Hornsby Building Information Centre Pty. Ltd. v Sydney Building Information Centre Ltd.

High Court of Australia|1978-04-19|Before: Aickin JJ, Stephen J

The application was founded on ss. 52 and 80 (2) of the Trade Practices Act 1974, as amended. These state:

52 (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive.

(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of sub-section (1).

The expression "interim injunction" includes "interlocutory" injunction.

Injunction pending determination should not be granted routinely, but courts should not be inhibited from granting it where to do so is desirable for the public's protection. There is no simple formula for defining the circumstances in which it should be granted. The apparent strength of an applicant's case is an important factor, but there is no rule that an applicant must show that it is more likely than not to finally succeed. For example, where safety or health are involved, interim injunctions may be properly granted if an applicant may succeed at the hearing (or on appeal) although it does not appear that he is likely to succeed, but should not be granted if there is no real chance of final success.

The appellants seek to set aside this interim injunction granted by the Australian Industrial Court. The respondent had sought a more qualified injunction. In this Court the respondent did not support the Australian Industrial Court's order, but still sought a more limited order. Much argument was addressed to the question whether the respondent could succeed on the final determination of the application for injunction. In my view (irrespective of any proprietary rights in the respondent), if the appellant's conduct in using the words "Hornsby Building Information Centre", is capable in the circumstances of misleading or deceiving persons into regarding its Centre as associated with the Sydney Building Information Centre, then the Court may under s. 80 (1) enjoin the appellants from the conduct unless precautions are taken to overcome the misleading or deceptive nature of the conduct (for example, by identifying the Centre as the first appellant's own). The requirement that such precautions be taken should be reviewable, in order to meet the practical necessities. The case raises considerations resembling those in Sears, Roebuck & Co. v. Stiffel Co. [11] and Compco Corp. v. Day-Brite Lighting Inc. [12] (in which the national-state legislative roles were opposite to those here). There was much evidence to the effect that the Sydney Building Information Centre was conducting a service primarily of "presenting and disseminating information on past building techniques, modern trends and progress in the building industry, particularly with reference to building materials, building practice and building industry products and their correct use, to professional trade and private users of information, materials and products". It had become accredited with the international Permanent Conference of Building Centres and had received much official recognition for its educational activities and services to the building industry and the public.

(1964) 376 U.S. 225, at pp. 231-233 [11 Law. Ed. 2d 661, at pp. 666-668]. 2. (1964) 376 U.S. 234 [11 Law. Ed. 669].

However, I agree that the Australian Industrial Court was in error in granting the unqualified injunction pending the hearing and its order should be set aside. In my opinion, on the material before the Court, it could have properly granted an interim injunction against using the name unless precautions were taken to overcome any misleading or deceptive effect by identifying the appellant's Centre as unassociated with any other.

In the course of argument, many contentions were canvassed on the interpretation and proper application of the Trade Practices Act. I will express brief conclusions on some of these.

Section 52 which is in Pt V of the Trade Practices Act is not limited or qualified by the heading of the Part "Consumer Protection". The section applies wherever a corporation (or a person in the circumstances mentioned in s. 6) in trade or commerce engages in misleading or deceptive conduct. The words, "trade or commerce", are extremely wide. The conduct of the appellant was obviously in trade or commerce. Conduct is deceptive or misleading if it has a capacity or tendency to mislead or deceive; intention to mislead or deceive is not required. The section is of course not confined to passing-off, although passing-off is a classical example of misleading or deceptive conduct which may be dealt with under these provisions. Where misleading or deceptive conduct relates to confusion between the corporation's products or services and those of another, s. 52 extends to, but is not confined to, conduct which infringes some proprietary right of that other.

grant an injunction restraining a person from engaging in conduct that constitutes or would constitute -

(d) a contravention of a provision of Part IV or V;

(f) aiding, abetting, counselling or procuring a person to contravene such a provision;

(g) inducing, or attempting to induce, a person, whether by threats, promises or otherwise, to contravene such a provision;

(h) being in any way, directly or indirectly, knowingly concerned in or party to, the contravention by a person of such a provision; or

(j) conspiring with others to contravene such a provision.

This remedy may be applied for by anyone, including a person who does not fear being deceived or misled. Indeed, the circumstances would be very unusual where the person seeking an injunction against deceptive or misleading conduct would be apprehensive of being deceived or misled. A trade competitor may claim an injunction, even if its motivation is to prevent the defendant from passing-off its goods or services as those of the claimant.

In the granting of an interim injunction in proceedings such as this, the convenience of the defendant is, of course, relevant, and the public interest is a powerful consideration. The principles to be applied in such cases will differ markedly from those evolved by equity courts in cases concerned with competing private rights and obligations. Some equitable doctrines and practices are grounded on principles of fairness and justice which are applicable generally. Some are so connected with competing private rights that they are quite foreign to the application of s. 80 of the Trade Practices Act in relation to s. 52. The wholesale carry over of such principles concerning the granting of permanent or interlocutory injunctions would frustrate the evolution of principles more appropriate to the Trade Practices Act.

The appeal should be upheld and the order set aside.

I agree with the reasons for judgment prepared by the Chief Justice and have nothing to add.

High Court of Australia Barwick C.J. Stephen, Jacobs, Murphy and Aickin JJ. Hornsby Building Information Centre Pty. Ltd. v Sydney Building Information Centre Ltd. [1978] HCA 11

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