Saga Leisure Ltd & Anor v Saga Holdings Pty Ltd t/as Saga Ticketing Centre & Saga Airways International [1998] FCA 318

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 654 of 1997

BETWEEN: SAGA LEISURE LIMITED

First Applicant

SAGA HOLIDAYS (australasia) PTY LIMITED

Second Applicant

AND: saga holdings pty limited

T/A SAGA AIR TICKETING CENTRE AND SAGA AIRWAYS INTERNATIONAL

Respondent

JUDGE: LEHANE J DATE OF ORDER: 27 MARCH 1998 WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The respondent, whether by itself, its servants, its agents or otherwise be restrained from, in trade or commerce without the licence of the applicants, advertising, promoting, offering to supply or supplying any travel or travel agency services under or by reference to any business name, company name or any trade mark consisting of or including the word "SAGA" or any other word substantially identical or deceptively similar thereto. 2. Within 14 days of the date hereof the respondent procure the cancellation of each of the registered business names for "SAGA AIR TICKETING CENTRE" including registration Nos. L6507435, 1243972W and 0142203V.

3. The respondent pay the applicants' costs of these proceedings.

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY NG 654 of 1997

BETWEEN: saga leisure LIMIted

First Applicant

SAGA HOLIDAYS (australasia) PTY LIMITED

Second Applicant

AND: SAGA HOLDINGS PTY LIMITED

T/A SAGA AIR TICKETING CENTRE AND SAGA AIRWAYS INTERNATIONAL

Respondent

JUDGE: LEHANE J DATE: 27 MARCH 1998 PLACE: SYDNEY

EX TEMPORE REASONS FOR JUDGMENT

The applicants are members of a group of corporations known as the Saga group which carries on, in a number of places including the United Kingdom, the United States and Australia, a business of providing travel services of various kinds, principally to persons known as seniors, that is (apparently) those over the age of 50. The group has carried on that business for a substantial period of time throughout that period, on the evidence, using in the course of the business, and in relation to the services which it has provided, the name "Saga". The second applicant, which is incorporated in Australia, has carried on that business or various aspects of it since 1985. The first applicant is the proprietor of a trade mark (No. 573089) registered under the Trade Marks Act 1995 (Cth), the registration date being 24 February 1992. The mark comprises the word "Saga". The respondent is the proprietor of three registered business names registered in, respectively, New South Wales, Western Australia and Victoria, the name in each case being "Saga Air Ticketing Centre". The evidence is that the respondent has carried on a travel agency business under that name from addresses at least in Queanbeyan and in Sydney. The respondent's business appears to have commenced under that name late in 1990. The business name was registered in New South Wales on 5 December 1990 and a director of the respondent has suggested, in correspondence addressed to the court, that the respondent has carried on business, apparently under that name, since a date in November 1990.