FEDERAL COURT OF AUSTRALIA Mark Foy's Pty Ltd v TVSN Ltd [2000] FCA 692 TRADE PRACTICES – misleading or deceptive conduct – alleged representations that television programs and website sponsored or approved by defunct retailer –allegations not made out. Trade Practices Act 1974, ss 52, 53 (c) and (d) ACI Australia Ltd v Glamour Glaze Pty Ltd (1988) 11 IPR 269 distinguished Campomar Sociedad, Limitada v Nike International Ltd (2000) 74 ALJR 573 applied MARK FOY'S PTY LIMITED v TVSN LIMITED N 373 OF 1999 JUDGE: Whitlam J DATE: 26 May 2000 PLACE: Sydney IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 373 OF 1999 BETWEEN: MARK FOY'S PTY LTD Applicant AND: TVSN LIMITED Respondent JUDGE: WHITLAM J DATE OF ORDER: 26 MAY 2000 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. The application is dismissed. 2. The applicant pay the respondent's costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 373 OF 1999 BETWEEN: MARK FOY'S PTY LTD Applicant AND: TVSN LIMITED Respondent JUDGE: WHITLAM J DATE: 26 MAY 2000 PLACE: SYDNEY REASONS FOR JUDGMENT Introduction 1 The applicant, Mark Foy's Pty Ltd, seeks to restrain the respondent, TVSN Limited ("TVSN"), from using in its business the words "Mark Foys", any depiction of a Sydney landmark building that housed the old Mark Foy's department store, and a logo said to represent that building. Relief is claimed under the Trade Practices Act 1974 and the Trade Marks Act 1995. Damages are also sought. However, an order was made that any assessment of damages should be determined separately after the other claims in the proceeding. 2 A striking feature of this case is that the applicant has never traded or carried on any business. Bearing that in mind, the relevant facts appear uncontroversial. The inferences to be drawn from documents are overwhelming, and such discrepancies as there are in witnesses' recollections are unimportant. It is convenient briefly to trace some corporate and business history before addressing the evidence about TVSN's recent strategies and activities. Mark Foy's Ltd and "The Piazza" Building 3 Mark Foy's Ltd was incorporated in New South Wales on 12 November 1909 in order to carry on the retail business established under that name in Sydney in 1885. The business had moved in September 1909 to new premises built facing north in Liverpool Street between Elizabeth and Castlereagh Streets. This building was known as "The Piazza" on account of the open space so described that extended across its frontage. The building underwent extensive alterations in the 1920s when its height was increased to eight storeys, but the piazza was retained. A retail business under the name Mark Foy's was conducted there until 1980. (In that year the well-known retailer Grace Bros commenced trading on the site, but it closed its business there in 1983.) 4 On 19 May 1981 Mark Foy's Ltd became a proprietary company and the abbreviation Pty was included in its name. According to its annual report for 1990, the whole of its issued capital was by that time held and beneficially owned by Richards Clothing Pty Ltd. Bartex Furnishings Pty Ltd and a Change of Name 5 The applicant in this proceeding came into existence on 10 July 1991 when it was registered under the name Bartex Furnishings Pty Ltd. The next day Philip Bart became one of its directors. 6 On 30 June 1993 receivers and managers of the property of Mark Foy's Pty Ltd were appointed. Mr Bart wrote to them on 4 August 1993 about the name Mark Foy's. Discussions followed. On 1 November 1993 the receivers and managers faxed him to say that upon receipt of a cheque for $5,000 they would arrange to change the name of Mark Foy's Pty Ltd and to execute a "Consent to Register the name Mark Foys". They also asked Mr Bart to let them know "the name of the entity which seeks to use the name". 7 The applicant retained a solicitor, Fred Swaab. On the specific instructions of the applicant, he requested the receivers and managers also to sell "any trademarks and other intellectual property rights" relating to the name Mark Foy's. However, they agreed only to "sell" the name. This was to be effected by Mark Foy's Pty Ltd changing its name and "transferring" the business name Mark Foy's to the applicant. Mr Swaab prepared an agreement to this effect between Mark Foy's Pty Ltd as vendor and the applicant as purchaser. This document was executed on behalf of the vendor by two directors, Robert Richards and Catherine Richards. (The receivers and managers were not parties to the agreement, and they did not sign as the vendor's agents.) The agreement expressly provided that Mark Foy's Pty Ltd was not selling its goodwill or any other assets. 8 On 7 February 1994 Mark Foy's Pty Ltd resolved to adopt Bloomfield Clothing Pty Ltd as its new name. The next day it applied for registration of the name Mark Foy's in respect of a retail business carried on at 4 Smith Road, Artarmon. On 17 February 1994 the name of Mark Foy's Pty Ltd was changed to Bloomfield Clothing Pty Ltd, and on 18 February 1994 it was registered as the proprietor of the business name "Mark Foy's." 9 The agreement with the applicant was exchanged on 2 March 1994, on which date the receivers and managers received a deposit of $1,000 from Mr Swaab. The receivers and managers retired on 22 March 1994. The completion of "the sale" took place on 25 March 1994 when the applicant paid the agreed balance of $4,000 in exchange for the prescribed notice by Bloomfield Clothing Pty Ltd of ceasing to carry on business under the name Mark Foy's. On 31 March 1994 the applicant was registered as the proprietor of the business at 4 Smith Road, Artarmon. 10 On 25 October 1994 the applicant's name was changed from Bartex Furnishings Pty Ltd to Mark Foy's Pty Ltd and its registration of the business name Mark Foy's was cancelled. Deregistration of the Old Mark Foy's Ltd 11 On 18 November 1994 a liquidator of the company known by then as Bloomfield Clothing Pty Ltd was appointed. An order was made for its winding up, and in due course on 9 October 1995 its registration was cancelled and the company was dissolved. TVSN Limited 12 TVSN was founded in Sydney in 1985 to sell products by way of television. For this purpose it produces programs that are broadcast all day on its own channel carried by Australia's three major pay television networks and also at odd hours on some regional free-to-air channels. (The initials TVSN stand for TV Shopping Network.) The core merchandise sold by TVSN includes jewellery, skin care, fashion accessories and "collectable" products such as dolls, bears and diecast models. 13 In mid-1988 there was a change in the ownership and management of TVSN. Michael McNabb was appointed chief executive officer and a director. 14 Apparently not too long after those changes, a "concept paper" on TVSN's brand identity was prepared for TVSN's board of directors. It consists of only three A4 pages. The text is divided under four headings: Summary, TVSN Current Positioning, Desired Positioning, and Proposed Brand Strategy. The complete text of the first and last of those sections is instructive: "I Summary This paper considers the much [sic] of the re-positioning the TVSN channel in Australia via re-branding of the network identity. The objective of this exercise is to broaden the base of consumer appeal to include the participation of more affluent consumer segments who currently do not find the TVSN "home shopping" positioning a relevant retail offer. This "white paper" draws on the research conducted with TVSN consumers by Frank Small in September 1998, as well as on the company's recent experimentation with new program formats. If successful the re-branding will significant [sic] enhance shareholder value through the creation of a brand which combines the values which consumers traditionally associate with premium retailers (David Jones, Grace Bros, Bloomingdales, etc) and the convenience and service levels offered by emerging retail models such as Amazon, C&M or TVSN. As will be noted, no company has yet successfully merged these elements into a single retail brand. To do so would create a "power" retail concept which had several distinct advantages: a) The brand dimensions associated with "traditional" retail would serve as re-assurance for consumers who are still reluctant to purchase via internet or television shopping; b) A more "traditional" retail positioning would allow the company to offer higher priced premium goods, such as cosmetics or branded fashion accessories from smaller luxury goods retailers; c) A more premium retail positioning will allow the company to move into "own" branded or house products, an option which is unavailable in many important product categories given the current imagery; d) Finally, a broader positioning will allow the company to diversity [sic] into internet and catalogue retailing, an option which is unavailable with our current "TVSN" branding. A more premium position for the company is difficult to achieve given the legacy which "TV Shopping" or "home stopping" [sic] carriers [sic]. We will never be able to move the consumer's perception of vegematics, ab-crunchers, power walkers and more recently personal improvement programs. In summary our objective is to create a retail identity which blends those elements which consumers associate with premium retail concepts, while allowing the company to utilize television, internet and catalogue as the primary channels of retail distribution. Our view is that this is a much more powerful business model than the "home shopping" model which we are currently pursuing and one which will command a significantly higher valuation from the investment community. . . . IV Proposed Brand Strategy The proposed brand strategy is to re-brand the channel so as to move the brand image closer to the "desired" positioning. Specifically, the strategy encompasses using the identity of a department store retailer that had been established in Melbourne or Sydney, but has since ceased trading. We have researched a number of identities that have been merged into the David Jones or Coles merger groups during the retail consolidation that occurred in the 1970's and 1980's. The benefits of trading under a previously established retail brand rather than creating a new identity are several. Foremost among these are the ability to leverage the long histories which may [sic] of these retailers enjoyed, as well as the residual recognition which their names possess. Furthermore, strong brands are always anchored in a specific time and place. It is these specific historical references which give these brands their identities. The acquisition of a previously established identity will facilitate the development of an upscale retail identity in the shortest possible time. Our research into previously established retailers has identified several possible retail identities that would meet our objectives. Foremost among these is "Mark Foys" which was Australia's leading premium retailer in the 1950's and 1960's. Other retail identities that have been researched include Curzons, Anthony Horder [sic], Marcos [sic] Clarke and Waltons. Before proceeding with a trademark search on the availability of these marks, we wish to have the Board's comments on the strategy as presented herein." 15 The author of this paper was not identified. The copy in evidence bore the name of George Frame, who is employed by TVSN under the style Director-Corporate Development. (He is not, in fact, a director of TVSN.) Somewhat surprisingly, in view of its subject matter, Mr Frame seemed to have only a very vague recollection of this document, but he accepted that it was probably a copy issued to him. Overtures, Inquiries and Preparation 16 By early November 1998 Mr Frame was aware of the applicant's name and he attempted to contact Mr Bart by telephone. His call was returned on 4 November by Dan O'Connor, the applicant's secretary, to whom Mr Frame wrote next day confirming "our discussion on either licensing or purchasing the name Mark Foy's from your company". Also, on 4 November 1998, TVSN's solicitors instructed trade mark attorneys to advise on the availability for use of the marks Anthony Hordern, A Hordern, Curzon and Mark Foys. 17 On 11 November 1998 the trade mark attorneys advised TVSN's solicitors that their searches suggested that the trade marks Curzon and Mark Foy's were available for registration. However, the attorneys noted that they were unable to comment on whether any third party held conflicting common law rights. Paul Ferguson, TVSN's General Manager - Finance and Legal, then completed applications for TVSN's registration of the business name "The House of Mark Foys" and for its registration of the same name as a trade mark for electronic retail services. On or about 23 November 1998 Mr Ferguson forwarded these applications, together with cheques for the prescribed fees, to TVSN's solicitors with instructions to lodge them. Within a couple of days Mr Ferguson was being pressured by Mr McNabb as to how the applications were "coming along". 18 Mr Frame met Mr O'Connor and Mr Bart at the latter's office on 2 December 1998 to discuss the name Mark Foy's. During discussion on that topic, the subject of payment to the applicant was canvassed. This included the possibility of a royalty on TVSN's sales. In that context Mr Bart requested details of projected sales, and Mr Frame asked that the applicant first complete a confidentiality agreement. This was done, and on 14 December Mr Frame sent Mr Bart TVSN's budgeted sales figures for the 1999 calendar year 19 Another meeting was held at Mr Bart's office on 17 December 1998. This time Mr McNabb attended too. Prior to that meeting Mr Bart had mentioned to Mr Frame, in a telephone conversation or perhaps even in their first meeting, that the applicant would want a substantial up-front payment. The meeting ended acrimoniously after about half an hour when Mr McNabb showed Mr Bart and Mr O'Connor a document and said: "Your name is not as safe as you think". Mr Bart thought the document related to the trade mark, but it must be accepted that it was the certificate of registration of the business name "The House of Mark Foys", which had been issued the day before. (It was only by letter dated 22 December 1998 from the Trade Marks Office that the filing of TVSN's trade mark application on 16 December was confirmed.) 20 On the day after the second meeting, 18 December 1998, the applicant filed an application to register the trade mark Mark Foys for nineteen classes of goods and services. On 17 January 1999 the Trade Marks Office informed the applicant's solicitors that that application could not be accepted because of TVSN's pending application. "The House of Mark Foys", the Logo, Plans for the Website and Litigation 21 Battista Remati is now the General Manager of "markfoys.com", the online division of TVSN. In early December 1998, when he was a consultant to TVSN, Mr McNabb asked him to investigate the possibilities of a website for TVSN and to design a logo for "The House of Mark Foys". It seems that Mr Remati knew nothing about the concept paper, but was briefed orally on the proposal by Mr McNabb. He was told that the directors were "thinking of repositioning TVSN as something more than merely a television shopping channel, more along the lines of a department store metaphor" and that the logo "must have a sense of establishment and style from a yesteryear era". 22 At this stage, that is, early December 1998, Mr Remati "was aware" that TVSN had applied for registration of the domain name "markfoys" on the Internet, but he was not involved in making that application. His first task was to design the logo, and he immediately thought of using elements of the Piazza store in the logo. As part of the 1920s alterations two towers had been erected on the front of that building, one at the corner of Elizabeth Street and one at the corner of Castlereagh Street. A conservation report prepared by the New South Wales Public Works Department in the 1980s described these towers, which are constructed with sloping sides featuring oval windows on each side and with yellow pinnacles at their base, as having "major townscape value". Their distinctiveness is clearly shown in photographs that are in evidence. Mr Remati designed a logo which he admitted was "partially inspired by the Piazza store". He said that the logo, which reflected in its final form suggestions made by Mr McNabb, was meant to be "inherently symbolic of a bygone era type of departmental store". Employing a typeface that he had seen in magazines published during the 1940s and 1950s, Mr Remati superimposed the letters H and M over the letter F which he placed in an oval shape with a graphical element devised to look like "some sort of tower or turret with a building underneath it". The Trade Marks Office abstract of the application for the trade mark www.markfoys.com described the graphics of the logo as "letters break silhouetted castle in ellipse". 23 In late January 1999, after Mr McNabb had approved the logo, he met Mr Remati with Peter Fowler, TVSN's manager in charge of television production and programming. He told them that TVSN would use the Mark Foys brand for its retail business on the Internet. Mr Remati conceived a website where the "navigational paradigm" was based on a department store, and in February 1999 he was appointed general manager of the new online division. Staff at TVSN were directed to articulate as "dot" the full stop in the name markfoys.com. 24 During February and March 1999 TVSN broadcast on its television channel a program entitled "The House of Mark Foys". On 21 March 1999 a Sydney newspaper reported that a former stepmother of the late Princess of Wales was going to launch "the Mark Foys Shopping Network" for TVSN. Correspondence between the applicant's and TVSN's solicitors ensued, in the course of which TVSN disclosed that it had registered the domain name "markfoys" and that it was planning a launch function for its website on 29 March 1999. On that day TVSN issued a media release announcing that it would launch its new website from 1 June 1999. The release stated: "The launch of MARKFOYS.COM is a strategic move to capitalise on the development of broadband cable and high speed access to the internet. The Mark Foys name was chosen for the web site in honour of the stylish and well-loved Australian department store of the same name. From 1885 to 1980 Mark Foys played an important role in the cultural evolution of Sydney revolutionising the shopping and retail habits of Australian consumers. The new MARKFOYS.COM is similarly at the forefront of the retail revolution. More and more people are connecting to cable TV and the internet and home shopping, or electronic retailing, is the way of the future. Electronic commerce is the single biggest change for businesses of all sizes worldwide. To be successful in E-commerce, it is essential to move beyond the conventional methods of conducting business in both the physical and virtual worlds. MARKFOYS.COM aims to be among the first retailers to use bi-lateral convergence technology. The media convergence of TV and the internet takes the stress out of shopping by allowing consumers to order goods directly off the internet. By combining the priorities and values of the old fashioned department store with the most up to date electronic retailing technology, MARKFOYS.COM is essentially a virtual department store which acts as a shopfront to over 10,000 product lines ranging from jewellery, collectables, electronics, computers, fashion, home entertainment, health and beauty, kitchenware and homeware." 25 At the "launch function", which was held in the evening at a Sydney hotel, TVSN presented what Mr Remati described as prototype of the website. This was done on a computer that was not connected to the Internet. 26 On 15 April 1999 TVSN applied to register a trade mark www.markfoys.com that incorporated its new logo for electronic retail services. The applicant commenced this proceeding on 29 April 1999. Television Programs and Prototype Website 27 During May 1999 TVSN broadcast on its television channel programs entitled "Mark Foys Gift Selection" and "Mark Foys Linen Collection". Mr Remati continued to investigate re-branding its television channel as the "Mark Foys Shopping Network". In May 1999 he invited Taylor Nelson Sofres (formerly Frank Small & Associates) to submit a market research proposal for such re-branding. On 20 May 1999 TVSN applied for registration of the trade mark Mark Foys Shopping Network for electronic retail services. 28 Also, in May 1999, TVSN made the prototype of its website available on the Internet. This was done, according to Mr Remati, in order to assess the usability of the site and the capacity of the database to support online sales. This development phase lasted until November 1999. In this period the number of users of the site was less than 250 per month and much of this use was initiated by Mr Remati. He monitored such use and deposed: "From watching users using the prototype website from time to time over a period of 4 months, I am able to say that the majority of users I observed: (a) started at the home page; (b) clicked on a product category; (c) clicked on a product; (d) if the user intended to purchase the item, he or she added it to a shopping bag; (e) when the user had selected all the items that he or she desired, the user would click on 'checkout' (to complete an order online) or click on 'phone order' (to retrieve instructions for ordering by phone) – most users I observed would click on checkout; (f) if a user clicked on 'checkout', the user proceeded to enter his or her contact details and credit card details; (g) following the completion of this information, the user completed their order by clicking on a button with the words "submit your order now"; and (h) the user received an online confirmation. The confirmation message follows several different formats depending upon the type of user." 29 The Piazza store was clearly depicted on the left-hand side of the prototype website's home page. The "menu" on that page included the item "About Us", which permitted a user to access information under the heading "The Story of Mark Foys" with a further picture of the Piazza store. At this point a user could scroll to further information under the sub-headings: "The Man Himself", "Mark Foys – The Company" and "The Piazza Building". The text concluded: "The Mark Foy's Piazza Store today houses the NSW District Court and is now known as The Downing Centre." 30 In the Customer Service section of the prototype website, the following statement appeared under the heading "How we process your order": "Your order will be fulfilled by TVSN Limited. TVSN is Australia's leading electronic retailer. TVSN provides markfoys.com with the services of their highly reputable fulfillment division which has a long established history of excellence. Billing is also reconciled through TVSN Limited. In addition TVSN Limited processes orders and is responsible for quality control of all product." 31 In June 1999 TVSN broadcast a fifteen second advertisement for "Mark Foys.Com The Place for Gifts" as a "filler" in scheduled breaks in programs on its television channel. A copy of this television commercial was shown in evidence. It depicts the Piazza store with the stylized letters H, M and F in the logo superimposed over one of the building's distinctive towers. Apart from this limited advertising, TVSN did not otherwise promote its website until November 1999. 32 During June 1999 TVSN broadcast on its television channel programs entitled "Mark Foys Presents Home Decor", "Mark Foys Presents Craft", and "Mark Foys Jewellery". The last of those programs was shown in evidence. It runs for just under an hour. The name Mark Foys appears on screen in the title at the beginning and is occasionally mentioned by the female presenter. More importantly, however, the TVSN logo is prominent throughout the program and is displayed near the telephone number for use by would-be buyers. The presenter also refers to "here at TVSN". 33 Taylor Nelson Sofres reported on their market research in June 1999 (That report was received in evidence, but the reported reactions of the participants in the group discussions were not admitted as evidence of their perceptions of TVSN's shopping channel or its proposed re-branding.) In any event, the researchers did not recommend an overt department store positioning and they said that any references to the Piazza store should be avoided. 34 In July 1999 TVSN again broadcast a program called "Mark Foys Gift Selection". This program was shown in evidence. Save that it employs a male presenter, the same observations I made about the earlier television program apply to this program too. In August the titles "Mark Foys Presents Home Decor" and "Mark Foys Gift Selection" were used again for programs. "Mark Foys Presents Gifts for Dad" was also used in August. In September the title "Mark Foys Gift Selection" appears to have changed to "Mark Foys Gift Ideas", which is how it was also described in October, when "Mark Foys Home Furnishings" was also broadcast. Mr Fowler gave evidence about the scheduling of these programs, all of which were repeated during the relevant month with varying degrees of frequency. Website Launch 35 In mid-November 1999 TVSN finally launched its new website markfoys.com, which was promoted by an extensive advertising campaign on radio, in newspapers and on major Internet sites. The home page now describes the site as "the place for gifts". There are no pictures of the Piazza store and no pieces of historical information such as there were in the prototype. The "Information" pages describe markfoys.com as "an online department store dedicated to gift selection". Every page on the site states: "For more information call TVSN customer service on 1800 155 655". The "Shop Assistant" pages provide the following information about order processing: "All fulfilment is provided by TVSN, including payment processing and delivery. Because of this, markfoys.com deliveries will have TVSN branding on the packaging, receipt and returns advice slip. Credit card payments will be collected by TVSN on behalf of markfoys.com, therefore a TVSN charge will appear on your credit card statement for your markfoys.com purchase or refund." Brand Values of Department Stores 36 Jeanne Strachan, a very experienced market researcher, was called by the applicant to give expert evidence about branding. She was a most impressive witness who eschewed unnecessary use of jargon and gave her evidence very carefully. Ms Strachan made the fundamental assumption that all department stores are brands. The name of a retail store, she explained, functioned in the same way as a brand name of a product. Ms Strachan said that brands offer functional and emotional reassurance. Research showed that some consumers would rather buy a Sony television set from David Jones than another store, even where functionally there was no logic in such a preference. This was, she said, an example where the brand values of David Jones superseded the product brand. Trade Practices Act Claims 37 The applicant alleges that TVSN engaged in conduct in contravention of ss 52 and 53 (c) and (d) of the Trade Practices Act. Although the amended statement of claim does not identify clearly the conduct of which the applicant complains, it is plain enough that it is the use of the name Mark Foys in connexion with the retail sale by TVSN of products on television and the Internet. What the pleading does precisely allege is the contravention, namely that TVSN falsely represented that: "(i) [TVSN] has the licence, sponsorship or approval of the former Mark Foys; (ii) the retail services provided and the goods sold or offered for sale, advertised or promoted by [TVSN] have the licence, sponsorship or approval of the former Mark Foys." The expression "former Mark Foys" in that allegation is defined earlier in the pleading as referring to the company which was incorporated as Mark Foys Ltd and ceased to exist in 1995. 38 It is not alleged that TVSN falsely represented that it is the "former Mark Foys". However, the applicant has to meet the obvious objection that that company has been "dead" for a number of years and has not traded at the Piazza store for twenty years. Counsel for the applicant rely heavily on the decision in ACI Australia Ltd v Glamour Glaze Pty Ltd (1988) 11 IPR 269 to overcome the absence of the use of the name Mark Foys by a department store over such a significant period. That was a case where on the sale of a well-known glass business, which had carried on business for many years under the name "Yencken Sandy Glass Industries", the purchaser did not use the name. Less than two years after the purchase another glass manufacturer registered the name and began to use it. The use of the name was held to be in breach of the ss 52 and 53(c) and (d) of the Trade Practices Act. 39 However, the facts in Glamour Glaze were completely different to those in the present case. There the purchaser acquired the business of Yencken Sandy Glass Industries, occupied the premises of the business and continued to supply the needs of the customers of that business. The other glass manufacturer who later registered the name wanted people to think that the Yencken Sandy Glass business was operating again. That case depended on its peculiar facts and does not, in my view, bear upon the present case. 40 Taken by themselves, I do not see how it can be contended that the television programs broadcast by TVSN contain a representation of any "licence, sponsorship or approval" of the defunct company. Such a representation is not conveyed by the words Marks Foys in their titles or the use of those words in two programs shown in evidence. Nor can such a representation be inferred from the mention of TVSN in that context. The studio sets in the television programs look like display counters in any store, not specifically a department store. The screening during one of these programs in June 1999 of the "filler" promoting the website would also make no difference because it does not suggest sponsorship or approval of the television program. 41 Mr Frame bluntly acknowledged that TVSN wanted its online business identified with Mark Foys, not TVSN. The references on the website to order fulfilment by TVSN have no doubt been inserted for contractual reasons. Mr Remati was slow to acknowledge the possible implication in such statements that markfoys.com was a separate entity. However, no matter what slyness may be present in the minds of TVSN's executives, the alleged representation in respect of the website is the same, namely that it has the "licence sponsorship or approval" of the defunct company. 42 The depiction of the Piazza store in the prototype website may have been intended to convey a sense of romance or nostalgia for the days of the grand department store. Taken with the history pages, Mark Foy's department store was clearly being held up as an example of such an era. (This transparent purpose had been made explicit in the press release the previous March.) However, those same pages convey the information that that store closed at the Piazza building in 1980 and that the building is now used as a courthouse. Again, no suggestion of "licence, sponsorship or approval" is implicit in either the image or the text, even if one were to assume the continuing existence of an entity that carried on the old department store business at the site. 43 The website launched on the Internet in November 1999 is substantially different. The Piazza store is no longer depicted and the history of Mark Foy's is not mentioned. There has been a slight shift in emphasis to a place for gifts from the more comprehensive notion of a department store. Some of the "virtual" department store references remain such as a virtual shop assistant and the shopping bag icon. However, the changes in content make it even easier to arrive at the same conclusions in respect of this website, namely that it contains no representation of "licence, sponsorship or approval" by the defunct company. 44 The ingredients of an action based on s 52 of the Trade Practices Act were recently explained by the High Court in Campomar Sociedad, Limitada v Nike International Ltd (2000) 74 ALJR 573. In a case such as the present involving alleged representations to the public, the High Court said (at 593): "The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers." Their Honours went on to approve (at 594) the reasoning of Deane and Fitzgerald JJ in Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 201 that the "question whether particular conduct causes confusion or wonderment cannot be substituted for the question whether the conduct answers the statutory description contained in s 52." 45 In the present case the prospective purchasers are users of the Internet. I am satisfied that neither the prototype nor the current website is likely to mislead or deceive such persons into thinking that TVSN or its website has the "licence, sponsorship or approval" of the defunct company. Some users might wonder whether there is a connexion, but that is not sufficient. Any user of the Internet able to recall the Mark Foy's department store at the Piazza building would have to know that the Internet did not exist in 1980. The launch by TVSN of a new online business under the name markfoys.com in 1999 would not of itself warrant the conclusion that it had done so with the approval of the defunct company. The claimed contraventions of Pt V of the Trade Practices Act are, in my opinion, not established. Trade Marks Act Claims 46 Although the evidence reveals that TVSN has lodged three applications for trade marks using the words Mark Foys, including one that incorporates the logo to which the applicant objects, it is only the first of these, namely that lodged on 16 December 1998, in respect of which the applicant presently seeks relief under the Trade Marks Act. Whatever might be the extent of the jurisdiction of this Court under s 191(1) of that Act, I regret to say that I regard this claim as something of a try-on. Any commercial interests of the applicant would have been amply protected in respect of TVSN's pending trade mark application had its claims under the Trade Practices Act succeeded. At the time of trial that application had not been accepted. If it is, the applicant may exercise its rights under the Act. Any proceeding in this Court is quite premature. Order 47 The application will be dismissed with costs. I certify that the preceding forty-seven (47) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Whitlam. Associate: Dated: 26 May 2000 Counsel for the applicant: F M Douglas QC and S J Goddard Solicitors for the applicant: Dunhill Madden Butler Counsel for the respondent: J N West QC and Michael Green Solicitors for the respondent: Bruce & Stewart Dates of hearing: 15-18 November 1999 Date of judgment: 26 May 2000