Monarch Investments Pty Ltd v Yeramba Estates Pty Ltd & Anor [1997] FCA 150

CATCHWORDS TRADE PRACTICES - misleading and deceptive conduct - name of applicant company adopted by respondent as part of product name - reputation - relevant section of public - conduct to be assessed in context - respondent changed its advertising to sufficiently distinguish itself thus correcting the misleading conduct - effect of disclaimer - undertakings in lieu of or as a basis for an injunction. TORT - passing off - no evidence of actual damage - in quia timet case no evidence of real and tangible risk or probability of damage. Trade Practices Act 1974 (Cth) s 52 Hornsby Building Information Centre Pty. Ltd. -v- Sydney Building Information Centre Pty. Ltd. [1978] 140 CLR 26 Parkdale Custom Built Furniture Pty. Ltd -v- Puxu Pty Ltd [1982] 149 CAR 191 Taco Company of Australia Inc. & Anor. -v- Taco Bell Pty. Ltd. & Ors. [1982] 42 ALR 177 CBS Records Australia Ltd & Ors -v- Telmak Teleproducts (Aust) Pty Ltd [1987] 72 ALR 270 Elders Trustee & Executor Co Ltd -v- E.G. Reeves Pty Ltd [1987] 78 ALR 193 NSW Dairy Corporation -v- Murray-Goulburn Co-op Co. Ltd. & Anor [1989] 86 ALR 549 Snoid & Ors. -v- Handley & Ors [1981] ATPR 40-219 Dairy Vale Metro Co-operative Ltd. -v- Brownes Dairy Ltd [1981] ATPR 40-215 George Laurens (WA) Pty. Ltd. -v- Laurens and Co Australia Pty. Ltd. [1994] ATPR 41-329 Central Equity Limited -v- Central Corporation Pty. Ltd. [1995] ATPR 41-443 20th Century Fox -v- SA Brewing [1996] 34 IPR 247 at 251 Henderson -v- Radio Corporation Pty. Ltd. [1960] SR (NSW) 576 Erven Warnink Besolten Vennootschap -v- J Townend & Sons (Hull) Ltd. [1979] A.C. 731 MONARCH INVESTMENTS PTY LIMITED -V- YERAMBA ESTATES PTY LIMITED and STANNIC SECURITIES PTY LIMITED NG 917 OF 1996 EINFELD J SYDNEY 26 FEBRUARY 1997

IN THE FEDERAL COURT OF AUSTRALIA ) NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 917 of 1996 GENERAL DIVISION ) Between:MONARCH INVESTMENTS PTY LIMITED Applicant And:YERAMBA ESTATES PTY LIMITED First Respondent STANNIC SECURITIES PTY LIMITED Second Respondent MINUTE OF ORDERS 1.The respondents are restrained from: (a)displaying the large (7 X 3.6 metre) signs standing at the entrance to the Monarch Hills development and on Sparks Road, Warnervale. (b)displaying any other promotional signs for "Monarch Hills" on the central coast unless they comply with the undertakings given with respect to media advertising, that is, to always precede "Monarch Hills" with the possessive "Yeramba's" or "Yeramba Estates'" and to include a disclaimer that "this development is not associated with any other land development company". 2.The amended application is otherwise dismissed. 3.I will hear the parties on costs. Note:Settlement and entry of orders are dealt with in accordance with Order 36 of the Federal Court Rules. EINFELD J SYDNEY 26 FEBRUARY 1997