WMC Ltd v Westgold Resources NL [1997] FCA 943

FEDERAL COURT OF AUSTRALIA

TRADE PRACTICES - Misleading or deceptive conduct - Passing off - Whether name no longer used but still associated with applicant can be subject of passing off - Use of business name which had acquired reputation - Whether reputation continued after change in name - Whether business name descriptive or distinctive - Whether need for compelling and substantial evidence of likelihood of confusion when name can be characterised as descriptive - Effect of change in name - Whether need for evidence of substantial trading by respondents before permanent injunction granted

Trade Practices Act 1974 (Cth) ss 52, 53(c), 53(d), 75B

BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363

Rent a Ute Pty Ltd v Golden 44 Pty Ltd (1987) 9 IPR 12 ACI Australia Ltd v Glamour Glaze Pty Ltd (1988) 11 IPR 269 Elders IXL Ltd v Australian Estates Pty Ltd (1987) 78 ALR 171 Winning Appliances Pty Ltd v Dean Appliances Pty Ltd (1995) 32 IPR 43

WMC LIMITED v WESTGOLD RESOURCES NL

VG 750 of 1996

JUDGE: NORTH J

PLACE: MELBOURNE

DATE: 11 SEPTEMBER 1997

IN THE FEDERAL COURT OF AUSTRALIA ) ) VICTORIA DISTRICT REGISTRY ) VG 750 of 1996 ) GENERAL DIVISION )

BETWEEN: WMC Limited (ACN 004 820 419)

First Applicant

WMC RESOURCES LIMITED (ACN 004 184 598)

Second Applicant

AND: WESTGOLD RESOURCES NL (ACN 009 260 306)

First Respondent

WESTERN MINING NL

(ACN 060 035 903)

Second Respondent

JUDGE(S): NORTH J PLACE: MELBOURNE DATED: 11 SEPTEMBER 1997

MINUTES OF ORDER

THE COURT ORDERS THAT: 1. The respondents and each of them be restrained from, whether by themselves their servants or agents or otherwise howsoever: (a) using in any way in the course of trade or commerce the name WESTERN MINING or any other name which is substantially identical or deceptively similar to the name WESTERN MINING; (b) passing off any business as that, or any goods or services as those of, the applicants or either of them. 2. The respondents and each of them forthwith do all such acts and things and execute all such documents as may be necessary or desirable to be done or executed in order: (a) to change or cause to be changed the name of the second respondent to a name - (i) other than the name WESTERN MINING NL; and (ii) which does not include the combination of words WESTERN MINING or any word or combination of words substantially identical or deceptively similar thereto; (b) to have the said name change registered with the Australian Securities Commission. 3. The respondents and each of them forthwith deliver up on oath to the applicants or destroy under supervision all signs, cards, advertising material, letterhead and all documents of any kind whatsoever now in the possession, custody, power or control of them or either of them bearing the name WESTERN MINING or any other name which is substantially identical or deceptively similar to the name WESTERN MINING. 4. The question of costs is adjourned to a date to be fixed.