Australian Exhibitions and Conferences Pty Ltd v Australian Exhibition Services Pty Ltd [2001] VSC 226

Supreme Court of Victoria|2001-07-04|Before: GILLARD J

INTERLOCUTORY INJUNCTION - misleading and deceptive conduct - passing off - use of name associated with plaintiff.

The return of the plaintiff's summons in a proceeding instituted by writ, seeking an injunction restraining the defendants from promoting and marketing a trade show, to be held by the first defendant in Brisbane in the State of Queensland in March 2002, using a name "Hospitality Queensland", which the plaintiff asserts is associated with it.

The plaintiff, Australian Exhibitions and Conferences Pty Ltd ("the plaintiff"), carries on the business of organising and conducting trade and public exhibitions and conferences throughout Australia. Since 1997, the plaintiff has conducted and organised an exhibition for the hospitality industry in Queensland. It has from time to time used the name "Hospitality Queensland" in the course of organising, marketing and conducting the exhibition.

The first defendant, Australian Exhibition Services Pty Ltd ("the defendant"), is a company which also organises and holds exhibitions for industries and has, over some 18 years, organised more than 200 trade shows throughout Australia. It is a large organisation.

The second defendant, Graeme Herbert Selby ("Mr Selby"), is the Managing Director of the defendant.

Since 1997, the plaintiff has conducted and organised an exhibition for the hospitality industry in Queensland, which promotes fit out equipment and furnishings for hotels, motels, clubs and restaurants. The exhibition is held every two years. The last one was held in May 2000.

If one goes back in time, in 1994 and 1996, another company conducted an exhibition for the hospitality industry under a variety of names, including "Hospitality Australia Queensland". In 1997, that company transferred the right, title and interest in that name, amongst others, to the plaintiff.

The plaintiff held exhibitions in May 1998 and 2000 at the Brisbane Convention and Exhibition Centre. The plaintiff's exhibition has been conducted under various names, including "Hospitality Australia", "Hospitality Queensland", "Hospitality Australia, Brisbane", "Hospitality Australia Queensland", "Hospitality 2000" and "Hospitality Queensland 2000".

In order to promote the various exhibitions and attract potential exhibitors and visitors, the plaintiff has undertaken, in the past, extensive advertising, direct marketing, and public relations featuring the various names referred to above. It also relies heavily on the support of various organisations in Queensland, including the Hotel and Motel Accommodation Association of Queensland ("HMAA"), to sponsor the exhibitions. The logo of HMAA and other bodies in Queensland have been prominently displayed on all literature and advertising materials of the plaintiff.

The plaintiff expends substantial sums of money on the organisation and conduct of the exhibition, and in 2000, it spent some $86,000.

In support of the application, the Managing Director of the plaintiff, Marie Therese Kinsella swore an affidavit. She exhibited many documents which had been used by the plaintiff in respect to advertising, marketing and promoting the exhibitions held in previous years. The exhibition has always been held in May.

It has scheduled the exhibition to be held during the period 19-21 May 2002 at the Brisbane Centre.

The defendant conducts and organises exhibitions and trade shows mainly for the food industry in the three eastern states, and the exhibition in Queensland is usually held under the name "Fine Food Queensland/Australia". It also has, in the past, held exhibitions for the building industry and a variety of other industries.

This year, for the first time, the defendant conducted an exhibition for the hospitality industry in Sydney, under the name "Hotel Australia", in conjunction with its Fine Food exhibition.

At the beginning of May this year, Mr Selby approached Miss Kinsella and sought a meeting with her. At the meeting, he informed her that the defendant was in the market for buying companies. He informed Miss Kinsella, in answer to a question put by her, that the defendant proposed to run the "Hotel Australia" exhibition alongside its Fine Food exhibition in Queensland. Mr Selby asked whether the plaintiff was interested in running its exhibition alongside the defendant's "Fine Food Queensland" exhibition. Sometime later, she contacted Mr Selby and said that the plaintiff would be interested in selling its rights to the defendant, if it was interested in making an offer. Mr Selby confirmed his interest. As a result, there were discussions and negotiations and the plaintiff supplied the defendant with its financial figures. On or about 21 May 2001, an offer was made by the defendant to purchase the rights to the plaintiff's exhibition.

The e-mail making the offer was in these terms:-

"We would be prepared to offer to you $50,000 cash and a 10% commission on all hospitality Australia exhibitors participating in our event that have not previously exhibited with us in the previous two shows, subject to due diligence".

On about 25 May 2001, the plaintiff discovered that the defendant was promoting, marketing and distributing advertising material and letters regarding its exhibition to be held during the period 24 - 26 March 2002. The exhibition was promoted under the name "Hospitality Queensland", in conjunction with "Fine Food Queensland".

The evidence establishes that the defendant's exhibition is targeting the same market as the plaintiff's exhibition.

The defendant's advertising material and letters, forwarded to possible exhibitors and visitors, prominently display the name "Hospitality Queensland" and further, has displayed the logos of the Restaurants and Caterers Association of Queensland ("RCQ") and the HMAA.

Evidently, the defendant approached HMAA for permission to use its logo. It appears that the membership manager of HMAA mistakenly believed that it was the plaintiff who was seeking permission and accordingly, permission was granted. However, later, it was ascertained that it was the defendant who was seeking permission, and the permission was withdrawn. On 5 June 2001, the solicitors for HMAA informed the defendant of that fact.

The evidence further shows that whilst RCQ agreed to support the defendant's exhibition, it did not give permission for its logo to be used.

Correspondence signed by Mr Timothy Collett, the exhibition director of the defendant, and sent in late May to potential exhibitors, contains a logo, prominently displayed at the top of the letter "Hospitality Queensland" under a logo "Fine Food Queensland".

Immediately below the logo appears the following -

"Running together for the first time 24th -26th March 2002."

In the body of the letter, after referring to the Fine Food Brisbane exhibition, appear the words-

"Plus there is some exciting news ... For the first time, the show will be running alongside Hospitality Queensland. This exhibition is a show case of the latest hotel, motel and restaurant equipment. By running together, these events will attract even more of your buyers".

In my opinion, the message conveyed to the reasonable reader of the letter is that "Hospitality Queensland" is an existing exhibition, which has been conducted before, and that the Fine Food exhibition, which is conducted by the defendant, will be conducted with the previously existing Hospitality Queensland exhibition. The evidence establishes that the plaintiff conducted the exhibition known in Queensland as "Hospitality Queensland", and the defendant has never conducted such an exhibition in Queensland.

The defendant held a launch of its exhibition in Brisbane on Thursday 21 June 2001. The letter, pamphlets and brochure concerned with the launch, featured the name "Hospitality Queensland" and stated amongst other things -

"I am pleased to invite you to the official launch function for Fine Food Queensland and Hospitality Queensland. As you know, these exciting trade shows are to be staged together at the Brisbane Convention Centre next March". (Emphasis added).

There was some evidence placed before the court that recipients of the letters, pamphlets and brochures confused the reference to Hospitality Queensland with the bi-annual exhibition conducted by the plaintiff.

On 25 May 2001, the plaintiff's solicitors forwarded a letter to Mr Selby, asserting that the defendant had indulged in misleading conduct in seeking to pass off its exhibition as that of the plaintiff, and alleging breach of the Trade Practices Act. The solicitors demanded that an undertaking be given that the defendant not use names, in relation to the promotion of its exhibition, which suggested that it was the plaintiff's exhibition.

The defendant's solicitors disagreed that the plaintiff had any interest in any names involving the name "Hospitality", and stated that there was no evidence of confusion between the two exhibitions. The defendant declined to give the undertaking.

Miss Kinsella also gave evidence of the concern she has of the misleading conduct on the plaintiff's exhibition to be held in May 2002.

Timothy John Collett, the exhibition director of the defendant, swore an affidavit in opposition to the plaintiff's summons. He deposed to the fact that the defendant is a substantial company that has been operating for some 18 years, and that it organises and holds exhibitions for industries such as building, food, information, electrical engineering et cetera. To date, the defendant has organised more than 200 trade shows throughout Australia. It employs a large team and holds about 15 exhibitions or events in one year. It also markets some 20 major overseas shows to Australian exporters.

The defendant has operated the exhibition called "Fine Food Brisbane" bi-annually each March, since 1994. As part of the event, it also operated a hospitality equipment section concerned mainly with kitchen, front of house tableware, and room service. This section comprised approximately 25% of the floor space for the "Fine Food Brisbane" exhibition.

He stated that, due to the popularity of the hospitality section, he and Mr Selby decided this year to organise an event targeted specifically at the hospitality industry.

He stated that in April this year, he travelled to Brisbane to meet representatives from the Hospitality Industry Associations, and after some discussion about what the exhibition should be called, the Associations' representatives suggested he use the name "Hospitality Queensland" rather than "Hotel Queensland". The defendant intends holding the "Hospitality Queensland" exhibition in conjunction with the "Fine Food Queensland" show in March 2002. The defendant has, to date, expended considerable time and resources in promoting and advertising the "Hospitality Queensland" exhibition. Mr Collett stated that if the defendant was required to cease to use the name "Hospitality Queensland", there would be damage to its reputation. Further, it would be necessary to reprint promotional material. He stated that at the launch party, to be held on 21 June, he would inform everybody present that it would be the defendant who would be holding the "Hospitality Queensland" exhibition. He also gave evidence that there was some confusion over the use of the HMAA logo, and that the matter was to be resolved between the parties.

In addition to the affidavit of Mr Collett, an affidavit was sworn by Michelle Lesley Groves, a lawyer employed by Deacons, who are acting for both defendants. She swore the affidavit because Mr Selby was currently in Turkey. She gave evidence based upon information that Mr Selby had provided by telephone. Mr Selby stated that he did make an offer to purchase the plaintiff's hospitality show for the sum of $50,000 plus 10% commission on all exhibitors who had exhibited with the plaintiff and not the first defendant. He stated that he expected to receive the data base of the plaintiff's exhibitors but did not expect to receive the name of the plaintiff's hospitality event.

Ms Groves also gave evidence that there had been discussions with HMAA, and that she had, on 20 June 2001, sent a facsimile in which it was stated that the defendant would not use the HMAA logo on any future promotional material if HMAA did not wish to support the Fine Food event, and did not wish to support the "Hospitality Queensland" function.

The plaintiff seeks an interlocutory injunction which will have the effect of stopping the defendant from using the name "Hospitality Queensland", and publishing anything which would, expressly or impliedly, convey to the reasonable reader that the defendant's Fine Food exhibition was associated with the plaintiff or the plaintiff's business.

The principles which guide a court on an application for an interlocutory injunction are well established.

The court has an inherent power to grant an injunction. The jurisdiction is now the subject of statute. Section 37(1) of the Supreme Court Act 1986 provides -

"The court may by order, whether interlocutory or final, grant an injunction or appoint a receiver if it is just and convenient to do so."

Sub-section (2) of that section makes it clear that the order may be made subject to terms and conditions.

The jurisdiction is a wide one. It requires the court to be satisfied with two matters, namely, that it is just, and convenient, to grant an order.

An interlocutory injunction is merely provisional in its nature, and does not conclude or determine any rights. Its object is to preserve the position, which is in dispute, in status quo, until the hearing and determination of the dispute or further order. The court does not in general seek to anticipate the determination of the right, but merely gives its opinion as to whether there is a serious question to be determined or in some cases, that the plaintiff has a prima facia case and, if the case has been made out, for the preservation of the right which has been breached or threatened. The court sets out, in a practical way, to preserve the subject matter of a dispute, pending final resolution, or otherwise, maintain the status quo.

There may be some cases where an unlawful act has occurred with the result that damage has been suffered. The court, in those circumstances, may restrain the further breach of the law, and take steps to restore the status quo prior to the commission of the unlawful act.

On such an application, the court considers four general issues.

First, it is necessary for the party claiming the injunction to establish that he has a right, which is recognised as a legal or equitable right, and that there has been an infringement or threatened infringement of that right by some unlawful act.

The second matter to be considered is the question whether there is a serious or substantial question to be decided, or, depending on the nature of the relief sought, that the plaintiff has a prima facia case. The two extremes are exemplified by the leading authorities of American Cyanamide Co v Ethicon Ltd [1975] UKHL 1; (1975) AC 396 and Beechamp Group Ltd v Bristol Laboratories Pty. Ltd [1968] HCA 1; (1968) 118 CLR 618.

In Australia, the law is that in the usual case, the applicant has to prove that there is a serious question to be decided. See Castlemaine Tooheys Ltd v South Australia [1986] HCA 58; (1986) 161 CLR 148, at 153 per Mason CJ.

However, where a party in effect seeks a mandatory injunction or, in circumstances where the party is seeking what in a practical way will be the relief it would receive at trial, if successful, then a more onerous burden is placed upon the applicant.

The more stringent threshold, required in circumstances where the practical effect of the injunction would be to give the applicant most, if not all, of the relief he would expect at trial, was stated by Lord Diplock in NWL Ltd v Woods (1979) 1 WLR 1294 at 1307-

"Where ... the grant or refusal of the interlocutory injunction will have the practical effect of putting an end to the action because the harm that will have been already caused to the losing party by its grant or its refusal is complete and of a kind for which money cannot constitute any worthwhile recompense, the degree of likelihood that the plaintiff would have succeeded in establishing his right to an injunction if the action had gone to trial, is a factor to be brought in to the balance by the Judge in weighing the risks that injustice may result from his deciding the application one way rather than the other".

Likewise, where the effect of an interlocutory injunction is mandatory, then the plaintiff does carry the burden of establishing a high degree of assurance that it would succeed at trial. See Sheppard Holmes Ltd v Sandham (1971) 1 Ch 340 at 351 and Dataforce Pty Ltd v Brambles Holdings Ltd [1988] VicRp 73; (1988) VR 771.

The third matter that has to be addressed is the balance of convenience, which means that the plaintiff must establish that if the injunction were refused, he would suffer a greater injury than the defendant would suffer if the injunction was granted. Another matter that must be weighed in the balance is whether damages would be a more suitable remedy than a grant of an injunction. The effect is that the Judge has to weigh the risks that would flow, which may result in an injustice, by reason of deciding in favour of one party or the other. In this regard, it cannot be overlooked that the material before the court is often incomplete and usually untested.

The final matter concerns the discretionary factors that may be applicable to a particular case, for example, delay causing prejudice or the failure by the plaintiff to disclose all relevant matters.

In most cases, the questions of the strength or otherwise of either party's case and the balance of convenience, overlap. If the court is of the view that the serious question to be decided test shows a weak plaintiff's case, the strength of his case on the balance of convenience may tilt the balance in favour of granting the relief. I refer to what Sir George Lush said in Slater Walker Superannuation Pty Ltd v Great Boulder Gold Mines Ltd [1979] VicRp 13; (1979) VR 107 at 110, quoted with approval by the Full Court in Magna Alloys and Research Pty Ltd v Coffey [1981] VicRp 3; (1981) VR 23 at 28.

Because this is an interlocutory application and there are difficulties in making findings of fact on incomplete and untested material, the court as a general rule should be careful not to proceed too far into the areas of disputed facts.

The evidence establishes that the plaintiff had acquired a substantial and valuable reputation in conducting its exhibition in Brisbane under various names, including the name "Hospitality Queensland". The evidence also establishes that its exhibition was extremely successful and well patronised by exhibitors and visitors, and the conclusion is that it had acquired goodwill in conducting the exhibition under the name which includes "Hospitality Queensland". Its reputation and goodwill, with respect to the said exhibition every two years, is corroborated by the fact that the defendant sought to purchase the plaintiff's rights to hold such an exhibition. It recognised that the plaintiff's exhibition has some value.

In my opinion, the evidence establishes that the plaintiff had acquired a reputation and goodwill in respect of its hospitality exhibition.

I am satisfied that there is evidence that the defendant, aided and abetted by Mr Selby, has engaged in misleading and deceptive conduct, in that the defendant, through brochures, advertising, promotional material and correspondence, suggested to others that it was conducting an exhibition, in March 2002, which was associated with the plaintiff's exhibition, which had been held in the past. I am also satisfied on the evidence, that it is arguable that it has misused the logo of HMAA and RCA of Queensland.

It is strongly arguable that the defendants have misrepresented that there is a connection and an association between the defendant's and the plaintiff's exhibitions, and in my opinion, on an objective test, the documentary material leads to that conclusion. Further, there is some evidence that others have been misled.

I think also that there is an arguable case that the defendant has engaged in conduct which constitutes passing off, in law.

I accept the submission that passing off is no longer anchored to a trade mark or trade name, but does cover other materials which establish that a particular organisation has goodwill in the product or service. See Cadbury Schweppes Pty Ltd v Pub Squash (1981) 1 WLR 193.

The evidence leads to the conclusion that the plaintiff has an established goodwill and reputation in the conduct of its exhibition under the name "Hospitality Queensland", that the defendant has conveyed, through its printed material, a connection or association between the plaintiff's exhibition and the defendant's exhibition to be held in March 2002, and that this amounts to a misrepresentation which was calculated to improve the defendant's business or goodwill. There is strong evidence that the plaintiff will suffer loss or damage by reason of the defendant's wrongful conduct.

Counsel on behalf of the defendant's submitted that there was no serious question to be decided, and asserted that the plaintiff's case was hopeless. I do not agree. It was submitted that "Hospitality Queensland" is merely descriptive of an exhibition event but in my view, the evidence goes further than that. The evidence shows that the plaintiff has acquired a reputation and goodwill in the use of that name in conducting its exhibition. I do not accept that there is no significant evidence of confusion. Indeed, there is an inference that Mr Selby set out to take over the plaintiff's exhibition in Queensland by conduct which was misleading. I refer to the statement in the brochure and correspondence that the exhibitions are "running together for the first time 24 - 26 March 2002".

I am quite satisfied that there is a serious question to be decided. Further, if the practical effect of the grant of an injunction is that it will decide its relief in the preceding, I am quite satisfied that there is a substantial degree of likelihood that the plaintiff would succeed at trial in establishing its right to an injunction.

Our laws, both statutory and common law, preserve the right of organisations, companies and people in trade, to compete. But whilst the law upholds competition, it must be fair competition. The evidence in this case, even untested, leads very strongly to the conclusion that the defendants want to compete on their terms, which are arguably deceptive and misleading.

In my opinion, the balance of convenience is all one way. Considerable harm no doubt has already been caused to the plaintiff. Steps must be taken to arrest the harm and by a suitably worded injunction, that can be achieved. There are some 10 months to the staging of the plaintiff's exhibition, and steps can be taken to ensure that the plaintiff does not suffer further harm. The grant of a suitably worded injunction will not stop the defendant from competing with the plaintiff's exhibition. Any damage that it will suffer will be confined to a financial loss, due to the requirement that documentary material, which it still has, be destroyed.

I am satisfied that the refusal of an interlocutory injunction would cause greater harm to the plaintiff than the harm caused to the defendant by the granting of an injunction.

In the end, it is a matter of doing justice between the parties, and justice will be best served by the granting of an injunction restraining the defendant from further misleading the people in Queensland, requiring it to destroy the offending material and requiring it to provide the names and addresses of each person to whom it has forwarded advertising material or invited to the launch.

It was submitted that an undertaking for damages, given on behalf of the plaintiff, would be of little value. I do not accept that submission. The plaintiff has a substantial turnover each year. Further, there is evidence that Miss Kinsella does have an interest in a piece of real estate.

I am satisfied on the evidence that the plaintiff is entitled to an interlocutory injunction against the first defendant.

Subject to submissions of counsel, I propose to make the following orders -

(1) Until trial or further order, an interlocutory injunction be granted, restraining the first defendant whether by itself, its servants or agents, or otherwise, howsoever, from -

promoting, marketing and advertising the first defendant's trade show;

(i) by reference to the trade name "Hospitality Queensland".

(ii) by stating or publishing by way of advertisement, either expressly or impliedly, that the first defendant's trade fair, to be held by it in March 2002 in Brisbane, is associated or affiliated with the plaintiff or the plaintiff's business, or any trade show previously conducted by the plaintiff, or the plaintiff's trade show to be held in Brisbane in May 2002.

(2) That the first defendant deliver to the plaintiff's solicitors, Macpherson and Kelley, in Melbourne, all of its promotional material which contains the words "Hospitality Queensland", or any statement to the effect that its "Fine Food Queensland" exhibition is to be held for the first time with "Hospitality Queensland", for destruction.

(3) That the first defendant, on or before 15 July 2001, file and serve an affidavit, setting out the names and addresses of all persons, companies and organisations to whom the first defendant's promotional material was sent, and the names and addresses of all persons, organisations and companies to whom a letter was sent inviting the addressee to the launch held in Brisbane on 21 June 2001.

I will hear the parties on the question of costs.

I certify that this and the 13 preceding pages are a true copy of the reasons for Judgment of Gillard J of the Supreme Court of Victoria delivered on 4 July 2001.

At a glance

Court

Decision date

Before

Source

Judgment (80 paragraphs)

Parties

Legislation Cited (1)

Cases Cited (2)