Mortgage House of Australia Pty Ltd v Mortgage House International Pty Ltd [2004] FCA 1279

FEDERAL COURT OF AUSTRALIA

Mortgage House of Australia Pty Ltd v Mortgage House International Pty Ltd [2004] FCA 1279

TRADE PRACTICES – misleading or deceptive conduct – whether trading names misleading or deceptive – whether estoppel may operate as a defence to an allegation of misleading or deceptive conduct. ESTOPPEL – whether estoppel may operate as a defence to an allegation of misleading or deceptive conduct under s 52(1) of the Trade Practices Act 1974 (Cth). Trade Marks Act 1995 (Cth) s 120 Trade Practices Act 1974 (Cth) ss 52, 53, 75B Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 followed MORTGAGE HOUSE OF AUSTRALIA PTY LIMITED, KENNETH JAMES SAYER AND ONE AUSTRALIA PTY LIMITED V MORTGAGE HOUSE INTERNATIONAL PTY LIMITED AND DONG YU XING N 850 OF 2003 BEAUMONT J 8 OCTOBER 2004 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 850 OF 2003

BETWEEN: MORTGAGE HOUSE OF AUSTRALIA PTY LIMITED

FIRST APPLICANT

KENNETH JAMES SAYER

SECOND APPLICANT

ONE AUSTRALIA PTY LIMITED

THIRD APPLICANT

AND: MORTGAGE HOUSE INTERNATIONAL PTY LIMITED

FIRST RESPONDENT

DONG YU XING

SECOND RESPONDENT

JUDGE: BEAUMONT J

DATE OF ORDER: 8 OCTOBER 2004

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The respondents be restrained from using the words 'Mortgage House'.

2. Costs be reserved.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

INDEX Introduction The applicants' opening on the facts The relief claimed in the applicants' application The issues disclosed in the pleadings The trade mark claim The TPA claims and the passing-off claim The estoppel claim The factual issues The parties' written submissions The applicants' argument in chief Relief now claimed Background Facts The applicants' business The Respondents The relationship between MHA and Ms Xing The Chinese newspaper advertisements Approval for the advertisements Termination of MHI and Ms Xing as a MHA 'representative' The respondents' conduct after January 2001 The claim under s 52(2) of the TPA The claim under s 53(c) and (d) of the TPA The passing off claim The marks distinctive of MHA Promotion and sales in relation to MHA's name The market likelihood of deception The respondents' intention The respondents' written submissions Date for assessing the conduct complained of MHA's misplaced reliance on OA's goodwill OA's disentitlement to relief No misleading or deceptive conduct/passing off in any event Estoppel The applicants' written submissions in reply Introduction Alternative reputation dates The first date - February 1998; pleadings analysis The respondents' alternative date; December 1999 Relevance of dates of reputation The relevance of exclusivity Use of 'Mortgage House of Australia' by OA Misleading and deceptive conduct The respondents' estoppel argument Conclusions on the issue of liability Orders