FEDERAL COURT OF AUSTRALIA City of Holdfast Bay v South Australian Athletic League Inc. [2001] FCA 1901 Trade Marks Act 1995 (Cth) ss 88, 58, 60 MANSFIELD J CITY OF HOLDFAST BAY v SOUTH AUSTRALIAN ATHLETIC LEAGUE INC. S 230 of 2001 ADELAIDE 21 DECEMBER 2001 IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY S 230 OF 2001 BETWEEN: CITY OF HOLDFAST BAY APPLICANT AND: SOUTH AUSTRALIAN ATHLETIC LEAGUE INC. RESPONDENT JUDGE: MANSFIELD J DATE OF ORDER: 21 DECEMBER 2001 WHERE MADE: ADELAIDE THE COURT ORDERS THAT: The application of the City of Holdfast Bay for interlocutory relief in respect of the use by the South Australian Athletic League Inc. of the names "Bay Sheffield" or "Adelaide Bay Sheffield" is refused. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY S 230 OF 2001 BETWEEN: CITY OF HOLDFAST BAY APPLICANT AND: SOUTH AUSTRALIAN ATHLETIC LEAGUE INC. RESPONDENT JUDGE: MANSFIELD J DATE: 21 DECEMBER 2001 PLACE: ADELAIDE REASONS FOR DECISION 1 On 17 December 2001 the applicant instituted proceedings seeking a declaration that it is entitled to be registered as the owner of registered trade mark 789700, being the words "Bay Sheffield" in class 41 - that is, as the registration records, "An athletic meeting/event". That registration was in fact procured by the respondent from 30 March 1999. The applicant further seeks that the respondent transfer to it all its interest in the registered mark and additional relief. 2 The applicant now seeks an interlocutory order, until further order, that the respondent be restrained from using the mark or name "Bay Sheffield" or any deceptively similar mark or name, in conjunction with any foot race conducted by it, without the prior written consent of the applicant. As the proposed minutes of order indicate, the applicant also includes within the injunction which it seeks restraint upon use of the name "Adelaide Bay Sheffield" by the respondent, a registered mark of the respondent from 5 December 2001, being registered trade mark 897087. The applicant also seeks an order that the respondent withdraw from circulation and destroy all advertising or promotional material, whether in printed or electronic form, using the marks or names "Bay Sheffield" or "Adelaide Bay Sheffield" in connection with the event or events intended to be conducted by the respondent on or about 28 December 2001. 3 I will deal briefly with the background to the application. Most of the facts, at least at present, are uncontentious. 4 Since 1886 a foot race has been conducted at Glenelg each year on or about 28 December. It first commenced to celebrate the 50th anniversary of the proclamation of the State of South Australia on 28 December 1836. It appears from the material that that event was then conducted under the control of the Corporation of the City of Glenelg or its predecessor, initially through a committee called the Glenelg Commemoration Day Sports Association Committee. From 1887 the foot race has been called the Glenelg Commemoration Day Sheffield or the Bay Sheffield or sometimes shortened to the "Bay Shef ". 5 In 1905 the organising body for that event was established as an incorporated body, the Glenelg Commemoration Day Sports Association Inc. (the association). That association has since conducted the Bay Sheffield either as the only feature, or certainly in more recent years as a very significant feature, of a Commemoration Day sports festival at Glenelg at that time in each year. It is also apparent on the evidence, at least for the purposes of deciding the existence of a serious question to be tried, that the reference to "the Bay" in the name Bay Sheffield is a reference to Glenelg. 6 In 1968, in circumstances which I need not presently explore, the respondent, under the aegis of the association, assumed responsibility for arranging and conducting the Bay Sheffield athletics carnival. There were by that time a number of sporting bodies associated with the Commemoration Day festival, of which the respondent was one. A number of sporting activities were involved in that festival. 7 In 1979, a professional promoter was engaged by the association for the purpose of conducting or organising the Glenelg Commemoration Day festival. The evidence is that thereafter the association continued to work closely with the applicant either in its present existence or, before the merger with the City of Brighton, with the Corporation of the City of Glenelg. 8 The applicant in those circumstances claims to be the owner of the name Bay Sheffield. The basis of its claim for ownership is conveniently summarised in the letter from its solicitors to the respondent of 29 November 2001, and I quote: "Historical records confirm that the Glenelg Council was the founder of the "Bay Sheffield" and that over the years the council has been the "guardian" and principal promoter of the race through the medium of committees and the association. In our view, therefore, the City of Holdfast Bay as the successor of the Glenelg Council is the rightful owner of the name and trade mark Bay Sheffield." 9 On the basis of that ownership or that claimed ownership, the applicant now seeks relief under s 88 of the Trade Marks Act 1995 (Cth) (the Act) for an order cancelling the registration in the name of the respondent of the trade mark in respect of the words Bay Sheffield and for orders removing or amending the entry made on the register concerning it. The grounds upon which that application is made, relevantly grounds available under s 88(2)(a) of the Act, are at present those specified in ss 58 and 60 of the Act, namely under s 58 that the registration of the mark may have been opposed on the ground that the respondent was not and is not the owner of the mark, and secondly under s 60 that the registration of the mark in respect of the Bay Sheffield foot race in the name of the respondent involves the respondent becoming entitled to engage in an activity under a name which is substantially identical with or deceptively similar to the name to which the applicant claims to be entitled. 10 For the purposes of considering the application today, it is necessary for the Court firstly to be satisfied that there is a serious question to be tried on the part of the applicant in support of its claim; secondly, that on the balance of convenience it is appropriate to make the orders which are sought in the light of the finding of a serious question to be tried; and thirdly, or perhaps as part of the second consideration, to consider any other matters relevant to the exercise of the discretionary power to grant or not to grant the injunction sought. On the third point, the respondent claims that the applicant has delayed in the bringing of this application to a point where the Court should have regard to that delay in deciding whether to grant or refuse the relief sought. 11 Counsel for the respondent has contended that there is no serious question to be tried, principally because the applicant simply has not shown that it, as distinct from the association, has any claim to ownership of the name Bay Sheffield. There are a number of points which were made in support of that contention. Given that the matter may well proceed to trial, it is not appropriate that I dilate at any length on the issues, but I propose to make a few brief observations. 12 On the material presently before me, I am satisfied that there is a serious question to be tried that the City of Holdfast Bay - that is, the present applicant - is a successor in title to or a successor to the interests of the City of Glenelg and is, in that sense, an entity which enjoys the standing to bring this proceeding. 13 It is true, as the respondent submits, that there is material tending to indicate that it is the association, if any entity other than the respondent, which would be entitled to ownership of the trade mark in the name Bay Sheffield. The history of the conduct of the Bay Sheffield race, going back now well in excess of 100 years, and such information as there is concerning the relationship between the applicant or its predecessors in title and the association is, however, in my view sufficient to satisfy me that there is a serious question to be tried that the applicant is entitled to the relief which it seeks, provided that the association itself may have that entitlement. 14 As I understood counsel for the respondent, he did not seriously contest that the association itself may have that entitlement to the name. That is not to indicate that I have a preference for one view over the other. It would be inappropriate to express any such preference, or to express any degree of probability one way or the other as to whether the applicant, through the association, or the respondent is properly entitled to the mark and to use the name Bay Sheffield. However, I am satisfied, on the material before me, that there is a serious question to be tried, that the association has an entitlement to the mark and to the name Bay Sheffield and through the association, the applicant similarly has such an entitlement. 15 Once that entitlement is established, if it is established, in my view there would then be a serious question to be tried. That is, that the respondent, by registering the mark and by engaging in the conduct which is proposed to be conducted late this year, now apparently under the name Adelaide Bay Sheffield, would be vulnerable to the sort of relief which the applicant primarily seeks in the proceedings and would be vulnerable to the interlocutory relief which is now sought. I turn, therefore, to the consideration of the balance of convenience. 16 This case is somewhat out of the ordinary in the sense that the applicant does not presently assert any immediate and physical - that is, financial or like - detriment to be suffered if the respondent is permitted to continue to conduct the foot race to be called the Adelaide Bay Sheffield at the Adelaide Oval late this year. Counsel for the applicant, I think very sensibly, acknowledged that the proof of such immediate loss, although it may exist, would be difficult. 17 Its principal concern is that it has an entitlement to the name Bay Sheffield and that the effect of failing to be granted the order which it now seeks would be that it would substantially lose the goodwill attached to that entitlement, even though it may succeed in its claim during 2002 so that, at the end of 2002, it is entitled to the exclusion of the respondent to conduct a foot race at Glenelg called the Bay Sheffield as part of the Commemoration Day sports festival in that year and in succeeding years, and to an order that the respondent is not entitled at the Adelaide Oval or elsewhere to conduct a foot race called the Adelaide Bay Sheffield. It points to the reputation which has been built up in respect of the Bay Sheffield over a great many years. That is really not in issue. Mr Golden, in his affidavit sworn on 20 December 2001, recognises that. He says, in paragraph 4: "In the 114 years since 1887, the Bay Sheffield has, in my opinion, come to be regarded as one of Australia's premier feature athletics races, attracting athletes from interstate and overseas." 18 I can readily understand, therefore, the concern of the applicant. If it does not get the injunction which it seeks, and if it is entitled, ultimately, to the relief which it seeks in the proceedings, its goodwill in that name may be to some degree lost by the respondent conducting what now appears to be called the Adelaide Bay Sheffield in the latter part of this month at the Adelaide Oval. It wants to preserve the integrity of the history of the Bay Sheffield being run at Glenelg, and not at Adelaide Oval or anywhere else. It points to that history being focused on the place where Governor Hindmarsh landed and proclaimed the then Colony of South Australia in 1836. 19 It also points to the fact that, if the respondent is permitted to conduct the Adelaide Bay Sheffield at Adelaide Oval later this month and is subsequently found not to have been entitled to use that name, the respondent will, nevertheless, have had the benefit of that goodwill and be able to build on that goodwill in succeeding years if it chooses to conduct an athletics meeting at the Adelaide Oval or elsewhere in competition with the Bay Sheffield, to be called, perhaps, the Adelaide Sheffield or some other name. Those are matters of considerable significance, although, as I have said, somewhat unusually in the case of an interlocutory injunction they are not associated with immediate and significant financial detriment or potential financial detriment. 20 The respondent for its part contends that it, too, will be significantly disadvantaged if the injunction sought is granted. That is because the respondent claims to be entitled to use the names Bay Sheffield and Adelaide Bay Sheffield, and to the benefit of the history of the name Bay Sheffield both this year and in the future. As I have said, it is not my function on this application to decide whether or not that claim is right. Sometimes in considering whether to grant an interlocutory injunction, the Court will have regard to the relative merits of the respective cases. In this instance, I do not feel that it is appropriate to do so, simply because I do not have a view that the merits of one or other of the parties' claims is that much stronger than the other to warrant putting such a consideration into the scales. 21 It is, therefore, a matter of some significance in considering the balance of convenience that the respondent may be entitled to use the mark of which it is presently the registered owner, as well as its mark Adelaide Bay Sheffield registered on 5 December 2001 both this year and in the future and that the order sought, if it is made, will have the effect of losing the continuity of the history of the Bay Sheffield forever. That is, there will have been no Bay Sheffield in 2001. The loss of that goodwill, if the respondent is entitled to it, is itself a significant matter to put into the scales. 22 I also put into the scales, on the question of the balance of convenience, the three further matters which, in my view, tilt the scales in favour of declining to make the injunctive relief now sought. The first is that I infer from the material available through the affidavit of Mr Golden, that the respondent has incurred significant expense to date in promoting its Adelaide Bay Sheffield event or function. It will, I infer, incur expense if the injunction is granted in having to reproduce under a different name material which it has already had printed and to revisit the nature of its promotional activities in the period of time leading up to 28 December. It is impossible to form any clear picture as to the amount of that expense, but I accept that some not insignificant expense will be incurred and that, having regard to the respondent's budget for conducting that event at Adelaide Oval, it seems to me that that expense in relative terms will be quite significant. I am reluctant to impose upon the respondent that detriment, although it is true, as has been pointed out, that the undertaking offered on behalf of the applicant in support of its application would enable that detriment to be accommodated in due course. 23 The second matter to which I refer, is the fact that the respondent's event has, to large measure, already been promoted under the name Adelaide Bay Sheffield. It appears that that promotion in the recent past has actively been taking place since early December 2001 but, in terms of procuring entries for the race, procuring promotional support from athletes and the like has been going on for a little longer. The point is that the damage which the applicant fears has, to a significant measure, already occurred if the applicant is right in its claim by the promotion which has taken place up to now. It will be a difficult step and, I venture to say, almost impossible to separately quantify any losses which the applicant suffers by reason of the further promotion of the Adelaide Bay Sheffield in the seven days between now and the proposed event compared to that damage which has been incurred through the promotion of the Adelaide Bay Sheffield up to now and about which no injunctive order could be made. Ultimately, if the applicant succeeds, it will be a considerably easier exercise if the whole of the conduct associated with that event can be treated as one transaction for the purpose of quantifying any entitlement which the applicant has to damages. I also have placed some weight upon the acknowledgment of counsel for the respondent that it is accepted that the event which the respondent proposes to conduct at the Adelaide Oval is in a real sense the athletics component of the Commemoration Day sports festival which was conducted at Glenelg last year and for many years in the past. In other words, that component of the festival has been lifted up lock, stock and barrel and will be conducted at the Adelaide Oval, so there will be no issue of splitting up or differentiating activities to be conducted at the Adelaide Oval this year and suggesting that in some respects they are not part of the event to which the applicant claims to be entitled to ownership through the name Bay Sheffield. 24 Finally, I note and accept the undertaking proffered by counsel for the respondent to maintain an account of the conduct by the respondent of the event to be known as the Adelaide Bay Sheffield at the Adelaide Oval later this year. That keeping of the accounts will make the pursuance of any claim by the applicant, if it succeeds in its claim in principal, that much easier. 25 I have not taken into account adversely to the applicant any question of alleged delay on its part. There is a significant issue of fact as to when the applicant first knew of the respondent's registration of the trade mark which it registered on 30 March 1999. I cannot resolve that disputed question of fact today. For the purposes of my ruling today, I accept therefore that the respondent through the Mayor, Mr Nadilo, first learnt of the occasion of the registration of that mark only at the very end of October 2001. In my view, both the applicant and the respondent have acted with appropriate haste in the light of the complexity of the history which had to be gone into and, on the respondent's part, in the light of the letter sent to it on 29 November 2001. I do not therefore consider that delay on the part of the applicant weighs in the scale adversely to its application. 26 However, for the reasons I have given, in my view the balance of convenience lies with declining to grant the interlocutory relief sought and I accordingly refuse the application. I certify that the preceding twenty-six (26) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice . Associate: Dated: 18 January 2002 Counsel for the Applicant: Mr N W Morcombe QC with Mr P H Page Solicitor for the Applicant: Mellor Olsson Counsel for the Respondent: Mr R D Ross-Smith with Mr B Golden Solicitor for the Respondent: Phillips Fox Date of Hearing: 21 December 2001 Date of Judgment: 21 December 2001