FEDERAL COURT OF AUSTRALIA Australian Swimming Coaches and Teachers Association Limited v Aussie Aquatics Pty Ltd [2016] FCA 316 File number: NSD 275 of 2016 Judge: NICHOLAS J Date of judgment: 1 April 2016 Catchwords: PRACTICE AND PROCEDURE – whether interlocutory injunctions should be granted pending trial of proceeding – whether orders requiring delivery up should be made Cases cited: Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238 Warner-Lambert Co LLC v Apotex Pty Ltd (2014) 106 IPR 218 Date of hearing: 29 March 2016 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 54 Counsel for the Applicant: Mr BF Katekar with Mr GP Gee Solicitor for the Applicant: Bartier Perry Counsel for the Respondents: Mr P Jammy Solicitor for the Respondents: HWL Ebsworth Lawyers ORDERS NSD 275 of 2016 BETWEEN: AUSTRALIAN SWIMMING COACHES AND TEACHERS ASSOCIATION LIMITED (ACN 135 046 605) Applicant AND: AUSSIE AQUATICS PTY LTD (ACN 094 188 333) First Respondent ROSS DAVID GAGE Second Respondent JUDGE: NICHOLAS J DATE OF ORDER: 1 April 2016 THE COURT ORDERS THAT: 1. Upon the applicant giving to the Court the usual undertaking as to damages: Until the determination of this proceeding or further order, the respondent is restrained, by its servants, agents or otherwise, from using, in trade or commerce, any of the logos depicted in the Schedule to these orders or any other logo that is deceptively similar to any such logo. 2. The second respondent is to file and serve by 4pm, 8 April 2016 an affidavit made by him annexing a complete list of all swim schools that were registered with the first respondent as at 17 December 2015. 3. The application for interlocutory relief is otherwise dismissed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT NICHOLAS J: 1 Before me is an application for interlocutory relief made by the applicant, Australian Swimming Coaches and Teachers Association Limited ("ASCTA") against the first respondent, Aussie Aquatics Pty Ltd ("AA") and the second respondent, Mr Ross Gage ("Mr Gage"). 2 There was no dispute between the parties as to the principles to be applied for the purpose of deciding the present application. They are discussed and explained in Warner-Lambert Co LLC v Apotex Pty Ltd (2014) 106 IPR 218 at [68]-[70] and Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238 at [52]-[67]. 3 The proceeding in which the interlocutory relief is sought by ASCTA was commenced by it earlier this year following the termination of a contract between ASCTA and AA. As I will explain, it is accepted by all parties that the contract came to an end by no later than 22 December 2015 though there is a dispute as to whether it was ASCTA or AA that lawfully terminated the contract. 4 ASCTA is a public company limited by guarantee. ASCTA is a registered charity with a history that dates back to 1971. Mr Gage has been involved in ASCTA since 1982. From 1 July 2009 to 30 June 2015, Mr Gage was ASCTA's CEO. 5 AA was incorporated in 2000. Mr Gage is AA's sole director and shareholder. Prior to AA's incorporation, Mr Gage carried on business as a sole trader under the business name "Aussie Aquatics". 6 In 1996 the ASCTA board approved the creation of what was then referred to as the "Swim Australia" program. Broadly speaking, the program provided for the registration of swim schools which would then be provided with various services. In consideration for a registration fee, registered swim schools ("RSSs") received promotional and marketing material to help promote their business together with access to other products and services intended to assist them in the management and development of their business. According to Mr Gage's evidence, the Swim Australia program, which he also refers to as the Swim Australia business, had approximately 600 RSSs as at December 2015. 7 In addition to registration income, the Swim Australia business also generates revenue from the sale of publications, running professional development events and sponsorships. Mr Gage says that major sponsorships were acquired by Sports Marketing and Management ("SMAM") acting for AA with SMAM receiving a 20% commission for its services. 8 Between 2001 and 2015 the registration fees received from the RSSs were paid into a bank account operated by AA. According to Mr Gage, an account ("the Operating Account") was opened in the name of "Aussie Aquatics Pty Ltd t/a Swim Australia" in July 2002. According to Mr Gage's evidence, any revenue generated, and any costs paid, by the Swim Australia business was transacted through the Operating Account. 9 There is also another account ("the Holding Account") established in June 2012 in the name "Australian Swimming Coaches and Teachers Ltd trading as ASCTA – Swim Australia". Mr Gage says that the Holding Account was established by him in his capacity of CEO of ASCTA. He had access to the funds in the Holding Account until May 2015 when his access was revoked by ASCTA. 10 There is a dispute between the parties as to which of ASCTA and AA is entitled to funds which remain in the Holding Account but this is not a matter that has any relevance to determination of the interlocutory application. 11 There are three written agreements made in 1998, 2001 and 2006 which directly relate to the Swim Australia business. 12 The 1998 agreement was made between ASCTA (which was then an incorporated association) and Mr Gage. It refers to Swim Australia and Mr Gage's role in relation to the Swim Australia business but it does not specify in terms who the proprietor of that business is, whether it is a business carried on under the Aussie Aquatics name by Mr Gage for his own benefit, with a licence to use the Swim Australia name, or whether Mr Gage was merely managing the Swim Australia business for ASCTA. 13 The 2001 agreement was made between ASCTA, AA and Mr Gage on 1 April 2001. The recitals state: A. ASCTA is a non-profit organisation that carries on the business of the professional development of swimming coaches in Australia. B. ASCTA is the owner of all right title and interest in and to the Trade Mark, Trade Name and other Intellectual Property concerning the Business and learn to swim promotion and swim school development. C. ASCTA has agreed to appoint Aussie Aquatics as the manager of the Business and grant a license to Aussie Aquatics to use the Trade Mark, Trade Name and other Intellectual Property, for the purpose of further developing and exclusively running the Business, on the terms and conditions of this Agreement. D. Gage agrees to guarantee the performance of Aussie Aquatics pursuant to this Agreement. 14 Clause 1.2 contains some important definitions including: "Business" means the learn to swim promotion and swim school development conceived and developed by ASCTA known as Swim Australia. "Business Plan" means the plan for marketing, developing and conducting the Business in the Territory as devised by Aussie Aquatics and approved by ASCTA in accordance with Clause 11 from time to time. "Confidential Information" means all trade secrets, ideas, know-how, concepts and information whether in writing or otherwise relating in any way: (a) to either party, their sublicensees or employees; (b) the Intellectual Property; (c) the Business Plan; (d) the License Fee; (e) either party's affairs or businesses, sales, marketing or promotional information; (f) the terms of this Agreement; but does not include information that: (i) is or becomes part of the public domain otherwise than by breach of this Agreement by either party; (ii) is lawfully obtained by either party from another party without any restriction as to use and disclosure; or (iii) was in either party's possession prior to disclosure to it by the other party. "Copyright Assets" shall include any and all copyright, including future copyright and rights in the nature of or analogous to copyright in respect of manuals, plans, pictures diagrams, or other similar materials concerning the Business. "Intellectual Property" means the Copyright Assets, Internet Assets, Trade Marks, Trade Name and Trade Secrets. "Internet Assets" means all the worldwide internet domain addresses or sub-domain internet names and addresses (registered or unregistered) or related rights and content thereof relating directly to the Business including but not limited to www.swimaustralia.org.au. "Trade Marks" means all trade marks owned by ASCTA from time to time in respect of the Business whether or not now existing and whether or not registered or registrable including but not limited to Australian Trade Mark Registration No. 739133 for the words ASCTA Swim Australia in respect of classes 28 and 41. "Trade Name" means the trade name Swim Australia. "Trade Secrets" means all trade secrets, ideas, know-how, concepts and information whether in writing or otherwise relating in any way to the Business. 15 Clause 2 of the agreement provided: 2.1 In consideration of Aussie Aquatics' agreement to pay to ASCTA the License Fee and subject to the Aussie Aquatics' due compliance with the terms and conditions set out in this Agreement, ASCTA appoints Aussie Aquatics as the exclusive manager of the Business throughout the Territory for the Term on the terms and conditions set out in this Agreement AND Aussie Aquatics accepts the said appointment. 2.2 For the purposes of the appointment, ASCTA grants to Aussie Aquatics an exclusive license to use the Intellectual Property in accordance with the Business Plan throughout the Territory for the Term. 16 Clause 9 of the agreement provided: 9.1 Aussie Aquatics acknowledges and agrees that: (a) ASCTA is the owner of all right title and interest in and to the Intellectual Property; and (b) Aussie Aquatics will not, as a result of entering into this Agreement, acquire any Intellectual Property or any other rights other than the rights in respect of the license expressly granted to Aussie Aquatics herein. 17 Clause 15 of the agreement provided: 15.1 Aussie Aquatics will immediately cease use of the Intellectual Property and conduct of the Business upon termination of this Agreement and shall forward to ASCTA details of all leads, customers, potential customers etc that have already or may contact Aussie Aquatics after the termination in relation to the Business. 15.2 Aussie Aquatics will, at its own cost, within thirty (30) days of termination of this Agreement return to ASCTA or its nominee all marketing materials, brochures, advertisements etc, as well as, all bank statements, cheque books, accounts reports and invoice books, and any other information that ASCTA may reasonable require for a taxation audit, in relation to the Business and any Confidential Information in the possession, power or custody of Aussie Aquatics as at the date of termination. 18 The 2006 agreement was made between ASCTA and AA on 23 October 2006. It was signed on that date by Dr Ralph Richards, the then CEO of ASCTA, and Mr Gage, CEO of AA. 19 Clause 1 of the 2006 agreement provided: 1. Purpose ASCTA, as the owner of all right title and interest in and to the Trade Mark, Trade Name and other Intellectual Property concerning 'Swim Australia', has agreed to extend, with amendments, its licence with AA as manager of Swim Australia for the purpose of further developing and exclusively running the Business, on the terms and conditions of this Agreement. AA's licence to use the 'Swim Australia' Trade Mark and Trade Name as a 'Business' relates to: (1) developing the learn-to-swim industry by enhancing the practices, standards, and methods used by member 'swim schools', and (2) promoting 'learning to swim' as a necessary and worthwhile skill for all Australians to acquire. ASCTA retains the rights to 'Swim Australia' for areas concerning 'Teacher of Swimming' professional development, training, and accreditation with the aim of attracting swimming teachers as members of ASCTA. ASCTA makes no representation or warranty to AA with regard to the profitability and/or success of the business aspects of Swim Australia as a result of AA's appointment and/or grant of licence pursuant to this Agreement. 20 The 2006 agreement does not define "Trade Mark", "Trade Name", "Intellectual Property" or "Business" but they are, of course, defined in the 2001 agreement. Since the 2006 agreement is an agreement which purports to extend, with amendments, ASCTA's licence with AA as manager of Swim Australia, it seems to me that it is permissible to read the two agreements together. For the purposes of the present application, I interpret the reference to "the Business" in cl 1 of the 2006 agreement to refer to the learn to swim promotion and swim school development known as Swim Australia conceived and developed by ASCTA. 21 The 2006 agreement contains express terms requiring each party to act in good faith toward the other and to provide reasonable assistance and co-operation: see cl 2(e) and cl 3(c). 22 Clause 2(g) – (m) provides: (g) AA will provide ASCTA with a report on the operations of the Business at least twice annually, including at the ASCTA Annual General Meeting. AA will endeavour to document its business practices so that, in the event AA is no longer able to operate the Business on licence from ASCTA, there would be no disruption to the Business. (h) AA will furnish ASCTA, within ten business days of ASCTA's request, any information sought by ASCTA regarding the marketing, development and conduct of the Business. (i) AA will consult on an ongoing basis with ASCTA with respect to significant aspects of the Business. (j) AA will pay all expenses and taxes of the Business as and when they fall due. (k) AA will not make any false, misleading or deceptive statements with respect to the Business. (l) AA will retain and maintain its 'Swim Australia' account, separate to any other AA business, and provide ASCTA with quarterly financial reports from same. (m) AA will provide ASCTA, or its nominated accountant, within fourteen days of any such request, a copy of any relevant financial records pertaining to the Business. 23 Clause 3(d) of the 2006 agreement provided: ASCTA will allow AA to retain any profit from its operation of the Business. 24 Clause 4(a)-(b) of the 2006 agreement provided that it would remain in force until 31 December 2011, but that it might be extended for a further five years at AA's request. At AA's request, the 2006 agreement was extended to 31 December 2016. 25 Clause 4(c)-(d) of the 2006 agreement provided ASCTA and AA with rights of termination. Relevantly, by cl 4(c), ASCTA could terminate the agreement if (inter alia) AA failed to correct a breach following the receipt of written notice. 26 The 2006 agreement does not include any restraint of trade that might prevent either AA or Mr Gage from providing the same services they have provided to swim schools during the last 14 years after termination. 27 On about 21 September 2015, $209,000 in sponsorship monies received by AA from Energy Australia was deposited by AA into the Operating Account. According to an email from Mr Speechley, the CEO of ASCTA, to Mr Gage dated 7 October 2015: The sponsorship funds have been diverted to the Aussie Aquatics Pty Ltd bank account. Upon examination of bank deposit activity, it appears that at some time after 18th December 2014 the EFT Branch and Account number appearing on invoices to sponsors was altered to effectively have deposits directly placed into the Aussie Aquatics Business Cheque Account. This is a breach by Aussie Aquatics Pty Ltd of the licence agreement dated 23 October 2006 by Aussie Aquatics Pty Ltd not acting in good faith towards ASCTA and is a diversion from the practices previously established since March 2012 with respect to depositing of Swim Australia sponsorship income into the ASCTA Swim Australia Holding Account. Pursuant to clause 4(c)(i) of the licence agreement, ASCTA intends to terminate the agreement immediately unless Aussie Aquatics Pty Ltd rectifies the breach by transferring the $209,000 sponsorship funds received from Energy Australia to the ASCTA Holding Account within 10 business days of the date of this email. 28 In response to this email AA's solicitors did not deny that an arrangement to the effect referred to in the email was made in March 2012, but they asserted that the arrangement had become untenable due to ASCTA's refusal to provide funds from the Holding Account as required by AA. They further asserted that the March arrangement was entered into by AA for the purpose of giving ASCTA some comfort that the sponsorship monies would be spent promoting the Swim Australia business, and on the understanding that AA was able to access those funds as required to conduct the Swim Australia business. 29 On or about 15 December 2015, AA applied to register as a trade mark "Swim Schools Australia Safer, Stronger, Smarter." AA also arranged to change the name of the "Swim Australia" Facebook page from "Swim Australia Registered Swim Schools" ("SARSS") to Registered Swim Schools ("RSS"). 30 ASCTA gave notice of termination of the 2006 agreement on or about 17 December 2015. AA purported to terminate the 2006 agreement on 22 December 2015 on the basis that ASCTA's purported termination constituted a repudiation. 31 On 22 December 2015 AA, through its solicitors, informed ASCTA that AA would continue to run its business and engage with its members, but that it would do so without the use of the "Swim Australia" name. 32 On 24 December 2015 AA sent to the RSSs an email entitled "BUSINESS AS USUAL FOR THE SWIM SCHOOL INDUSTRY LEADERS" which read as follows: You may have recently received a statement from ASCTA advising that the Licence Agreement between ASCTA and Aussie Aquatics Pty Ltd was terminated on 17 December 2015. At a time when families gather to enjoy the festive season, this untimely news greatly affected our extended family/ies, and bitterly disappointed us, especially considering ASCTA's elected timing of this Notice. The termination was one undertaken unilaterally by ASCTA and without AA's consent. In fact, the Licence Agreement still had a full year to run. We will be challenging the lawfulness of ASCTA's termination during 2016. As the CEO of Aussie Aquatics trading as Swim Australia, I, Ross Gage, developed the 'Swim Australia' concept for ASCTA back in 1998 – originally as part of ASCTA's Swim Schools division – before securing the License in 2001, to use the 'Swim Australia' name (ASCTA's trademark). This venture was not embarked upon lightly, nor a walk in the park. In 2001, ASCTA decided they did not want to detract from their coaching focus and take on the financial risk associated with the venture. However, I did. I personally invested thousands of free hours, as well as two personal, $20,000 interest free loans, to ensure its future. As a true believer, it was the aim of the endeavour, and the prospect of the outcome, which shone above all else ... to further grow the concept of assisting Swim Schools in Australia, promoting greater public awareness of the many holistic benefits learning to swim can evoke, and ultimately, helping to reduce drowning deaths. So, despite our separation from ASCTA, it's BUSINESS AS USUAL! Without disruption, and as committed as ever, we will continue to serve you with our world leading services, to help you further develop your swim school … … By the time your swim school's re-registration falls due with us again on the 1st August 2016, we trust you will continue to support us, an organisation whose focus and experience, is not only unmatched, but charging towards a bigger, better and brighter future for swim schools. … Regards, Ross Gage CEO - Aussie Aquatics Swim Safer Smarter Stronger 33 While the parties disagree as to whether or not ASCTA was entitled to terminate the 2006 agreement, their respective counsel accept that, either way, the 2006 agreement came to an end by no later than 22 December 2015. 34 A critical issue that will need to be decided at the trial concerns the nature of the relationship between ASCTA, AA and the Swim Australia business under the 2006 agreement. ASCTA contends that AA was engaged to act as the manager of the Swim Australia business for and on behalf of ASCTA and that any intellectual property developed or acquired by AA during the course of that relationship is held on trust for ASCTA. On the other hand, AA contends that its relationship with ASCTA was essentially that of licensor and licensee and that AA was entitled to carry on business under the name "Swim Australia" on its own account and that the contracts made with swim schools and sponsors prior to termination of the 2006 agreement were made with, and belong to, AA. 35 It is not necessary or desirable to explore each side's arguments in any detail. It is enough to say that there are features of the relevant agreements, some of which are unusual, which each side can point to in support of its characterisation of their legal relationship. 36 ASCTA seeks interlocutory relief that will operate until the determination of this proceeding or further order restraining AA from: (1) representing to the public, or to any person, that: (a) The programme for the registration and accreditation of Australian swim schools, and the provision of services to those swim schools, that it conducted under the name "Swim Australia" prior to 17 December 2015, is a programme that it is entitled to continue conducting for the "Swim Australia" members as at 17 December 2015, albeit without the use of the "Swim Australia" name. (b) Any of the swim schools that were registered or accredited by the First Respondent under the name "Swim Australia" prior to 17 December 2015 are or remain registered or accredited with the First Respondent, unless those swim schools register with any new or equivalent swim school programme that is offered by the First Respondent. (2) using in any way in association with its current business or operations any of the following: (a) the "Swim" device contained within the "Swim Australia" logo as shown below, either in black-and-white or in the blue and green colouring as shown below: (b) the by-line "Safer, Smarter, Stronger" or any by-line containing those three words and that is deceptively similar to that by-line; (c) The following Facebook pages: (i) SwimSAFER Facebook page; (ii) RSS Networking Group Facebook page (previously SARSS Networking Group). (d) The following logo representing registration as a swim school, or any other logo that is deceptively similar to it: (e) The following logo representing accreditation as a swim school, or any other logo that is deceptively similar to it: 37 ASCTA also seeks, by way of interlocutory relief, an order requiring AA and Mr Gage to deliver up to ASCTA a copy of: (a) a document in its [sic] possession recording the names, and any contact details, of any or all members of the "Swim Australia" swim schools division as at 17 December 2015; (b) a document in its [sic] possession that records the passwords, login details, hosting and administration details for each of the items referred to in 2(c) above. 38 The interlocutory relief originally sought by ASCTA was considerably broader than this. Counsel for ASCTA sought to justify most of the interlocutory relief now claimed on the basis that it was necessary to prevent AA from engaging in conduct that would be misleading or deceptive, or likely to mislead or deceive. Significantly, no interlocutory relief is sought restraining AA from infringing the ASCTA registered trade mark for the words "Swim Australia" although there is a claim for interlocutory relief restraining AA from using various logos and what ASCTA refers to as the "Safer, Smarter, Stronger" by-line. The absence of any claim to such relief appears to reflect the fact that, consistent with AA's solicitor's advice to ASCTA on 22 December 2015, AA would cease using ASCTA's registered trade mark. 39 It is necessary at this point to say a little more about the logos and the by-line. According to Mr Gage's affidavit, he sought to "reposition" the Swim Australia brand in 2013. He says that in August 2013 he coined the phrase "Safer, Stronger, Smarter". He says that in 2014 he engaged various consultants to help AA reposition the Swim Australia brand including a consultant that AA paid to develop the "Swim Australia" logo. In an article in the ASCTA Swimming Australia magazine published in late 2014, Mr Gage is quoted as saying: Ultimately, we want to ensure Australians become a Safer, Smarter, Stronger nation of swimmers; and ASCTA's Swim Australia brand, including the logo, is a direct reflection of this drive. 40 Mr Gage does not dispute that he said this but now says that it was not his intention to "link the intellectual property to the new logo" because he had understood that AA was the owner of the new logo. He asserts that AA is the owner of the intellectual property in each of the three logos and the "Safer, Smarter, Stronger" by-line. In relation to the "Swim Australia" logo, AA has apparently obtained an assignment of copyright from the graphic designer who is said to be the author of the relevant artistic work. AA says that any further use of the "Swim Australia" logo by ASCTA will be in breach of AA's copyright although it has not yet filed any cross-claim seeking relief for copyright infringement. 41 It appears from Mr Gage's affidavit and other evidence that the new logo, as well as the "Safer, Stronger, Smarter" by-line, were used extensively by AA between late 2014 and late 2015 during the term of the 2006 agreement. 42 It appears from the evidence that AA is now providing services to participants in the Swim Australia program as at 22 December 2015 that are essentially the same as those that they were obtaining from AA during the term of the 2006 agreement but that this is now occurring under the name "Swim Schools Australia". However, it was not suggested in submissions by counsel for ASCTA that the use of the "Swim Schools Australia" name amounts to an infringement of ASCTA's "Swim Australia" trade mark. 43 In his submissions counsel for ASCTA accepted that AA was now entitled to conduct its own program, offering the same services and benefits that it had offered as part of the Swim Australia program provided, of course, that AA did not engage in conduct that was misleading or deceptive or likely to mislead or deceive or infringe ASCTA's intellectual property rights. As to the former, it would certainly be misleading and deceptive for AA to represent that its swim school program, or any goods or services supplied by it to swim schools, are sponsored, endorsed or approved by ASCTA if that is no longer the case. With regard to ASCTA's intellectual property rights, these certainly include ASCTA's registered trade marks but beyond that the position is somewhat murky. 44 So far as the interlocutory relief sought by the applicant is concerned, I am not satisfied that it is appropriate to make proposed order (1)(a) referred to above. In particular, I am not satisfied that ASCTA has made out a prima facie case for this relief. ASCTA accepts, as I have explained, that AA is entitled to conduct its own program under a name different from "Swim Australia" and that there is no particular service that AA provided prior to 22 December 2015 that it cannot now provide to swim schools. The form of proposed order (1)(a) seems to assume that there are benefits and services that AA was in a position to provide prior to the termination of 2006 agreement that AA is no longer able to provide and that it would therefore be misleading for AA to make such a representation. I am not satisfied that ASCTA has established to the requisite level that any such representation, even if made by AA, would be misleading or deceptive or likely to mislead or deceive. 45 Nor am I satisfied that it is appropriate to make proposed order (1)(b) referred to above. The form of this order seems to assume that swim schools cannot be registered or accredited with AA trading as Swim Schools Australia unless they were first registered with AA when trading as Swim Schools Australia. However, it is not for ASCTA or the Court to stipulate what AA's requirements for such requisition or accreditation should be. It appears that Mr Gage is conducting business on the basis that a swim school that was registered with Swim Australia is or will be treated as registered with AA now that AA is trading as Swim Schools Australia. I do not consider that this is of itself misleading or deceptive, or likely to mislead or deceive. In my view ASCTA has failed to make out a prima facie case for proposed order (1)(b). 46 So far as the logos are concerned, I am satisfied that ASCTA has made out a prima facie case that the use by AA of any one or more of the three logos referred to in the proposed orders is likely to convey to persons associated with swim schools in Australia that AA, or the business now being conducted by AA under the name Swim Schools Australia, is affiliated with, or sponsored or approved by, ASCTA. 47 In relation to the balance of convenience, counsel for AA and Mr Gage submitted that ASCTA's most recent financial statements prepared as at 31 December 2014 indicated that ASCTA may not be able to satisfy and an order made against it under the undertaking as to damages. 48 I do not accept that submission. In the course of his submissions counsel for AA and Mr Gage was unable to tell me whether his clients intended to make any further use of the logos. There is nothing in the evidence to suggest that the logos are important to the operation of the business being conducted by AA under the name "Swim Schools Australia" or that AA will suffer any significant disadvantage if it is restrained from using the logos until the determination of the proceedings. In the circumstances, it is difficult to see how AA will suffer any significant financial harm if restrained from using the logos until the determination of the proceeding. 49 So far as the by-line is concerned, I accept that an advertising slogan may be sufficiently distinctive of a trader to found an action for passing off or for misleading or deceptive conduct based upon another trader's use of the slogan. But a real difficulty highlighted in many cases involving advertising slogans is that they often lack distinctiveness or, in the context of applications for registration of advertising slogans as trade marks, any inherent capacity to distinguish the goods or services in relation to which registration is sought. 50 In the present case I was referred by counsel for ASCTA to various examples of the use made of the slogan "SAFER, SMARTER, STRONGER" in promotional material issued under the Swim Australia name during the term of the 2006 agreement. However, the principal example to which my attention was directed was the ASCTA Swimming Australia Magazine article to which I have previously referred. That article is replete with instances in which the slogan is used in a purely descriptive fashion including in the following passages: ASCTA's Swim Australia Dives Into A Brand New Era … "Ultimately, we want to ensure Australians become a SAFER, SMARTER, STRONGER nation of swimmers, and ASCTA's Swim Australia brand, including the logo, is a direct reflection of this drive," Mr Gage added. … Vision To present a fun, engaging, educational swimming experience that produces a nation of safer, smarter, stronger swimmers. MISSION Swim Australia's mission is to help all Australians become safer, smarter and stronger through swimming. This is primarily achieved by developing and empowering our swim school network through the delivery of world's best practice guidelines, professional development programs, growth opportunities and business support. It's also about fun, and knowing Aussies are safer in and around water, as a result of their Swim Australia Registered Swim School experience, and their resulting knowledge. … Drowning deaths are down by well over 40 per cent. Medical authorities report swimming activity is of great benefit to the overall health and general wellbeing of the nation. Educationalists are delighted more children are attending swimming lessons in their early years, aiding mental, social and physical advancements. Swim Australia maintain their ongoing determination to produce a nation of safer, smarter, stronger swimmers. CORE PROMISE Helping make Australians safer, smarter and stronger, through Swim Australia Swim Schools. 51 I am not satisfied that ASCTA has made out a prima facie case for an injunction in the form of proposed order 2(b). However, I am satisfied that the ASCTA has made out a prima facie case that AA's use of the words "Safer, Smarter, Stronger" in conjunction with the "Swim" device is likely to mislead. The words were used in that manner by AA in a newsletter it issued on 9 February 2016. But I am not minded to grant ASCTA any broader interlocutory relief in respect of the slogan per se due to what strikes me as its lack of distinctiveness. The orders I propose to make will prevent AA from using the slogan in conjunction with the Swim device until the determination of the proceeding. 52 In relation to the order for "delivery up" of a document recording a copy of the names and contact details of RSSs as at 17 December 2015, the case for interlocutory relief was advanced on the basis that ASCTA made out a prima facie case that the relevant information is confidential and that it constitutes intellectual property owned by ASCTA. However, there was no evidence to establish an arguable case that the information contained in any such document was confidential. In fact the evidence suggests that the information is freely available at AA's website. Rather than make an order for delivery up, I propose to make an order requiring Mr Gage to file and serve an affidavit annexing a complete list of the names and contact details of the RSSs as at 18 December 2015. Of course, ASCTA will not be permitted to use the information in the affidavit otherwise than for the purposes of this proceeding without obtaining the necessary leave. 53 So far as the social media sites are concerned, I do not propose to make the order for "delivery up" sought. There is no evidence from which it might be inferred that ASCTA is suffering, or will suffer, any significant harm unless such an order is made or that damages will not provide it with an adequate remedy in the event that it is found that AA's use of the Facebook page or the Twitter page has occurred in breach of ASCTA's rights including any contractual or equitable obligation AA is found to owe to ASCTA. Evidence from Mr Speechley indicates that ASCTA has already established its own Facebook page and Twitter page to which ASCTA is already posting content. 54 I propose to make interlocutory orders in scope and form that accords with these reasons. The application for interlocutory relief will be otherwise dismissed. I will hear from counsel on costs. I certify that the preceding fifty-four (54) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas. Associate: Dated: 1 April 2016