Lawton Pty Ltd v FHMC Pty Ltd

WIGNEY J: 1 The applicant in this proceeding, Lawton Pty Ltd, owns a large commercial building situated on land adjacent to Barwell Avenue, Castle Hill, which is a suburb in north-western Sydney. That building has over the years come to be known as the 'Barwell Centre'. For the last 24 years or so, Lawton has conducted a commercial leasing business from the Barwell Centre. Many of its tenants have been and are associated with the medical profession. Many of the tenants have incorporated, and continue to incorporate, the word 'Barwell' in their business or trading names, and many advertise or promote themselves as being located in the Barwell Centre. 2 The respondent, FHMC Pty Ltd, has been a tenant in the Barwell Centre for a number of years. It has conducted a medical centre business from a suite in the Barwell Centre. That business involves FHMC providing professional services to doctors, mostly general practitioners, who consult patients from rooms within the suite. FHMC has conducted that business using the business or trading name 'Barwell Medical Centre'. 3 The dispute the subject of this interlocutory application has arisen because FHMC is about to vacate the Barwell Centre and relocate its business to nearby premises. Those premises are not located on or in Barwell Avenue and are not associated at all with the Barwell Centre. FHMC proposes, however, to continue to use the business name 'Barwell Medical Centre'. Lawton seeks to restrain FHMC from doing so. 4 Lawton contends, in summary, that some years ago it licenced or permitted FHMC to use that business name pursuant to an oral contract, the terms of which were that FHMC would cease to use the business name if it vacated the Barwell Centre. Lawton also contends that FHMC's continued use of the business name would constitute misleading and deceptive conduct contrary to ss 18 and 29 of The Australian Consumer Law (the ACL - being schedule 2 to the Competition and Consumer Act 2010 (Cth)), and would constitute the tort of passing off. 5 The key issues that arise at this interlocutory stage are, in summary: first, whether Lawton has established a prima facie case for the relief it seeks; and second, whether the balance of convenience favours the grant of an interlocutory injunction pending the final resolution of the dispute.

Facts and evidence 6 The parties each adduced fairly extensive and voluminous affidavit and documentary evidence in support of their respective positions concerning the interlocutory relief sought. Much of the evidence was in a hearsay or 'information and belief' form, as is permitted and fairly typical in the case of interlocutory applications brought at short notice, such as this one. There was no cross-examination of the deponents of the affidavits, as is also customarily the case for such matters. Obviously, some of the evidence will, in due course, be the subject of challenge, elaboration or qualification at the final hearing. 7 It is not possible to refer at length or in detail to all of the evidence, particularly given the urgency involved and the limited time the Court has to decide the matter. Following is a short summary of the facts established by the evidence, at least to a prima facie standard. 8 Lawton has owned the land upon which the Barwell Centre is constructed since 1983. The Barwell Centre itself was constructed in about 1996 or 1997. As already indicated, the Barwell Centre is located on Barwell Avenue in Castle Hill. Barwell Avenue is only a fairly short avenue or street. The Barwell Centre stands on one of only two blocks on the avenue that have commercial street frontages. The other commercial building with a street frontage currently houses a McDonald's restaurant. There are no other streets in north-western Sydney which use the name Barwell. Indeed, there is apparently only one other street in New South Wales which incorporates the word 'Barwell' - Barwell Street in Glenfield, which is in south-western Sydney. That street is a predominantly residential street. 9 Since its construction, the Barwell Centre has featured a prominent external sign displaying the name 'The Barwell Centre'. The tenant directory sign in the lobby of the building has also prominently displayed the name 'The Barwell Centre'. 10 Lawton has conducted a successful commercial leasing business from the Barwell Centre since it was built. Many of the lessees have been or are involved in, or are associated with, the medical or healthcare profession. The tenants include or have included general practitioners, specialist doctors, physiotherapists, psychologists and pharmacists. While there have been and are tenants not involved in the medical profession, it perhaps would not be unfair to characterise the Barwell Centre as a medical complex. 11 One of the suites in the Barwell Centre has, for almost the entire time since construction, been fitted out for use as a medical centre. That suite, suite 16, has a reception desk which, again since the time the centre was constructed, has prominently displayed the name 'Barwell Medical Centre'. Other than for a fairly short space of time between 2008 and 2011, when a tenant vacated the suite but continued to pay rent until its lease ended, suite 16 has been utilised as a medical centre. 12 Each of the tenants who occupied suite 16 for the conduct of a medical centre business used the word 'Barwell' in their names while they occupied the suite. The evidence established, at least to a prima facie standard, that those businesses were permitted or licenced by Lawton to use the word 'Barwell' in their trading names, but only while they occupied the suite. 13 The first tenant of suite 16 operated a medical practice under the name 'Barwell Medical Centre' from 1997 to 2003. The next tenant operated a similar business from about 2003 to 2006 under the name 'Barwell Family Practice'. The front reception desk during that period continued to display the original Barwell Medical Centre sign. Another company leased suite 16 from October 2006 to September 2011. That company continued to operate a medical centre business using the name 'Barwell Family Practice' until about April 2008. At that time, it relocated its business to other commercial premises in Castle Hill, at which point it ceased using a business name which contained the word 'Barwell'. The lease, however, continued on foot until September 2011, even though no business was being conducted from the suite at that time. 14 In September 2008, Lawton registered the business name 'Barwell Medical Centre'. At that point in time, no business was conducting a medical centre business out of suite 16, as the existing tenant had vacated the suite but continued to pay rent. The suite nevertheless continued to be fitted out as a medical centre and the reception desk in the suite continued to display the name 'Barwell Business Centre'. 15 In January 2009, Healthscope Medical Centres Pty Ltd commenced leasing suite 19, the suite adjacent to or nearby suite 16. Healthscope conducted a medical practice business from suite 19 using the rather generic name 'Medical Centre'. It would appear that Healthscope was interested in leasing suite 16 when the existing lease over that suite expired in September 2011. Healthscope were also interested in using the trading or business name 'Barwell Medical Centre' in respect of the conduct of its medical centre business. 16 In September 2009, Lawton's solicitor prepared a draft deed of licence which provided for the grant by Lawton of a "non-exclusive licence" to Healthscope to "use the name Barwell Medical Centre". The draft deed provided that the licence was to terminate "on the date on which [Healthscope] is no longer a tenant of [Lawton] in any part of the medical centre known as the Barwell Medical Centre". 17 It is common ground that the draft deed of licence was never executed. There is, however, evidence that Lawton and Healthscope entered into an oral agreement, the terms of which were, relevantly, similar to the draft deed of licence. 18 The evidence establishes, at least to a prima facie standard, that in October 2009, the directors of Lawton, Mr John Pickford OAM and Mrs Marianne Pickford OAM, had a conversation with Mr John Burns who, at that time, was the 'National Operations Manager - Medical Centres" at Healthscope. That conversation concerned whether Healthscope would execute the draft deed of licence. Mr Burns deposed that the conversation was to the following effect: Mr Burns: The process is quite complex to get Healthscope to enter into a formal written licence. Would you be happy if I were to simply agree on behalf of Healthscope that if we are allowed to use the name, Barwell Medical Centre and you transfer registration of the business name to us, Healthscope will stop using the name if and when it finally leaves the Barwell Centre and will transfer registration of the business name back to you? Both transactions would be at no cost to either party. Would you be happy with my word on that? Mr Pickford: John, we trust you. On the condition that Healthscope will stop using the name when its lease finishes, we will let you use the name. Mr Burns: Then it's a deal. 19 Information and belief evidence from Mr Nigel Pickford, who is Mr and Mrs Pickford's son, indicates that Mr and Mrs Pickford's recollection of the conversation is broadly consistent with Mr Burns' evidence. The evidence is that, while Mr and Mrs Pickford no longer recall the precise words of their conversation with Mr Burns, they "clearly recall the effect was that they agreed to transfer the business name BARWELL MEDICAL CENTRE to Healthscope to use whilst a tenant in the Barwell Centre, on the condition that Healthscope transfer it back to Lawton, at no cost to Lawton, when Healthscope ceased being a tenant at the Barwell Centre at which time Healthscope could no longer use the name". 20 There is also evidence which indicates that the making of an oral contract with Mr and Mrs Pickford the along the lines of that proposed by Mr Burns was authorised by senior management of Healthscope at the time. Mr Burns' evidence was that in about September 2009, before speaking with Mr and Mrs Pickford, he spoke with Mr Andrew Sando who, at the time, was 'Chief Operating Officer - Medical Centres' at Healthscope. Mr Burns says that he discussed the formal deed of licence with Mr Sando. According to Mr Burns, Mr Sando said to him that Healthscope would prefer not to enter into a written agreement with Lawton. Mr Burns then proposed to Mr Sando that he wold orally agree with Mr and Mrs Pickford that if Lawton transferred the Barwell Medical Centre name to Healthscope, Healthscope would agree to transfer it back and cease using that trading name when Healthscope left the Barwell Centre. Mr Burns' evidence was that Mr Sando responded to that proposal by saying something like: "that will work and keeps things simple". 21 It should perhaps be noted in this context that hearsay evidence adduced through FHMC's solicitor suggests that Mr Sando does not recall having any such discussion with Mr Burns. Mr Sando indicated, in a text message exchange with FHMC's solicitor, that he believed that he, Mr Sando, was overseas in September 2009. The fact that Mr Sando may have been overseas at the time the alleged conversation was said to have occurred does not, however, establish that the conversation could not have occurred. It could, for example, have taken place over the telephone. 22 Some months after the discussions between Mr Burns and Mr and Mrs Pickford, Mr Pickford sent a letter to Mr Burns at Healthscope which, broadly speaking, confirmed or restated the terms of the agreement reached during those discussions. The letter, which is on the letterhead of Lawton and dated 25 June 201, stated as follows: We wanted to drop you a short note acknowledging our agreement in October 2009 covering the registration of the business name "Barwell Medical Centre." We just wanted this simple agreement noted for the file. Marlene and I, on behalf of Lawton, agreed to transfer the registration of the name "Barwell Medical Centre" to Healthscope whilst Healthscope was a tenant in the Barwell Centre, Castle Hill. In return for this, together we agreed that if and when Healthscope leaves the Barwell Centre, that Healthscope will transfer the registration of the business name "Barwell Medical Centre" back to Lawton. We hope you are happy with this short note. 23 Mr Burns' evidence is that he recalls having received the letter. Indeed, he recollects that he requested that Mr and Mrs Pickford send him the letter. He does not, however, say why he made that request. He also does not recall if or how he responded to the letter. 24 On 27 October 2009, the registration of the business name 'Barwell Medical Centre' was changed from Lawton to Healthscope. 25 In October 2011, Healthscope leased suite 16 from Lawton and relocated its business from suite 19 to suite 16. By this time, Healthscope was operating the business it conducted in the Barwell Centre under the name Barwell Medical Centre. The lease Healthscope entered into in respect of suite 16 was for a five-year term, but provided for a further five-year term to expire on 30 September 2021. 26 In August 2017, Fullerton Primary Care Pty Ltd acquired all the shares in Healthscope. Healthscope, in due course, changed its name to FHMC. FHMC is now a wholly owned subsidiary of Fullerton Health Medical Centres Pty Ltd. FHMC's evidence suggested that those who were involved in the mechanics of the acquisition on behalf of Fullerton may not have become aware of the letter from Lawton to Healthscope dated 25 June 2010 and that the letter has not been able to be located within FHMC's records. 27 FHMC's solicitor deposed that the change in the ownership of Healthscope in August 2017 constituted a deemed assignment of the lease in respect of suite 16 in the Barwell Centre, which required the consent of Lawton as landlord. It would appear that the process of securing Lawton's consent to the deemed assignment required some negotiation between the parties. There is evidence, albeit information and belief evidence, that in the course of those negotiations Mr and Mrs Pickford spoke with Mr Robert Mooney who, at the time, was a manager at FHMC. During that conversation, the following exchange was said to have occurred: Mrs Pickford: When you leave, you must also stop using the name the Barwell Medical Centre and transfer the registration back to Lawton. Mr Mooney: That's ok - we'll do that - we'll be moving to smaller premises with cheaper rent elsewhere when the lease comes to an end in 2021. The name's of no importance to us. 28 Mr Mooney's evidence was that he could not recall the "exact conversation" with Mr and Mrs Pickford, though he did recall that Mr and Mrs Pickford had told him on a number of occasions that they owned the business name 'Barwell Medical Centre'. Mr Mooney says that he did Mr Mooney said that he did not "acknowledge or respond" to those claims by Mr and Mrs Pickford and that he understood that Healthscope owned the trading name. 29 It would also appear that there were some discussions between Mr and Mrs Pickford and Mr Steven Harvey, who was the managing director at Fullerton. The information and belief evidence suggested that, so far as Mr Harvey can recall, Mr and Mrs Pickford did not tell him that they owned the business name. That said, there is nothing to suggest that there had been any discussions at all between Mr and Mrs Pickford and Mr Harvey during which any issue concerning the ownership business name was raised, or might have been expected to be raised.

The dispute 30 Lawton and FHMC were unable to agree on the terms of any new lease upon the expiry of the existing lease on 30 September 2021. On FHMC's evidence, those negotiations broke down in June 2021. On 4 June 2021, Lawton gave FHMC notice to vacate suite 16 in the Barwell Centre. 31 In August 2021, FHMC secured a lease in respect of premises on Old Northern Road, Castle Hill. Those premises are located about 300 metres from the Barwell Centre. 32 Lawton subsequently became aware not only that FHMC was relocating the business it had been conducting at the Barwell Centre to the premises on Old Northern Road, but that FHMC intended to continue to use the business name Barwell Medical Centre. Lawton's solicitor wrote to FHMC's solicitor on 20 August 2021 and demanded that FHMC desist from using that business name once it departed from the Barwell Centre. That letter apparently did not provoke any response from FHMC's solicitors until 10 September 2021. The delay in responding to the initial correspondence was never completely explained. In any event, the response was to the effect that FHMC would not cease using the Barwell Medical Centre business name. 33 Lawton's solicitor wrote again to FHMC's solicitor on 17 September 2021 and repeated Lawton's demands that FHMC undertake not to continue to use the business name once it departed from the Barwell Centre. 34 Lawton claims, in summary, that FHMC's use of the business name 'Barwell Medical Centre' will, once it vacates the Barwell Centre, constitute a breach of the oral agreement entered into between Mr and Mrs Pickford, on behalf of Lawton, and Mr Burns, on behalf of Healthscope, (now FHMC) in October 2009. As already indicated, a term or condition of that agreement was, in effect, that FHMC's permission or licence to use the name 'Barwell Medical Centre' would cease or terminate upon it vacating the Barwell Centre. 35 Lawton also claims that FHMC's continuing use of the business name from its new premises at Old Northern Road, Castle Hill would constitute misleading and deceptive conduct and therefore contravene ss 18 and 29 of the ACL. Lawton submitted that FHMC's continuing use of the business name in all the circumstances would be likely to mislead or deceive consumers, including patients and potentially other tenants of the Barwell Centre, because they would be likely to think or believe that: FHMC's business was or remained somehow associated with the Barwell Centre; the use of the business name 'Barwell Medical Centre' was permitted by Lawton; FHMC was licenced by Lawton to use that name. 36 Finally, Lawton contended that FHMC's continuing use of the business name would constitute the tort of passing off. It submitted that it had built significant goodwill in its commercial leasing business at the Barwell Centre and that an integral component of that goodwill was the name 'The Barwell Centre' and the associated or connected name 'Barwell Medical Centre'. Lawton's case is that it had permitted or licenced FHMC to use that business name, but only while it was a tenant at the Barwell Centre. That permission or licence is accordingly about to cease. The business name is, and remains, an important component of Lawton's goodwill. FHMC's continued use of the name in those circumstances would involve a false representation to consumers that FHMC's business is associated with Lawton and the Barwell Centre, and would be to the prejudice of Lawton's business reputation and goodwill. 37 For its part, FHMC disputed that Lawton had established a prima facie case in respect of any of the three alleged causes of action. 38 As for the contract claim, FHMC relied on the fact that Healthscope did not execute the deed of licence and that there was no contemporaneous record of the alleged oral agreement. FHMC also submitted that the letter dated 25 June 2010 records a "slightly different" agreement to that deposed to by Mr Burns and that there were other doubts about the provenance of that letter, including that a copy of it was not located within Healthscope's records. Perhaps more substantively, FHMC submitted that there could be no licence agreement because there was, so it was submitted, nothing for Lawton to licence. That was said to be because Lawton had never used the business name 'Barwell Medical Centre' itself and the name was not being used at the time of the alleged agreement. 39 As for the misleading and deceptive conduct case, FHMC submitted that there is no basis to conclude that any consumer would assume that, because it continued to use the business name 'Barwell Medical Centre', FHMC was somehow associated with the Barwell Centre or Lawton. In FHMC's submission, the mere use of the word 'Barwell' in the trading name would not lead consumers to assume or conclude that the business was associated with Lawton or the Barwell Centre because the word 'Barwell' is just descriptive of a location on or near Barwell Avenue. 40 Finally, in relation to the passing off claim, FHMC submitted that Lawton had no reputation in relation to the name 'Barwell Medical Centre'. Indeed, FHMC went so far as to submit that the evidence concerning Lawton's reputation in respect of the name 'The Barwell Centre' was unpersuasive and merely conclusory. In FHM's submission, even if Lawton had a good reputation for property management and quality tenants, that that had nothing to do with the name 'Barwell Medical Centre'. 41 FHMC also submitted, as it had in the context of the misleading and deceptive conduct case, that the evidence did not support even a prima facie finding of a representation to the effect that FHMC's business, conducted out of the Old Northern Road premises was, by virtue of any continuing use of the business name 'Barwell Medical Centre', somehow associated with Lawton and the Barwell Centre.

Relevant principles 42 The applicable principles in respect of interlocutory injunctions are settled and well known, and accordingly do not need to be rehearsed. They were addressed at length in the judgment of the Full Court in Samsung Electronics Co Limited v Apple Inc (2011) 217 FCR 238; [2011] FCAFC 156 (Samsung v Apple). The principles may be applied as follows. 43 In order to secure an interlocutory injunction the plaintiff/applicant must show: first, that there is a serious question to be tried or that the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief; second, that he will suffer irreparable injury for which damages will not be an adequate compensation unless an injunction is granted; and third, that the balance of convenience favours the granting of an injunction: Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153 (Mason ACJ); Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199; [2001] HCA 63 at [13] (Gleeson CJ); Samsung v Apple at [53]. 44 Where interlocutory relief is sought in respect of private rights, it is necessary to identify the legal or equitable rights which are to be determined at the trial in respect of which final relief is sought: Lenah Game Meats at [8]-[21], [59]-[61], [86]-[92], [98]-[100], [105]; Samsung v Apple at [52]. 45 Where the merits and question of convenience are fairly evenly balanced, there will be no injustice in requiring the party seeking relief to demonstrate good prospects of success before imposing almost certain prejudice on the other side: Samsung v Apple at [49]-[51]. 46 The Court's task of assessing the balance of convenience and justice requires the Court to determine whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted: Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 at 622-623; Samsung v Apple at [55]; 47 The question of whether or not the plaintiff must show that he will suffer irreparable harm if no injunction is granted is one of the matters which will ordinarily need to be addressed in the Court's consideration of the balance of convenience and justice. That question involves an assessment by the Court as to whether the plaintiff would, in all material respects, be in as good a position if he were confined to his damages remedy as he would be in if an injunction were granted. This matter should not be elevated into a separate and antecedent inquiry, but rather is best left to be considered as part of the Court's assessment of the balance of convenience and justice: Samsung v Apple at [61]-[63]. 48 The resolution of the question of where the balance of convenience and justice lies requires the Court to exercise a discretion. In exercising that discretion, the Court is required to assess and compare prejudice and hardship likely to be suffered by the defendant, third persons and the public generally if an injunction is granted with that which is likely to be suffered by the plaintiff if no injunction is granted. In determining this question, the Court must make an assessment of the likelihood that the final relief (as granted) will adequately compensate the plaintiff for the continuing breaches which will have occurred between the date of the interlocutory hearing and the date when final relief might be expected to be granted: Samsung v Apple at [66]. 49 The question of whether there is a serious question to be tried or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties' substantive cases will often be an important consideration to be weighed in the balance: Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (2009) 81 IPR 339; [2009] FCA 595 at [15]; Samsung v Apple at [67]. 50 It may also be necessary to consider and evaluate the impact that the grant or refusal of an injunction will have or is likely to have on third persons and the public generally. The weight to be given to the interests of third persons and the public will depend on the circumstances of the case, though hardship visited on third persons and the public generally will rarely be decisive: Patrick Stevedores Operations No 2 Pty Ltd v Maritime Union of Australia (1998) 195 CLR 1 at [65]-[66]; Samsung v Apple at [69]. 51 Where the expressions "prima facie case" and the "balance of convenience" are used in this judgment, they are used as shorthand expressions for the principles just outlined.

A prima facie case? 52 I am satisfied that Lawton has made out a prima facie case in respect of each of the causes of action against FHMC. 53 There is clearly evidence which is capable of establishing that Lawton and FHMC, then Healthscope, entered into an oral agreement whereby Lawton permitted or licenced Healthscope to use the business name 'Barwell Medical Centre', but only for so long as it was a tenant in the Barwell Centre. Lawton adduced evidence of both sides of the conversation which gave rise to the agreement. The evidence concerning the terms of the conversation and the terms of the agreement was broadly consistent. Moreover, the terms of the conversation and the oral agreement were broadly corroborated and confirmed by the letter that Mr Pickford sent to Mr Burns on 25 June 2010. 54 While it may be accepted that the evidence concerning the oral agreement may well be challenged at the final hearing, and that there may be issues concerning the cogency or reliability of the evidence, at this prima facie stage the evidence concerning the agreement would appear to be fairly strong. There is at this point at least no persuasive reason to discount or doubt that evidence. 55 I also do not accept, at least at this prima facie stage, that there could be no agreement because Lawton had nothing to licence, as was contended by FHMC. At the time of the agreement, the business name 'Barwell Medical Centre' was closely associated with Lawton's leasing businesses conducted out of, or in respect of, the Barwell Centre. The business name was, in those circumstances, prima facie a component of Lawton's goodwill. Medical centre businesses had leased suite 16 using that business name, or business names similar to it, with Lawton's permission or licence for some time. The business name was registered in Lawton's name at the time of the agreement. There is authority for the proposition that a business name, which is a component of a business' goodwill, can be the subject of a licence agreement: see J. H. Coles Proprietary Limited v Need (1933) 49 CLR 499. 56 I am also persuaded that Lawton has at least a prima facie case that, if FHMC continues to use the name 'Barwell Medical Centre' in the conduct of its business from its new Old North Road premises, it will engage in misleading and deceptive conduct in contravention of ss 18 and 29 of the ACL. That is because the continuing use of the name would be likely to convey to consumers, including existing and prospective patients in the local area, that FHMC's business is somehow associated with the Barwell Centre or Lawton. 57 While it may be true that the Barwell Centre is named as such because it is on Barwell Avenue, there could be little doubt, at least at the prima facie stage, that the word 'Barwell', when used in the context of a business or trading name, is likely to be associated with the Barwell Centre and thereby Lawton. The Barwell Centre is one of the few commercial buildings in the street, and has been readily recognisable as such with that name for about 25 years. Local consumers are likely to conclude or assume that a business which uses the name 'Barwell' in its business or trading name is associated with the Barwell Centre, even if it may not be physically located within that building. That inference is even stronger in the case of the trading name 'Barwell Medical Centre', which employs both the words 'Barwell' and 'Centre', and is a name which has been used by or associated with medical centre businesses operating in the Barwell Centre for many years. 58 I am also persuaded that Lawton has established a prima facie case in passing off, or at least threatened passing off, for the reasons that have effectively already been given. The evidence has established, at least to a prima facie standard, that Lawton has established a good reputation in respect of its conduct of the leasing business at the Barwell Centre, and that an important component of its goodwill, in that respect, is the business name 'The Barwell Centre' and the closely associated business name 'Barwell Medical Centre'. 59 As for the name 'Barwell Medical Centre', that name has, for almost 25 years, been closely associated with the medical centre business which has been conducted out of suite 16 in the Barwell Centre. Lawton has permitted all licenced businesses to use that business name when operating out of that suite. Up to this point, the evidence suggests that no business in the Barwell Centre that has used that name, or a similar name, has continued to use the name once they have vacated the centre. The name 'Barwell Medical Centre' is closely associated with the name the 'Barwell Centre', which is an important component of Lawton's goodwill. 60 In those circumstances, FHMC's continuing use of the business name when conducting its business at its new premises would be likely to misrepresent to the public, and in particular to local consumers, that its business retains an association with the Barwell Centre and Lawton. It is, in all the circumstances, also open to conclude or infer, at least at the prima facie standard, that the misrepresentation arising from FHMC's continuing use of the business name would result in potentially irreparable or incompensatable damage to Lawton's goodwill. Amongst other things, it would diminish or erode the goodwill attaching to the name 'Barwell Medical Centre' because that name would come to be associated with a business operating outside the Barwell Centre which is not connected in any way with the Barwell Centre or Lawton. That would, in turn, diminish the value of any lease in respect of suite 16 in the Barwell Centre, being the suite in respect of which the name is most closely associated. 61 This case is, as Lawton submitted, somewhat similar to the case of J. H. Coles, referred to earlier. In that case, J. H. Coles carried on business as the owner of a warehouse and multiple shops dealing in "fancy goods and varieties in and near Melbourne". It carried on that business under the trading names "J. H. Coles' Stores" and "J. H. Coles' 3d., 6d. and 1s. Stores". It entered into an agreement with Need, the respondent in that case, pursuant to which Need leased a shop in which it conducted a business similar to J. H. Coles' business and using J. H. Coles' trading names. For reasons it is unnecessary to go into, that agreement was later terminated, and J. H. Coles brought an action to restrain Need from continuing to use its trade name. The Privy Council upheld the findings and orders of the trial judge and High Court, granting that relief. The Privy Council concluded as follows (at 503): …all the right that the respondent ever had in regard to the user of the appellant's trade names was a revocable licence to use these names so long as the business arrangement continued between the appellant and the respondent. From these conclusions, it follows that prima facie the appellant is entitled on well-recognized principles to an order restraining the respondent from the unauthorized use of the appellant's trade names after the licence was revoked, since the continuance thereafter of such user necessarily involves a passing off by the respondent of his business as being a business for the sale of the appellant's goods and as being a business in which the appellant has at least an interest, and in this way there would be practised a deception of the public to the prejudice of the appellant's business reputation and goodwill. 62 The same could be said here. For essentially the same reasons, Lawton has at least a prima facie case that FHMC should be restrained from continuing to use the business or trading name 'Barwell Medical Centre' once it vacates the Barwell Centre.

Irreparable damage 63 It is not entirely clear on the authorities whether the requirement of irreparable damage is a separate enquiry to the balance of convenience enquiry or whether it ought to be considered in the context of the balance of convenience. The parties essentially dealt with it as a part of the enquiry into the balance of convenience. I propose to do the same.

Balance of convenience 64 As is often the case, there are some considerations which weigh towards the grant of an interlocutory injunction, as sought by Lawton, and others which weigh against the grant of such relief. 65 The considerations which tend to weigh in favour of the relief are as follows. 66 First, in my view, Lawton has established a fairly strong prima facie case for the relief sought, particularly in respect of its contract case. 67 Second, if an injunction is not granted, Lawton will likely suffer loss and damage to its goodwill, which, if it ultimately succeeds in obtaining final relief, will be difficult to quantify and even more difficult to adequately compensate. That loss or damage, as has already been discussed at some length, would include the diminution or erosion of Lawton's goodwill and reputation, in particular that component of its goodwill relating to the trading or business names the 'Barwell Centre' and 'Barwell Medical Centre'. I do not accept FHMC's submission that Lawton's evidence concerning the damage to its goodwill in that respect was weak or unconvincing. 68 Third, if an injunction is not granted, third parties may also suffer some loss, damage or inconvenience. That is particularly the case in respect of the new lessee of suite 16 in the Barwell Centre. While it would appear that the new lessee does not propose to use the business name 'Barwell Medical Centre', if FHMC's business continues to use that name from the premises in Old Northern Road, the new tenant will lose some of the benefit of being closely associated with the Barwell Centre, as some of that benefit would effectively be acquired by FHMC. 69 Fourth, FHMC's continuing use of the business name from its new premises is likely to cause some confusion amongst members of the public, including prospective patients and other lease holders in the Barwell Centre. As has already been discussed at some length, patients and prospective patients wold be likely to come to associate FHMC's business with the Barwell Centre. Patients who might otherwise attend, or intend to attend, the medical centre in the Barwell Centre, may inadvertently end up at FHMC's medical centre in Old North Road on that basis. 70 Fifth, at least on one view, the grant of an injunction will preserve the status quo - the status quo being that the only businesses in the local area which use business names that incorporate the word 'Barwell', including businesses that use the trading name 'Barwell Medical Centre', are those that operate in the Barwell Centre and use the name with the permission or licence of Lawton. That has been the case for about the last 25 years. The preservation of that status quo will not only protect Lawton's goodwill, but will also avoid any confusion and collateral loss to third parties. 71 The considerations that tend to weigh against the grant of interlocutory relief are as follows. 72 First, FHMC has been using the business name 'Barwell Medical Centre' for some years now. Requiring it to cease using that name will undoubtedly result in a degree of inconvenience and interruption to its business. In that regard, however, FHMC is, at least in some respects, in no different a position to the defendant, Need, in the case of J. H. Coles referred to earlier. FHMC will also undoubtedly suffer some inconvenience and interruption to its business as a result of its relocation generally. It is difficult to accept that any additional inconvenience from having to cease to use the trading name 'Barwell Medical Centre' would be irremediable or incompensatable, if it comes to pass that Lawton fails to secure final relief. 73 It is not possible in the limited time available to address all of the administrative complications and inconvenience that FHMC claimed that it will have to deal with if it is required to cease using the business name 'Barwell Medical Centre' at this late stage. It must be said, however, that I have the distinct impression that at least some of the complications referred to tended to be somewhat overstated in the evidence of FHMC. I doubt that the fact that FHMC will be required to update its details with external service providers and government agencies is likely to present insurmountable hurdles for FHMC or give rise to substantial business interruption or loss. 74 Moreover, there is at least some merit in Lawton's contention that FHMC was, at least to some extent, the author of many of the problems which may arise if it is required, at this late stage, to cease using the 'Barwell Medical Centre' trading name: cf Samsung v Apple at [191]-[199]; Apotex Pty Ltd v Cipla Limited [2017] FCA 1627 at [48]; Australian Insurance Holdings Pty Ltd v Chan [2010] FCA 781 at [117]. That is because FHMC has known since at least August 2021, if not before, that there was at least a dispute or issue concerning its continuing use of the trading name 'Barwell Medical Centre', yet it did not change its course. Many of the problems about which it now complains could have been readily resolved in the month or so since it became aware that it may need to cease using that business name. FHMC could readily have taken steps to inform its patients and others with whom it dealt, including relevant government agencies, that it was not only relocating, but that it would cease to use the business name associated with its previous landlord. That would have minimised any relevant inconvenience or interruption. 75 Second, it may be accepted that requiring FHMC to cease using the business name 'Barwell Medical Centre' at this late stage may cause some confusion and inconvenience to third parties, in particular, doctors associated with FHMC's business as well as their patients. There is, for example, a possibility that existing patients may search for the contact details of their doctor on the internet using the trading name 'Barwell Medical Centre'. That may result in some confusion if FHMC is required to cease using that name. The trading name is also linked to certain booking platforms used by FHMC's business. Those platforms will need to be updated. Some confusion and inconvenience may result in the meantime. The same can be said in respect of the various social media platforms used by FHMC which currently refer to the trading name. It is also said that patients' records are currently stored on external databases that are linked to the trading name. There may be some difficulties in accessing those patient records if the databases are required to be updated with a new trading name. 76 Once again, however, I had the distinct impression that some of the confusion and inconvenience that was said to be likely to ensue if FHMC is required to cease using the name 'Barwell Medical Centre' tended to be overstated in FHMC's evidence and submissions. As for the patients, FHMC has, no doubt, already taken or is taking steps to advise its patients and others with whom it deals that it is relocating. If an injunction is granted, FHMC will also have to advise them that it will no longer be using the trading name 'Barwell Medical Centre'. While that may cause some initial confusion, I doubt that the confusion and inconvenience will be significant or will persist in the medium to long term. As for the individual doctors who are associated with FHMC's business, it may be inferred that they ultimately agreed, or went along with, FHMC's decision to relocate and the disruption and inconvenience that may necessarily flow from it. It is doubtful that any additional disruption and inconvenience which will result if FHMC is required to cease using the 'Barwell Medical Centre' business name will be significant. The suggestion that they may suffer a loss in income is somewhat speculative in all the circumstances. It is difficult to accept that many patients are likely to change their doctor simply because the business name of the practice changes. 77 Third, it may be accepted that FHMC has, in recent months at least, incurred some marketing and administrative costs associated with its relocation and its intended continuing use of the 'Barwell Medical Centre' business name. The extent of those costs and expenses, however, is not great and can readily be quantified. FHMC can be compensated for incurring those expenses if Lawton fails at the final hearing. Lawton has offered to, and will be required to provide, an undertaking as to damages if the interlocutory injunction is granted. There is no reason to believe that it will be in no position to compensate FHMC if that undertaking is ultimately called on. 78 The balance of convenience in a case such as this often involves difficult judgment calls. Reasonable minds may undoubtedly differ as to which way the balance tips. The exercise is, ultimately, an evaluative one and involves a degree of discretion. The exercise is particularly difficult in this case because it has come down to the wire, as it were. FHMC is relocating its business as early as next week and perhaps within a few days. Both sides pointed the finger at the other as being the cause of this rather unfortunate circumstance. To a certain extent, both sides bear some culpability in bringing this matter to the Court at such a late stage. 79 Be that as it may, in all the circumstances, I consider that the balance of convenience ultimately tips in favour of granting an injunction. I am satisfied in particular that the inconvenience or injury which Lawton would be likely to suffer if an injunction were refused outweighs any injury or inconvenience that FHMC or any relevant third party or the public generally will or may suffer if that injunction is granted. CONCLUSION AND DISPOSITION 80 Lawton has made out a prima facie case which would entitle it to restrain FHMC from continuing to use the trading or business name 'Barwell Medical Centre' once it vacates the Barwell Centre. 81 The balance of convenience also favours the grant of an interlocutory injunction restraining FHMC from doing so. 82 The terms of the injunction sought by Lawton may need to be adjusted given that FHMC may be vacating the premises within the next day or so and will almost immediately commence trading from its new premises. The terms of the injunction must provide FHMC with some leeway given that, in the particular circumstances of this case, ceasing to use a business name may be easier said than done. I will hear further from counsel as to the appropriate terms of the injunction before making any orders. 83 Lawton is entitled to its costs in respect of the interlocutory application. I certify that the preceding righty-three (83) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Wigney .