Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2003] FCA 1048

FEDERAL COURT OF AUSTRALIA

Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2003] FCA 1048 WELLNESS PTY LTD v PRO BIO LIVING WATERS PTY LTD N 152 OF 2003 BENNETT J 14 AUGUST 2003 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N152 OF 2003

BETWEEN: WELLNESS PTY LTD

ACN 078 340 315

APPLICANT

AND: PRO BIO LIVING WATERS PTY LTD

ACN 099 545 990

RESPONDENT

JUDGE: BENNETT J

DATE OF ORDER: 14 AUGUST 2003

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. Leave be granted to the applicant to join as respondents in the proceedings Rodney Robert Robinson and Pro-Bio Tech Waters Pty Limited. 2. Leave be granted to the applicant to file an amended application and amended statement of claim in terms of the documents annexed to the affidavit of Peter Whitehead sworn on 4 august 2003 and filed in the proceedings. 3. The costs of this motion be reserved. 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 N152 OF 2003

BETWEEN: WELLNESS PTY LTD

ACN 078 340 315

APPLICANT

AND: PRO BIO LIVING WATERS PTY LTD

ACN 099 545 990

RESPONDENT

JUDGE: BENNETT J

DATE: 14 AUGUST 2003

PLACE: SYDNEY

EX TEMPORE REASONS FOR JUDGMENT 1 By notice of motion filed on 6 August 2003, the applicant, Wellness Pty Limited, seeks to join as respondents in the proceedings a Mr Rodney Robert Robinson and a company, Pro-Bio Tech Waters Pty Limited ('proposed corporate respondent'). Ms Champion who appears for the applicant relies upon that affidavits of Peter Whitehead sworn 4 August 2003, Peter Conlon sworn 1 August and Kenneth James Taylor sworn 4 August 2003. The annexures to Mr Whitehead's affidavit include a proposed amended application and amended statement of claim showing the amendments which would be made to make out the causes of action against the proposed respondents. 2 Broadly speaking, the case as presently drafted against the existing respondent, Pro Bio Living Waters Pty Limited, alleges breaches of the Trade Marks Act 1995 (Cth) and makes allegations of passing off and breaches of the Trade Practices Act 1974 (Cth) ('Trade Practices Act') in particular sections 52 and 53(c) and (d). Again, broadly speaking, the allegations revolve around the use of the words 'living waters' and, in particular, in the context of Pro Bio Living Waters Pty Ltd. The words 'living waters' are part of the name of the existing respondent but are not part of the name of the proposed corporate respondent. 3 The evidence establishes that Mr Robinson is a director of Pro Bio Living Waters Pty Limited and also of Pro-Bio Tech Waters Pty Limited. The evidence also establishes that both companies presently operate out of the same premises in Gaffney Street, Coburg, Victoria. From the evidence that is relied upon, it is clear that the expression 'pro bio living waters' appears on bottles that also bear the name of the existing respondent, however a price list including products that bear the name 'living waters' bears the name of the proposed corporate respondent, Pro-Bio Tech Waters Pty Limited. 4 There is evidence of a conversation with Mr Robinson where he was asked if he has a product called 'living water' and in his response Mr Robinson does not dissociate himself from a business involving a product with that name. The conversation is not clear, I should say, about whether he was talking about 'living water' or 'living waters', in that the question referred to 'living water' and the response referred to both. It would appear however that he did associate himself with a product called 'living water'. In fact, he said: 'Yeah, you can use the business name Living Waters, anyone can use it, we've just changed ours. If you use it then someone might come along and say that you can't you know what I mean? Are you with the Wellness group?' 5 The proposed amended statement of claim seeks to add claims as against Mr Robinson of acting in a common design with the respondent and proposed corporate respondent and a claim under section 75B of the Trade Practices Act.