, be very difficult for the applicant to make out that entitlement in respect of such a common word. I accept, however, that the applicant has an interest, protectable by an action in passing off, in respect of the phrase "Central Equity", when that phrase is used in the context of the Melbourne property market. I also accept that the applicant had acquired that interest prior to the time the respondent commenced its activities, by reason of the phrase having become distinctive to a substantial portion of the Melbourne public of the applicant's business. I have referred above, in describing the applicant's business, to the evidence which has led me to this conclusion. Although the applicant cannot establish a protectable interest in respect of the word "Central" when used in reference to a business engaged in any segment of the Melbourne property market, it may still therefore be able to prevent the respondent from misrepresenting to the Melbourne public that it has a business association with the applicant. I am prepared to find that the respondent misrepresented that it had a business association with the applicant by: (a) its principal, Mr. Graham, deliberately deciding to use the word "Central" in the name under which the respondent traded to try to create a perception among potential customers of the respondent that there was that association; and (b) by Mr. Graham adopting a logo designed to evoke the applicant's logo and thus suggest the same association; and (c) by trading from premises next door to the premises, which are likely to be fairly widely known as the applicant's base. The applicant has also satisfied me that it was reasonably foreseeable that the respondent's misrepresentation of this association might injure the applicant's business or goodwill: in so far as the respondent engages, to the extent it has opportunity to do so, in the same segment of the Melbourne property market as the applicant, viz., the sale of residential properties, there is a prospect, not fanciful, that some custom intended for the applicant will be diverted, under the influence of the misrepresentation, to the respondent. The respondent's misrepresentation could, in theory, also have the potential to injure the applicant in its business or goodwill, quite apart from the potential for diverting business from the applicant to the respondent in the area of residential sales in which they are in limited competition: even though two traders are not in actual competition, if, e.g., a disreputable trader falsely associates his business with a reputable trader's business, the latter's business and goodwill are likely to be damaged. See Australian Law of Trade Marks and Passing Off, 2nd Ed., Shanahan, pp. 391-392. But the applicant did not attempt to make out such a case against the respondent and there is no ground for any suggestion that the respondent's operations are conducted in a way which attracts criticism. To prove a case in passing off, the applicant must also show that it has suffered damage from the misrepresentation. This action was plainly not brought quia timet, so actual damage, not the mere probability of damage, must be proved to complete the cause of action here. The applicant made no attempt to prove its claim for monetary damages. That does not necessarily mean it cannot prove this final element of its cause of action so as to complete its entitlement to the injunctive relief it seeks. I have found that the respondent's adoption of the word "Central", as a prominent part of its trading name, and its adoption of a logo evocative of the applicant's logo were deliberate ploys to misrepresent to the public a business connection between respondent and applicant. Both respondent and applicant do compete in the area of residential unit sales, albeit only to a limited extent. It is therefore open to me to infer, despite the absence of other evidence, that the respondent has succeeded in its objective and that its actions have, in fact, caused some people to deal with the respondent rather than with the applicant, in the mistaken belief that they were dealing with an organisation associated with the applicant. See Australian Woollen Mills Limited v F.S. Walton and Company Limited (1937) 58 C.L.R. 641 at 657; Cadbury Schweppes Pty. Ltd. v Pub Squash Co. Pty. Ltd. (1980) 32 A.L.R. 387 at 398; The Law of Passing Off, Wadlow, paragraph 3-09; and Australian Law of Trade Marks and Passing Off, 2nd Ed., Shanahan, pp. 391-392. But it is a notable feature of the case and one emphasised by counsel for the respondent that, even though the respondent has traded under the name "Central Corporation" for nearly two and a half years from premises close to the applicant's head office, the applicant has adduced no evidence suggesting that anyone has dealt with or contacted the respondent, thinking that the applicant and the respondent were associated. The applicant, in its case, led evidence of the delivery to the applicant of a single letter addressed to the respondent at 361 Queen Street in June 1993, i.e., soon after the respondent had moved from that address. That the applicant could produce only this lone example of perhaps understandable confusion by the post office provides a positive ground for thinking that the respondent's mode of business has not mislead anyone into thinking that there is an association between applicant and respondent, to the applicant's loss. The respondent so contended. The absence of evidence of actual deception is not conclusive in the respondent's favour. But I think it is of particular significance in this case where the respondent has been engaging in the conduct complained of for such a long time, even though it might be thought that there would be little opportunity for the applicant to turn up evidence of actual deception, given the limited extent to which the respondent competes with the applicant. I am not prepared to draw the inference that the respondent's conduct has caused the applicant some actual damage. The claim in passing off is dismissed. Section 52 That the applicant cannot prove actual damage as a result of the respondent's conduct is no bar to its claims for injunctive relief under s. 80 of the Act based on an infringement of s. 52 of the Act (and an infringement of s. 53A of the Act). See World Series Cricket Pty. Ltd. v Parish (1977) 16 A.L.R. 181 at 186. The principles relevant to the determination of whether conduct infringes s. 52 of the Act in circumstances like the present ones are: in determining whether conduct is likely to mislead, the relevant section of the public by reference to which that determination is to be made, must be identified. Taco Company of Australia Inc. v Taco Bell Pty. Ltd. (1982) 42 A.L.R. 177 at 202. The existence of a common field of activity is not necessary before s. 52 of the Act can be infringed, although it is a relevant factor: Chase Manhattan Overseas Corporation v Chase Corporation Ltd. (1986) 12 F.C.R. 375 at 376; as Lockhart J pointed out in this case, at 377, s. 52 of the Act is one of a number of provisions whose purpose is to protect consumers from unfair trade practices and, in particular, by preventing misleading or deceptive conduct which will affect the identification of goods and services. I therefore think that the relevant segment of the public comprises not only persons who are potential purchasers, either for their own occupation or for investment, of residential units in the inner-Melbourne area, but also any member of the public who might have business dealings with the respondent, i.e., potential purchasers and vendors and potential lessors and lessees of commercial and industrial properties throughout Melbourne. Since s. 52 of the Act is infringed by conduct that is "likely to mislead or deceive", it is unnecessary to prove that the conduct in question actually deceived or misled anyone. See Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 C.L.R. 191 at 198; Trade Practices Law, Heydon, paragraph 11.290. 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". Global Sportsman Pty. Ltd. v Mirror Newspapers Pty. Ltd. (1984) 2 F.C.R. 82. Whether particular conduct of which complaint is made is misleading or deceptive or is likely to mislead or deceive is a question of fact to be answered in the context of all the relevant circumstances; irrespective of whether conduct produces or is likely to produce confusion, it cannot be categorised as misleading or deceptive within s. 52 of the Act unless it conveys, in all the circumstances of the case, a misrepresentation. Taco Bell, supra, at 202. Evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive, but is not essential. The court must determine for itself the question whether conduct is misleading or deceptive or likely to mislead or deceive. The test is objective. Taco Bell, ibid. I have already given my reasons for thinking that the respondent's conduct complained of did convey a misrepresentation that there was an association between the businesses of it and the applicant. There is nothing in the evidence here that suggests that anyone has actually been misled or deceived by the respondent's conduct into thinking that an association exists between the businesses of the parties. Moreover, the applicant is conscious of the value of evidence of actual deception but, although the respondent has been engaging in the conduct complained of for nearly two and a half years, has been unable to produce any such evidence. However, while I am not prepared to find that the respondent has engaged in conduct which has misled or deceived anyone, I am prepared to find that its conduct of which complaint is made is likely to mislead or deceive. In reaching this conclusion, I have regard to my finding that the respondent deliberately engaged in the conduct complained of to foster a perception that it was associated with the applicant, i.e., he adopted a course which he, as an experienced real estate agent, considered would be likely to produce that result. I have referred to what Mr. Graham told Mr. Kutner in May 1993 as to the respondent's trading intentions and to what Mr. Graham had to say was the nature of the respondent's business in April 1994, i.e., predominantly the leasing of commercial premises but to a small, but not insignificant, extent the sale of residential properties. I have also referred to what Mr. Graham has had to say about the respondent's attitude towards taking on business involving the sale of residential units and properties now. I have referred to the indicators contained in the respondent's stationery as to its area of business. All this shows that the respondent has engaged and will engage, if opportunity presents itself, in selling the same product in which the applicant specialises, viz., inner-city residential units. I therefore take into account the likelihood that relevant members of the public may be misled into thinking that the respondent is associated with the applicant is increased, albeit only to a limited extent, by the fact that there is some overlap between the activities of the parties. I also consider that the respondent's mode of advertising its business by frequent letter drop carries with it the potential, sooner or later, for someone being misled. The respondent's conduct in making the representation was therefore likely to mislead and deceive the group comprising those of its potential customers interested in residential units. But even if its pool of customers were entirely confined to potential vendors and lessors and potential purchasers and lessees of commercial non-residential premises in the city, while the applicant's pool of potential customers was confined to persons interested in buying inner-city residential units and their advisers, that would not require any different conclusion: for an agent involved in commercial leasing in the inner-city to be perceived as associated with a well established and highly successful inner-city residential property developer is, I think, capable of conferring a real commercial advantage on the former to which it is not legitimately entitled. Such a perceived association may cause persons seeking to dispose of or acquire interests in inner-city commercial premises to seek out the respondent rather than others of its competitors. It is likely, in my opinion, that a number of persons in the pool of potential customers sought by the respondent would consider it advantageous to deal with an agent who was associated with a well known and reputable organisation, than with a competing agent about which those potential customers knew nothing. That this is what the respondent intended to achieve and that it would be a valuable advantage are inferences which should be drawn from Mr. Graham's deliberate decision to try to foster that perception. This is, therefore, one of those fairly rare cases in which a claim fails in so far as it is based on the tort of passing off but succeeds in so far as it is based on s. 52. None of this means that the applicant will be able to enforce a monopoly in the use of the word "Central" by anyone in relation to any part of the Melbourne property market. The evidence shows that there is a real estate agent at Northcote trading as "Central Real Estate". There is no reason to think that its principals, by doing that, are thereby infringing the property rights the applicant has in its own trading style "Central Equity Limited", or that they are thereby infringing s. 52 or s. 53A of the Act. More than the mere use of the word "Central" as part of its trading style by an organisation engaged, in some capacity, in the Melbourne property market will be necessary before either s. 52 or s. 53A of the Act will be infringed by reason of the applicant's own presence in that market. Counsel for the respondent referred me to a number of cases which raised the question whether s. 52 of the Act was infringed by the use by the respondent of a business name incorporating elements of the applicant's business name. I do not think it necessary to analyse these cases since they do no more than apply established principles to the particular factual circumstances of the individual case. It is sufficient to observe that the decision in Chase Manhattan, supra, the one most heavily relied on by the applicant, involved a quite different set of factual circumstances from the ones in this case. The Chase Corporation's innocent adoption of the word "Chase" in its trading name could not mislead: the only relevant misconception suggested, viz., that it might cause people to believe that it was associated with the applicants, was shown to be unlikely because the respondent intended to trade under a name, Chase AMP Bank, which would strongly differentiate its business from the applicants' business. See particularly Lockhart J, at 378. Far from that being the case here, the respondent deliberately adopted the word "Central" and also a logo evocative of the applicant's logo, as part of its trading style, to benefit from the applicant's reputation and the differences between the trading styles of applicant and respondent are, in consequence, much more limited than those on which the Chase Manhattan case turned. Section 53A The applicant also alleges that the respondent's conduct suggesting that there is a business association between the parties that does not in fact exist infringes s. 53A of the Act. The applicant seeks an injunction to restrain the conduct complained of on that basis also. Section 53A of the Act relevantly provides: "(1)A corporation shall not, in trade or commerce, in connexion with the sale or grant, or the possible sale or grant, of an interest in land or in connexion with the promotion by any means of the sale or grant of an interest in land - (a) represent that the corporation has a sponsorship, approval or affiliation it does not have. ..." It was submitted on behalf of the respondent that this provision should be given a strict interpretation, because, unlike s. 52 of the Act, a breach of s. 53A of the Act attracts criminal sanctions: s. 79(1) of the Act. It was then submitted that the section should be interpreted only as prohibiting a corporation making the proscribed representation in relation to specific and identifiable transactions and that it should not be interpreted as prohibiting a corporation from making a representation of affiliation in the course of the general promotion of its business. (If this submission is correct, the latter kind of misrepresentation could still of course give rise to civil liability in damages under s. 82 of the Act or it could attract an injunction under s. 80 of the Act, as conduct infringing s. 52 of the Act, where all the matters necessary to establish that liability are proved.) There is no warrant for giving to the words of the section anything other than their ordinary meaning. Section 53A of the Act was inserted on the recommendation of the Trade Practices Review Committee Report of 20 August, 1976 ("The Swanson Report"): see the Minister's second reading speeches of 8 December, 1976 on the lapsed bill and of 3 May, 1977 on the bill that resulted in the enactment of that section. Section 53 of the Act imposes criminal sanctions on particular kinds of conduct in connection with the supply of goods or services which were identified as involving common abuses; the Swanson Committee recommendation (paragraphs 9.78 and 9.79) was that a specific provision should be enacted to proscribe, subject to criminal sanctions, common abuses in relation to land transactions. Section 53A of the Act was the result. It is because the section is concerned with prohibiting abuses identified as commonly occurring in connection with land transactions that various of the provisions of the section, including sub-paragraph (a), do not require proof that anyone has been or is likely to be misled by the practices in question. For the same reason, conduct infringing the section attracts criminal sanctions (as well as providing a foundation for civil remedies). There is thus no reason to strive to find grounds for restricting the ordinary meaning of the words of the section. Having said this, I consider that the words of the section show that it only applies if the proscribed representation is made in connection with transactions or possible transactions involving the sale or some other disposition of interests in particular parcels of land. Misrepresentations of affiliation made in relation to a corporation's general business activities will not be sufficient to infringe the section, even if the corporation's business concerns the selling of land. For the section to be infringed, the misrepresentation must be made in circumstances which involve the sale or possible sale of some identifiable parcel or parcels of land: the particular parcel may be identified precisely, e.g., by title description or address. But it will be enough if it can be pointed to only in the most general way, e.g., as being an as yet unidentifiable part of a proposed subdivision of a large area at a particular place. Cf. the kind of representation that was held in Halloran v Henry F. Halloran & Co. Pty. Ltd. (1985) 7 A.T.P.R. 40-501 to infringe s. 53A(1)(a). That s. 53A(1)(a) of the Act should, I think, be confined in this way, does not assist the respondent. The evidence shows that while the respondent may promote its business in a general way, it also engages in conduct that infringes the section in relation to each particular transaction of sale or lease which it brings about or seeks to bring about. Mr. Graham gave this evidence: "Can you explain what you mean by a mail drop, Mr Graham?---Well, if we are advertising specifically a property and we just basically use the letterhead, provide a few details about the property, so it is basically the letterhead dropped at various locations. And can you just explain to the court the types of properties that you are referring to?---Mainly warehouses, shops and offices. And where do you drop them?---Occasionally in the CBD area, businesses for sale. At one stage we had, I think, the letter that Mr Kutner is referring to is actually a mail drop trying to get businesses for sale and that was dropped throughout the city." He also said: "Now, Mr Graham, every client that you deal with by fax, or by letter, or by with compliments slip, you do so on the basis of that or a logo to that effect, with a logo of the City of Melbourne and the name Central, is that correct?---Yes." And: "But you do, as part of your business, you do mail drops to attract investors, do you not?---If we have a property that is suitable." Mr. Graham here deals with two different sets of circumstances. Firstly, where the respondent is retained to sell or lease properties listed with it, it from time to time makes use of its letterhead, incorporating its name "Central Corporation" and its logo, in advertising those particular properties to prospective purchasers. Secondly, it makes use of its letterhead to solicit vendors and lessors to list their properties with the respondent. That it engages in the conduct complained of, which I have held amounts to a misrepresentation of an affiliation with the applicant, in connection with attempts to procure sales or leases of particular properties that are listed with it, is sufficient to show that it has repeatedly infringed s. 53A(1)(a) of the Act, even though it does not infringe the section by making the same misrepresentation in the course of advertising its business in a general way or in the course of soliciting listings. The order to be made The applicant is entitled to discretionary injunctive relief under s. 80 of the Act in respect of the respondent's conduct, in contravention of both s. 52 and s. 53A(1)(a) of the Act, of deliberately misrepresenting that it is associated with the applicant. One element of the conduct which I have referred to as comprising this misrepresentation is the respondent's carrying on of its business from premises next door to the applicant. I do not, however, think that the injunction should reflect this by only prohibiting the respondent from engaging, within a limited distance of the applicant's office at 365 Queen Street, in the other kinds of conduct also going to make up the misrepresentation. The burden of the respondent's conduct that infringes s. 52 and s. 53A of the Act is its adoption, as its trading style, of the word "Central" as a prominent part of its name and its logo and its use of that trading style in carrying on its business throughout Melbourne: it is prepared to and does handle properties anywhere in the city, not just in the Central Business District. For the reasons earlier given, any assistance in creating the perception of an association with the applicant derived by the respondent from its closeness to the applicant is limited. I will therefore order that the respondent by its directors, servants and agents be restrained pursuant to ss. 52 and 53A the Trade Practices Act 1974 (Cth) from using: (a) the name "Central Corporation" or any colourable imitation of that name; and (b) the graphic material consisting of the assemblage of structures depicted in Exhibit C5 or any colourable imitation of that material in the course of its business as a real estate agent in connection with any property located anywhere within the Melbourne metropolitan area. I certify that this and the preceding 28 pages are a true copy of the reasons for judgment herein of the Honourable Justice Drummond. Associate: Date: 29 September, 1995 Counsel for the applicant: Mr. E.N. Magee Q.C. Solicitors for the applicant: Holding Redlich Counsel for the respondent: Mr. C. Northrop and Mr. T. Artemi Solicitors for the respondent: V.M. Roccisano Date of Hearing: 18 and 19 September, 1995