FEDERAL COURT OF AUSTRALIA Oxford Funding Pty Ltd v Oxford Asia-Pacific Investments Pty Ltd [2005] FCA 1637 PRACTICE AND PROCEDURE – application for interlocutory injunction – applicant owns registered trade marks containing the word "Oxford" in respect of various financial services – respondent trades under name that includes the word "Oxford" – parties operate in different areas of the financial services industry – respondent associated with international group "Oxford Investment Group" – no evidence of complaints or confusion arising from similarity between parties' names – whether balance of convenience favours grant of interlocutory injunction OXFORD FUNDING PTY LTD v OXFORD ASIA-PACIFIC INVESTMENTS PTY LTD NO. VID 1317 OF 2005 HEEREY J 2 NOVEMBER 2005 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VID 1317 OF 2005 BETWEEN: OXFORD FUNDING PTY LTD APPLICANT AND: OXFORD ASIA-PACIFIC INVESTMENTS PTY LTD RESPONDENT JUDGE: HEEREY J DATE OF ORDER: 2 NOVEMBER 2005 WHERE MADE: MELBOURNE UPON the Respondent, by its Counsel, undertaking to the Court that, pending the final hearing and determination of this proceeding, the Respondent will not provide: (a) debt factoring services; (b) debt financing services; (c) debt collection services; or (d) outsourcing services in relation to accounts receivable administration, under or by reference to its corporate name "Oxford Asia Pacific Investments" or any name that includes the word "Oxford" THE COURT ORDERS THAT: 1. The Applicant's application for interlocutory injunctions dated 25 October 2005 be dismissed. 2. The costs of and incidental to the Applicant's application for an interlocutory injunction be reserved. 3. The Respondent have leave to file and serve a request for further and better particulars of the Applicant's statement of claim on or before 10 November 2005. 4. The Applicant provide further and better particulars of its statement of claim in response to any request for further and better particulars filed and served by the Respondent pursuant to paragraph 3 on or before 18 November 2005. 5. The Respondent file and serve its defence and any cross claim on or before 28 November 2005. 6. The Applicant file and serve any reply and defence to any cross claim on or before 12 December 2005. 7. The Respondent file and serve any reply to any defence and any cross claim on or before 19 December 2005. 8. The parties file and serve verified lists of documents on or before 30 January 2006. 9. The parties provide inspection of discovered documents on or before 13 February 2006. 10. The proceeding be referred to mediation by a mediator to be agreed between the parties or in default of agreement to be appointed by the Court on the following basis: (a) such mediation to take place after 14 February 2006 and before 27 February 2006; (b) the solicitors for the Applicant shall, after consultant with the solicitors for the Respondent, deliver to the mediator a mediation book containing a copy of the pleadings, affidavit material and such other documentation as may be agreed, together with a copy of this order, and shall take all steps necessary to ensure that the mediation commences as soon as practicable; (c) each party shall, at least 2 days prior to the date fixed for the Mediation, prepare, exchange and deliver to the mediator, for the purposes of the mediation, a Position Paper addressing the key issues in the proceeding; (d) the mediation shall be attended by those persons who have the ultimate responsibility for deciding whether to settle the dispute and the terms of any settlement and the lawyers who have ultimate responsibility to advise the parties in relation to the dispute and its settlement; (e) the mediator, not later than 1 March 2006, report back to the Court whether the mediation is finished; and (f) subject to any further order, the costs of the mediation be paid in the first instance by the Applicant and the Respondent in equal shares. 11. The parties have liberty to apply on three days written notice. 12. The proceeding be listed for a further directions at 9.30 am on 7 March 2005. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VID 1317 OF 2005 BETWEEN: OXFORD FUNDING PTY LTD APPLICANT AND: OXFORD ASIA-PACIFIC INVESTMENTS PTY LTD RESPONDENT JUDGE: HEEREY J DATE: 2 NOVEMBER 2005 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 The applicant has commenced these proceedings alleging trade mark infringement, contravention of s 52 and/or ss 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) and passing off. The claims are based on the use of the respondent's name, Oxford Asia-Pacific Investments Pty Ltd. 2 The history of the applicant goes back to July 1994 when a company called Profund Pty Ltd commenced providing factoring financial services. That company operated under the name Oxford Factors Pty Ltd in Victoria, New South Wales and Queensland. In July 2000 it changed its name to Oxford Factors (Aust.) Pty Ltd. 3 In that month it sold its business and goodwill to the applicant. From July 2000 to August 2002 the applicant traded under the name Oxford Factors Pty Ltd and from August 2002 up until now it has used the name Oxford Funding Pty Ltd. The business of the applicant is described in the affidavit of Mr Ralph Long as "book debt factoring services/debtor financing". Essentially this involves the purchase of the debts of clients. Some 20 per cent of the applicant's business is concerned with providing debtor financing services to motorcar and truck repair panel shops. The other part of the business is general debt financing. 4 Since July of this year the applicant has been owned by Bendigo Bank. It is a member of the Institute of Factors and Discounters of Australia and New Zealand and an international body Factors Chain International. It is the owner of three registered trade marks, the words Oxford Factors, a logo with the words Oxford Factors Pty Ltd and a logo with the words Oxford Funding Innovative Solutions for respectively financial management, debtor management services and debtor management. All are for services in class 36. The applicant advertises in periodicals issued by the Society of Certified Public Accountants, panel shop industry magazines, the Yellow Pages, on radio and the internet. 5 The respondent is affiliated with an American group called Oxford Investment Group Inc. The group conducted some business in Australia from September 1994. In October 1997 a company called Oxford Pacific Investments Pty Ltd was incorporated and that carried on business until December 2002. The managing director of that company was Mr Wilfred Bagg. The company was de-registered at the end of 2002 to enable Mr Bagg to pursue some other business opportunities in relation to forensic accounting. It was anticipated that at sometime in the future the business might be resurrected. That in fact happened in April this year, when the present respondent was incorporated with the word "Asia" included in its name. 6 The business of the respondent is concerned with facilitating investments by private equity investors in small and medium enterprises and providing advisory services to them. These services include advice on mergers and acquisitions, financial management, business planning, capital raisings and re-financing, transition issues for family business owners and managers, and forensic accounting and financial investigations. It also provides specialist consulting to divisions of bank and non-bank organisations as to factoring and invoice discounting organisations. 7 Since April this year the respondent has provided services to four clients. There were obtained through personal connections of Mr Bagg. The respondent does not advertise and is not listed in telephone directories. There has been a further transaction involving a company called Display Bay Pty Ltd in which the Oxford Group's ultimate owners have taken an equity interest. The respondent provided some short term finance secured by a fixed and floating charge over the assets of Display Bay including its book debts. 8 Mr Bagg deposed that the respondent, "does not and has no intention of providing factoring (or debtor finance) services of the kind offered by the applicant. Nor does it hold itself out as doing so." As part of its case senior counsel on behalf of the respondent proffered to the Court an undertaking that pending the final hearing and determination of this proceeding it will not provide debt factoring services, debt financing services, debt collection services or outsourcing services in relation to accounts receivable administration, under or by reference to its corporate name "Oxford Asia Pacific Investments" or any name that includes the name "Oxford". 9 The only difference between that undertaking and the terms of the interlocutory injunction sought is that the respondent also be restrained from using the name "Oxford" in relation to the provision of finance and financial consulting broking or advisory services. 10 I shall assume for present purposes that the applicant has made out a serious issue to be tried on its causes of action. Nevertheless I am satisfied that the balance of convenience weighs against the grant of an interlocutory injunction. 11 It seems on the evidence that the applicant and the respondent, when their businesses are properly analysed, operate in quite different areas. The general thrust of the respondent's business is arranging for private equity funding on the basis of obtaining a controlling interest in entities. To the extent that there might be any risk of it engaging in the factoring business (which is the essence of the applicant's operations) the undertakings that I have referred to will ensure that does not occur. 12 In the periods from October 1997 to December 2002 and April this year to the present there is no evidence at all of any complaints or confusion arising from similarity between the names of the applicant and the respondent. 13 Telephone directories in capital cities in Australia reveal other businesses trading in the financial area with the name "Oxford" as their first name. These include Oxford Insurance Brokers Pty Ltd, Oxford Securities Pty Ltd, Oxford Financial Services Pty Ltd and Oxford Accounting Group. 14 I am not satisfied that there is any significant risk of harm coming to the applicant by the refusal of the interlocutory injunction, given the undertakings I have mentioned. On the other hand the injunction would, I think, seriously disrupt the respondent's legitimate activities including its international operations in China. It would have to cease business until a new name could be registered. It would lose the benefit of perceived affiliation with its United States and Chinese associates. 15 So on the basis of the undertakings given the application for an interlocutory injunction is dismissed. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey. Associate: Dated: 2 November 2005 Counsel for the Applicant: C Golvan SC Solicitors for the Applicant: Middletons Counsel for the Respondent: BN Caine SC with A Monichino Solicitors for the Respondent: Philips Fox Date of Hearing: 2 November 2005 Date of Judgment: 2 November 2005