Sydney Markets Limited v Sydney Flower Market Pty Limited

Mr Stevens and the respondent 5 Mr Stevens' father carried on business as a florist under the name "Town Hall Florist" in a shop at Town Hall Station (from 1967), in a shop on Wynyard ramp (from 1972), and in a shop at North Sydney Station (from 1974). In 1988 Mr Stevens took over management of his father's businesses. He has been involved in the flower industry for most, if not all of his adult life. 6 In 1992 Mr Stevens opened a retail florist store in Darling Park called "Flowers by Loew". In 1995 he started a company and business called "Roses Only and Lush Flowers". The business consists of the operation of retail florist stores at various locations. 7 Mr Stevens also controlled a company called Sapura Pty Ltd ("Sapura"). In October 1996 Sapura purchased a building at 465 Kent Street, Sydney. Around this time, Mr Stevens said that he decided to establish a "new business that offered flowers for sale with no fancy overheads similar to a local suburban fruit market, but a store that only sold flowers". 8 On 2 December 1996, in pursuance of that objective, Sapura lodged an application for registration of the trade mark "Sydney Flower Market", and an application for the registration of the business name "Sydney Flower Market". The business name was registered on 6 December 1996. 9 Mr Nati, a flower grower, gave evidence that in mid-late 1996 there was "talk" at the markets of the possibility that the government might privatise the markets. An issue of a magazine called "Flower Link" for November 1996 referred to the fact that the Sydney Markets were to be privatised. Mr Stevens denied that he knew in 1996 that SMA was to be privatised. He was an infrequent reader of "Flower Link", and said that he did not see the November issue at the time. The precise significance of whether Mr Stevens did or did not know of this "market talk" did not emerge. 10 In cross-examination of Mr Stevens (at T 138) the following appears: "And you applied for the trademark and the business name in the name of a company that was not trading, that's right, isn't it? --- Yes. And the reason you did that was, you thought that owning that name would be valuable to you, that company, in one of two ways. You did it because you thought it would be valuable to the company, is that right and I want to suggest the ways in a minute? --- No, I don't agree with you. I don't understand the two ways that you're referring to. Well, one of the two ways were that you would have a valuable name that people might think was connected if you used it with the markets, the flower market at Flemington, do you agree with that? --- No, I don't agree with that. Alternatively, you might have something valuable that at a later date you might be able to sell to the Sydney Flower Market? --- No, I don't agree with that either." 11 Mr Stevens' explanation for the selection of the name "Sydney Flower Market" was that the words "Flower Market" were intended to signify that it was a business where flowers would be cheap to buy, rather than one which was gift oriented. The business was to be carried on in Sydney, hence "Sydney Flower Market". He said that it did not cross his mind that the words "Sydney Flower Market" might signify to some people the flower market at Flemington. He knew the applicant's market as "Flemington Flower Markets" or "the flower market at Flemington". If he had been aware that the flower market conducted by the applicant (and its predecessor SMA) had been known and referred to as "Sydney Flower Market" as is now claimed, Mr Stevens says that he would not have commenced and developed a business under that name. 12 The trade mark search report for the respondent refers to the sale of flowers both by wholesale and retail. Mr Stevens did not intend to resell to other florists, but he did intend to sell in volumes consisting of a multitude of bunches of flowers for "families or brides or parties" if he could. It was in the sense of wholesale to the public that the term wholesale was intended. 13 The Letter of Demand written by the respondent's solicitors on 17 February 1998 includes the following: "5 When SFM decided to lodge a trade mark application for 'Sydney Flower Market', it retained consultants to carry out an extensive Australia wide search in October and November 1996, which search indicated: 5.1 No record of 'Sydney Flower Market' being used by or registered to the Authority; 5.2 The Authority had trade marks or trade mark applications for the following: (a) Australia's Flower Market; (b) National Flower Market;" In cross-examination, Mr Stevens said that he gave instructions for the business names "Sydney Flower Market" and "Kent Street Flower Market" to be searched. He disagreed with the proposition that in 1996 he instructed his attorneys or solicitors to see what trade marks the SMA had applied for, especially in relation to flowers. I do not accept this evidence. A fair inference from the passage in the letter quoted above is that the consultants retained by Mr Stevens conducted searches in October and November 1996 at his request, in order to ascertain whether SMA had registered the business name "Sydney Flower Market" or made applications for registration of that mark as a trade mark. This indicates that Mr Stevens was at least alive to the possibility that SMA might have made applications with respect to "Sydney Flower Market".

465 Kent Street 14 The business name search for "Sydney Flower Market" gives 465 Kent Street, Sydney as being the first place at which that business was carried on by Sydney Flower Market Pty Ltd. The start date is given as 06 December 1996. The cease date is given as 01 April 1997. 15 Mr Stevens exhibits a photograph of the exterior of the Kent Street premises which he says was taken in or about December 1996. That photograph shows that the glass window had a sign, apparently sprayed upon it, to the following effect: 16 As the sign refers to Christmas specials, I accept that it was placed on the window of the Kent Street premises in about December 1996. It was removed "very early in 1997", "possibly February/March" 1997, but Mr Stevens was not sure when. The words "Christmas specials" may have been wiped off before the sign was entirely removed. 17 Paragraph 19 of Mr Stevens' affidavit of 5 September 2000 includes the following: "From December 1996 to April 1997, the respondent sold flowers under the name "Sydney Flower Market" from its premises at 465-467 Kent Street, Sydney." 18 The tax return for Sapura for 30 June 1997 (Exhibit J) indicates that its main business activity in that financial year was that of "property investor", and its only income derived during that year was from rent received. The annual return for that financial year asserts that the "company has never traded" (Exhibit H). 19 In cross-examination of Mr Stevens at T 124 the following appears: "Would you agree that the effect you have attempted to give in your affidavit is that it is the respondent itself formerly Sapura, now Sydney Flower Market Pty Ltd, that has done all the various acts you refer to in this affidavit? --- Yes." 20 In fact, at least until 1 July 1998, it was Town Hall Florists Pty Ltd, another company controlled by Mr Stevens, which carried on any business which was conducted under the name "Sydney Flower Market". It was not until 24 December 1998 that the respondent acquired a bank account, and it was not until 24 December 1998 that the respondent itself began to receive the proceeds of sale of flowers. 21 It was not squarely put to Mr Stevens that he set out to deceive when he referred in his affidavit to actions having been taken by the respondent, which were in fact taken by Town Hall Florists Pty Ltd. Had that proposition been squarely put to him he might have responded that the true position had been disclosed in the Letter of Demand sent by his solicitors on 17 February 1998. The passage from the affidavit which I have quoted above at par 17, and other similar passages, are not an accurate statement of the facts. But I am not satisfied that this inaccuracy was part of a deliberate attempt to conceal the true facts, as those facts had been exposed in the earlier Letter of Demand. Rather, Mr Stevens simply attributed to the respondent anything done by or in relation to "Sydney Flower Markets" at the instigation of Mr Stevens, as it was the respondent which was the proprietor of that business name.

Wynyard Station 22 Paragraph 23 of Mr Stevens' affidavit of 5 September 2000 includes the following: "23 Since in or about February 1997, the respondent has traded from Shop G27 on the Wynyard Ramp at 301 George Street, Sydney. This store has had 'Sydney Flower Market' signage since in or about February 1997." (emphasis added) The only photograph of the signage on the Wynyard ramp store tendered in evidence is one which was taken in 2000. 23 The applicant submits that this evidence is untrue. The business name search earlier referred to records the start date of the business at shop G27 as being 1 June 1997, with the cease date of 4 November 1999. A letter from the respondent's solicitors of 9 May 2000 (Exhibit F) states: "Since January 1998, the respondent/cross-claimant has also operated a retail outlet from shop G27 on Wynyard Ramp at 301 George Street, Sydney." (emphasis added) The 1998 Yellow Pages phone book (entries for which were lodged on about 30 August 1997) contains an entry for Sydney Flower Market in the section headed "Florists-W'sale", but the only address given with respect to that entry is "Town Hall Arc. Sydney". The corresponding entry in the 1999 phone book also includes a reference to "Wynyard Ramp". 24 Mr Stevens asserts that there was a "very basic sign" when he started at Wynyard in February 1997. The reference in the solicitor's letter to which I have referred was probably to the "more stylised version" of the sign which he says was erected around about January 1998. There was some evidence from Mr Stevens that in 1997 he traded at Wynyard under the names "Sydney Flower Market" and "Town Hall Florist", because the business had been conducted under the name "Town Hall Florist" for quite a few years. 25 The Letter of Demand sent by solicitors acting for the respondent on 17 February 1998 referred to earlier, states that Town Hall Florists Pty Ltd (with the agreement of and in conjunction with Sydney Flower Market Pty Ltd): "has operated the following retail/wholesale flower operations as 'Sydney Flower Market' since at least December 1996 at the following locations ..." followed by a reference to the Kent Street premises, and Shop 22A Town Hall Arcade. There is no reference to the Wynyard premises. I conclude that signage for Sydney Flower Market was not placed on the Wynyard shop until some time after 17 February 1998, but probably before December 1998, or even before 30 August 1998 being the likely closing date for entries in the 1999 Yellow Pages of the telephone book. 26 On 5 February 1999 Mr Stevens made a statutory declaration in connection with his trade mark application designed to establish use of the mark. The declaration asserts that the mark is "prominently displayed at the applicant's place of business" which is given as Shop 22A Town Hall Arcade. There is no reference to the Wynyard premises. But nor is there any reference to the Kent Street premises. I do not think that I should infer from this omission that business at the Wynyard shop was not conducted under the name Sydney Flower Market until after 5 February 1999, having regard to the entry in the phone book to which I earlier referred.

Shop 22A Town Hall Arcade 27 These premises were leased by Town Hall Florists Pty Ltd. Paragraph 22 of Mr Stevens' affidavit of 5 September 2000 asserts that signage for "Sydney Flower Market" was installed at Shop 22A Town Hall Arcade in or about April 1997. A letter from the Anglican Church to Town Hall Florist Pty Ltd of 6 March 1997 confirms that the Church has no objection to art work for a new neon sign, viz Sydney Flower Market. A letter of 15 July 1997 from the Church confirms that James Stevens and Emmanuel Pizanis have been trading from Shop 22A as "Sydney Flower Market" since 1 April 1997. I am satisfied that since about April 1997 business has been carried on at Shop 22A which displayed the signage "Sydney Flower Market" until the shop was closed in November 1999, and the retail business consolidated into Shop 1 - Town Hall Station.

Shop 1 - Town Hall Station 28 Flowers have also been sold from Shop 1 in the Town Hall Station since about April 1997. The business at those premises was carried on under the name "Town Hall Florist" until signage for Sydney Flower Market was erected in about June 2000. Mr Stevens says that orders executed at the shop since April 1997 have been packaged with a Sydney Flower Market label. Since April 1997 the telephone has been answered: "Sydney Flower Market".

SMA activity to May 1997 29 On 9 January 1997 a progress report on the SMA corporate plan 1996-1998 was prepared with respect to the period 1 July 1996 to 31 December 1996. That plan identified as one of the promotion strategies: "Identify 'Sydney Markets' as the brand name, register and establish a corporate policy for use of logo and investigate possibility of new logo." (emphasis added) The action taken is recorded as being that: "Sydney Markets has been registered as a business name and an application has been made to register it as a trade mark. A new logo is being developed". 30 On 19 February 1997 a meeting was held between the SMA and the NSW Flower Growers Group. The minutes of that meeting include the following: "7 FLOWER MARKET TRADING NAME It was mentioned that the Authority had registered the name 'Australian Flower Market' and 'National Flower Centre' as the trading name for the flower market. It was decided that the Sydney Flower Market would be an appropriate name and steps should be taken to register this name." (emphasis added) 31 On 3 March 1997 heads of agreement for the sale of SMA business to Sydney Markets Limited ("SML") were entered into. SML had been incorporated on 21 January 1997. The heads of agreement covered intellectual property, made specific provision in relation to the mark "Paddy's Market", but made no specific reference to "Sydney Markets", or to "Sydney Flower Market". 32 "Flower Link" is a monthly publication of the cut flower industry. The issue for 1 April 1997 contained the following comment in a column called "Flora's column": "I hear a rumour that an enterprising businessman has taken a trade mark on the name Sydney Flower Market. We all think of the building at Flemington Markets, known as 'F' Shed, as the Sydney Flower Market. Apparently, the Sydney Market Authority overlooked [the] fact that it is only the Flemington Flower Market although it is implied to be Sydney's Flower Market." 33 The Sydney Markets Gazette, Autumn 1997 edition, which according to the chronologies supplied to me by the parties is dated April 1997 includes the following: "SYDNEY MARKETS NOT FLEMINGTON MARKETS We are now called the 'Sydney Markets'. When changing your stationery in the future, use the new name: SYDNEY MARKETS NSW 2129" 34 Notwithstanding that advice, in about May 1997 SMA published a tour information booklet which described the markets as the "Flemington Markets" and which contained numerous reference to the markets under that name. It also included the following: "Flower Market (F) is located at the western end of Flemington Markets and wholesales cut flowers and potted plants. There are 120 stands for growers and agents." 35 On 1 May 1997 the name "Sydney Flower Market" and the letter "F" was painted on the F shed at Flemington Markets. Further signwriting to like effect took place in the period up to 13 May 1997. Mr Stevens accepted, as must obviously be the case, that it is likely that he would have seen the words "Sydney Flower Market" on the shed within a day or so of their being painted on the shed.

SMA becomes aware of the respondent's business The events of May 1997 36 On or prior to 7 May 1997 Mr Stevens put in place arrangements to advertise the Sydney Flower Market on radio station 2UE. On 12 May 1997 the following advertisement was broadcast: "Whether it's ten bunches of flowers or ten thousand, the Sydney Flower Market in the Town Hall Arcade can supply all your wholesale fresh flower needs ... any flower, any quantity, any time ... when you need wholesale flowers, call the Sydney Flower Market on 9267 9890." According to a notation on the script, broadcasting of this advertisement finished on 20 June 1997. The advertisement was run 36 times during the month of May 1997 and 35 times in June 1997. Mr Stevens did not accept that this advertisement was initiated after he saw the signwriting on Shed F at Flemington. He said that the initiative for the advertisement was Mothers' Day, which was only a few days away. 37 This advertisement came to the attention of Ms Dodd, a consultant to SMA from September 1988 to December 1999. She visited the Town Hall Arcade, but the only flower shop that she encountered was one signed "Town Hall Florists". It seems that she visited Shop 1 at the Town Hall Station, but did not visit Shop 22A in the Town Hall Arcade. Ms Dodd said that she was not aware of any other use of the name by the respondent until November 1999. She assumed that the respondent had ceased to trade. 38 On 12 May 1997 a meeting of the Flower Growers Group of NSW was held. Mr Nati and Mr Oliveri were amongst the persons present at that meeting. The minutes of the meeting include the following: "Sydney Flower Market - Discussion was held in respect of the registration of the Sydney Flower Market by an outside third party and proposed by Tony Basil and seconded by John Oliveri to write to the authority to request the Sydney Market Authority to undertake and do all things necessary to secure the name for the market and/or through the registrar Trade Market of the Sydney Flower Markets. Motion passed unanimously." Mr Oliveri knew at that time that Mr Stevens or his company was selling cut flowers under the name "Sydney Flower Market" at Town Hall. 39 On 15 May 1997 the Flower Growers Group of NSW wrote to SMA (Exhibit B). The letter stated that recently the Committee of the association became aware of the fact that "Sydney Flower Market" had been registered by a participant in the market without knowledge of the industry. The letter continued: "We wish to place on the record that F shed at Flemington Markets has always been known as the Sydney Flower Market and we find it not only an insult but an attempt to take the goodwill which has been developed by Sydney Flower Market and funnel it into the hands of a private user." The letter requested that SMA's "attention be directed to the registration of the 'Sydney Flower Market' prior to the commencement of trading of the third party who has sought to register the name". 40 Mr Nati said in evidence that he did not agree with the section of the letter which I have quoted. He said that on an interstate level "I dare say it would be referred to as the Sydney Flower Market, just like the Melbourne Flower Market, regardless of its name" but it was not referred to as the Sydney Flower Market within the "Sydney Group": "... coming from Sydney we just referred to it as 'the markets' going to Flemington Markets." 41 The paper prepared for the board meeting of SMA on 20 May 1997 (Exhibit C) is as follows: "FLOWER MARKET NAME In response to the Melbourne Market Authority naming their new flower market the 'National Flower Centre', the Board at its January 1996 meeting sought registration of the following trade marks:- (a) 'Australia's Flower Market' with SMA logo. (b) 'National Flower Market' with SMA logo. An application was made to register both names as trade marks. Since that time, the name 'Sydney Flower Market' has been registered as a business name and an application for a trade mark made by Sapura Pty Ltd, a company connected with Town Hall Florist, a flower market customer. Meetings with the Committee of the new flower growers' group agreed that the market is better known as the 'Sydney Flower Market' rather than 'Australia's Flower Market' or 'National Flower Market'. Contact was made with a representative of Sapura Pty Ltd to seek more information about their reasons for the name registration and while the information flow was limited, it appears they intend to operate as a wholesaler/retailer based in the Sydney CBD some time in the future. Our patent and trade mark attorneys, Griffith Hack, were asked to oppose the trade mark application which will occur in the coming months and also seek the withdrawal of the business name registration from the Department of Fair Trading. The reaction of Sapura's representatives who visit the market as florists is not surprising, however, no contact has been made with the Authority. The Authority should continue to use the Sydney Flower Market name and take whatever action is necessary to prevent Sapura Pty Ltd, or anyone else, using this name. RECOMMENDATION It is recommended that the Board note this matter." 42 The draft minute of the board meeting records that the board noted the letter of 15 May 1997 from the Flower Growers Group. The board also noted the Authority's approach to "sealing" the name "Sydney Flower Market" for their own use. The word "sealing" has been crossed out by hand and the word "establishing" inserted in its place. The evidence does not establish when or by whom this alteration was made. 43 Mr Stevens' evidence was that he was reasonably certain that he had no contact with the growers group in May 1997. He accepted that if a member of that group contacted Sapura then he was the person with whom contact was likely to have been made. 44 The evidence does not identify the source of the information contained in Exhibit C, and the Exhibit is comparatively non-specific about the detail of the alleged contact. Given the nature of the Exhibit and Mr Stevens' denial, I am not prepared to find that Mr Stevens was contacted by a member of the Flower Growers Group, or by an officer of SMA in May 1997 in relation to the Sydney Flower Market name. In any event, even if there was a contact, I would not infer from Exhibit C that there was any protest on the part of SMA at the use of the name. 45 Paragraph 25 of Mr Stevens' affidavit of 5 September 2000 includes the following: "25 The respondent also sells its flowers under the name 'Sydney Flower Market' over the telephone. The respondent has sold flowers over the telephone since in or about May 1997." Shop 22A in the Town Hall Arcade had a telephone call centre which took the calls or telephone orders for Sydney Flower Market. 46 Mr Stevens places the commencement of telephone selling in May 1997, but at this stage there was no entry for Sydney Flower Market in any telephone book, nor had an internet site been established. However, having regard to the 2UE advertisement, I accept that it is probable that some telephone sales were made in May and June 1997, but I think that it is unlikely that the volume of telephone sales would have been significant before the release of the 1998 edition of the Yellow Pages in December 1997.

June-December 1997 47 On 11 July 1997 the applicant applied for registration of a word mark "Sydney Flower Market" in relation to the conduct of the market for the sale of flowers etc. This application was numbered 739024. Subsequently, the application lapsed. 48 In August 1997 the applicant installed signs with murals "Welcome to Sydney Markets" at major entrances to the market site. 49 By mid August 1997 the applicant had established a website, www.sydneymarkets.com.au, which it began to create in May 1997. The site contained information on the Sydney Flower Market. This was not a website through which flowers or other items might be purchased. 50 Draft minutes of an SMA board meeting of 19 August 1997 noted that SMA had made an application for a trade mark for the name "Sydney Flower Market" and that this process would take a few months to register. Mr Lynch is recorded as having offered to provide documentation of dealings with other companies whereby the name "Sydney Flower Market" had been used on invoices for approximately 10 years. Those documents were never provided or produced. 51 In November 1997 the respondent became a member of Interflora, and has been a member of Global Flower Services since 1997. All orders through those organisations were packaged with the label "Sydney Flower Market". In October and November 1997 stationery, including cards, order books, business cards and letterheads bearing the name "Sydney Flower Market" were made by Halkeas Printing for one or other of Mr Stevens' companies. 52 On 3 November 1997 an agreement for the sale of the markets was entered into. The applicant, SML, took over the operations of the SMA on 1 November 1997, and since that date the applicant has been the manager and operator of the Sydney Markets. 53 On 13 November 1997 Sapura Pty Ltd changed its name to Sydney Flower Market Pty Ltd. 54 In December 1997 the 1998 Yellow Pages telephone directory was published. For the first time there was an entry in the Yellow Pages for Sydney Flower Market at Parramatta Road, Flemington under the heading "Florists-W'sale". That was immediately followed by the following entry: The White Pages for 1997 contained an entry for Sydney Flower Market, Parramatta Road, Flemington. Mr Stevens said in his first affidavit at par 66 that he noticed this entry around the time of a conversation with a Mr Zaia about the fact of registration of the business name. The Letter of Demand of 17 February 1998 indicates that the "current 1997 Sydney White Pages Directory" contains an entry with respect to Sydney Flower Market at Flemington. There is no evidence as to the time of the year at which the White Pages was produced, nor was Mr Stevens cross-examined on par 66 of his first affidavit. In those circumstances I accept that Mr Stevens was not aware of the applicant's entry in the 1997 edition of the White Pages until after the registration of the business name. The White Pages for 1998 contained an entry for Sydney Flower Market, Parramatta Road, Flemington followed immediately by an entry for Sydney Flower Market of Shop 22A Town Hall Arcade. 55 In the 1997 Yellow Pages various traders at the market had entries in the section "Florists-W'sale". The address appearing for those traders was either Flemington Markets or Sydney Markets Flemington. In the 1998 Yellow Pages the address appearing for some traders was Sydney Markets Flemington whereas for others it remained as Flemington Markets. In neither year was the address appearing for a trader recorded as Sydney Flower Market. 56 In late 1997 or early 1998 the respondent began to trade in a shop at North Sydney Station. The signage of the shop read "Town Hall Florists", but the stationery for the shop referred to "Sydney Flower Market".

1998 57 Prior to January 1998 Mr Stevens received invoices from growers at the flower market at Flemington for flowers that he had purchased on behalf of Sydney Flower Markets in the name of "James", "Town Hall Florist" and "Pietro". Mr Stevens' father's name was Peter. 58 Mr Stevens says that it was only after he noticed "some time in 1998" that the flower market was starting to change its signage to refer to itself as "Sydney Flower Market" that he became aware that there was a possible issue at the flower market in relation to the respondent's name. He said that he became concerned and realised that he should start ensuring that his business was invoiced by the flower growers in the correct name. 59 It was in May 1997 that Mr Stevens first became aware that the flower market was starting to change its signage to refer to itself as "Sydney Flower Market". Exhibit 1 section D contains some examples of invoices issued by growers to Sydney Flower Market but the earliest invoice in Exhibit 1 which is addressed to Sydney Flower Market which bears a date is 12 November 1998. Nonetheless, I accept that at some stage in 1998 Mr Stevens requested growers at the market to issue invoices in the name of Sydney Flower Market rather than in accordance with the previous practice. Mr Stevens made this request in order to further his claim to exclusive use of the name. 60 On 16 February 1998 the applicant issued a prospectus in which shares in SML were offered for sale to traders at the markets. "Markets" was defined in the prospectus as meaning: "the fruit, vegetable, flower and retail markets and related facilities and activities currently operated and conducted by SML at Flemington and Haymarket." There is no reference in the prospectus to the Sydney Flower Market. 61 On 17 February 1998 solicitors acting for the respondent and for Town Hall Florists Pty Ltd wrote a Letter of Demand addressed to SMA, to which reference was made earlier. That letter complained of signage erected by SMA indicating "Sydney Flower Market"; of correspondence from SMA indicating and referring to "Sydney Flower Market"; and of the listing in the Sydney White Pages telephone directory under "Sydney Flower Market". The letter made a number of requests of SMA including that it should immediately cease using the name "Sydney Flower Market" and removal of signage referring to or indicating "Sydney Flower Market". A written undertaking not to use the name was also requested. 62 On 5 March 1998 solicitors acting on behalf of the applicant replied to that letter. After making some observations in relation to competing trade mark applications and to the Business Names Act 1962 (NSW), the solicitors advised that the applicant was in the process of considering its position, and the solicitors would endeavour to provide a more detailed response shortly. 63 On 30 July 1998 the respondent registered the domain name sydneyflowermarket.com.au, and since June 1999 the respondent has conducted a website at www.sydneyflowermarket.com.au. Initially the site was no more than a page with a name and telephone number, but as and from June 1999 it became accessible as a tradeable site - an "e-commerce" site. 64 On 30 September 1998 solicitors acting for the respondent wrote to the applicant's solicitors drawing their attention to the failure to give a more detailed response to the original Letter of Demand which had been promised in the response of 5 March 1998. The letter pointed out that the applicant is apparently operating under the business name "Sydney Flower Market" at Flemington. A detailed response to the letter of 17 February 1998 was requested. There was no response to this request by the applicant or its solicitors. 65 Mr Stevens' affidavit of 5 October 2001 includes the following: "3. As I did not hear anything further from the applicant or its solicitors in relation to the respondent's use of the mark 'Sydney Flower Market' from 17 February 1998, I had assumed that the issue had been resolved and the applicant had accepted that the respondent's business was known as 'Sydney Flower Market', that it was not able to use that name and therefore the respondent could continue to develop and promote its business under the mark 'Sydney Flower Market'." 66 I do not accept this evidence. It must have been obvious to Mr Stevens throughout 1998 and thereafter that the applicant was continuing to describe its flower market by means of the sign on Shed F as the Sydney Flower Market. The signs remained on the building, entries continued to be inserted in the telephone book and none of the requests made in the letter of February 1998 had been acceded to by the applicant. The applicant lodged trade mark applications on 11 July 1997 and 19 February 1999 involving use of the name, and Mr Stevens was aware of this. With increasing frequency, from towards the end of 1998 onwards, the applicant's market was referred to in publications, and in advertisements put out by the applicant as "Sydney Flower Market". About "three years ago" Mr Stevens told Mr Jones, the publisher of "Flower Link" not to use the name "Sydney Flower Market" in his magazine, as it was his registered name. In those circumstances, I do not accept that Mr Stevens made the assumption to which he deposes. Rather, both he and SML continued to use the name, each knowing of its use by the other. 67 On 18 October 1998 there was a rugby league football match between the City Florists and Growers against the Country Florists and Growers. There were a number of sponsors of the match including "Sydney Flower Market Pty Ltd Town Hall" and the NSW Flower Group. The City team had the mark "Sydney Flower Market" upon their jerseys. 68 In November 1998 the applicant established a website, "www.sydneyflower.com.au". 69 On 24 December 1998, as earlier indicated, a bank account was established for the respondent, and the respondent took over the flower trading which had previously been conducted by Town Hall Florists Pty Ltd, albeit under or by reference to the name Sydney Flower Market. 70 At some stage in 1998 a delivery van was painted with the respondent's stylised logo, including the name "Sydney Flower Market". This van had been seen by various witnesses in the proceedings at the flower market conducted by the applicant. A second van was similarly painted in 2000. 71 Publications in this period continued to refer to the Flower Market conducted by the applicant by various names, including Flemington Flower Market, Sydney Markets at Flemington, Sydney Flower Market and shed F at Flemington. References were made to "The Sydney Flower Market" as opposed to other names, more often than was the case in earlier years, particularly from about October 1998 onwards. 72 The 1999 edition of the Yellow Pages, under the heading "Florists-W'sale" contains the following entries: In the White Pages there were adjacent entries for Sydney Flower Market at Flemington, and at Shop 22A Town Hall Arcade. That continued to be the case in each year up to and including 2001.

1999 onwards 73 Since February 1999 the respondent paid for flowers that it purchased from flower growers located at the market by cheques drawn on an account held by "Sydney Flower Market". 74 In February 1999 the respondent published an advertisement for Sydney Flower Market in the "Official Sydney Events Guide". There was a reference to and a telephone number for Town Hall Arcade as well as for Wynyard ramp. 75 On 19 February 1999 the applicant lodged an application for a stylised Sydney Flower Market trade mark. On 9 March 1999 the respondent lodged an application for the trade mark "Sydney Flower Market" claiming divisional priority from 2 December 1996. On 22 March 1999 the respondent lodged a further application for a stylised "Sydney Flower Market" trade mark. This activity in the Trade Marks Office is inconsistent with the assumption which Mr Stevens claims to have made that the applicant had accepted his entitlement to exclusive use of the name. 76 In July 1999 the respondent's e-commerce site became active. On 13 July 1999 a meeting of the NSW Fresh Flowers Group took place. The minutes of that meeting include the following: "It was noted that the Town Hall florist 'Sydney Flower Market' now has a website of this name and is promoting the site as part of their strategy to prove use of the Sydney Flower Market name. Their use of this name is a separate issue which will continue to be monitored." Mr Bell, the Chief Executive Officer of the applicant, was present at that meeting. 77 A strategic planning weekend was held in September 1999 by officers of the applicant. The outcome of that meeting was that the applicant decided to emphasise the markets in its promotions as opposed to the produce sold at the markets. "Marketing the markets" became the focus of the applicant's promotional activity. As part of that change of direction it was decided that a new set of logos should be developed, including a logo for the Sydney Flower Markets. That decision was taken to address, amongst other things, the lack of recognition that the individual markets were perceived to suffer from. By this time the applicant knew that the respondent had been trading as Sydney Flower Market for the best part of three years. Ms Dodd also agreed that at the strategic planning weekend a decision was made for the applicant to change its emphasis from promoting produce to marketing the markets. She agreed that the Sydney Flower Market had not been specifically marketed until 1999. 78 A board meeting of the applicant was held on 24 November 1999. A paper prepared for that meeting by the Chief Executive Officer, Mr Bell, includes the following: "SML currently uses six logos, only one of which is clearly recognisable for its link to Sydney Markets. (Note: the Sydney Flower Market does not even [have] a logo at present.) Research done early in 1999 indicated that there was considerable confusion in the minds of the public about the difference between Sydney Markets, Flemington Markets, Paddy's Markets, Saturday Fresh Food Market, Haymarket etc. In addition, the public clearly did not know that all these markets/places were operated by SML. It was also clear that the public did not generally know that SML even existed, with many people still believing that a government authority operated the Markets. This situation makes it very difficult to get the message across that our Markets are a vibrant, complex and dynamic entity with a whole range [of] constituent parts, and that they are being successfully operated by SML. Directors will recall that it was decided at the Strategic Planning weekend in September that SML would change its emphasis from promoting produce to communicating better with stakeholders and 'marketing the markets'. As part of this change of direction, and in response to the lack of recognition indicated above, Sue Dodd was asked to prepare a design brief for a new set of logos. ..." At the meeting, the board agreed to proceed with the new logos and with their general theme. The logos included one for Sydney Flower Markets. If the case which the applicant now propounds is soundly based, there would have been no need for the "change of direction" referred to in the paper. 79 As earlier indicated, Shop 22A Town Hall Arcade closed in November 1999. Between November 1999 and June 2000 the remaining shop at Town Hall Station (Shop 1) traded under the name "Town Hall Florists". In this period, only the Wynyard shop traded under the name "Sydney Flower Market", although telephone sales were effected under that name. 80 The Yellow Pages directory (2000 edition) under the heading "Florists-(W'sale)", contains the following entries: 81 On 14 December 1999 Griffith Hack, lawyers acting for the applicant, forwarded a Letter of Demand to the respondent. The letter asserted that in the course of conducting the wholesale flower market at Flemington for over 25 years "that market has become known in the marketplace by consumers, growers and business people as 'The Sydney Flower Market'. The growers selling produce at the markets refer to the markets in this way, and consumers and business people generally identify the wholesale flower market operated by the Sydney Market Authority as 'The Sydney Flower Market'". A response was forwarded by the respondent's solicitors on 13 January 2000. Proceedings were instituted on 6 March 2000. Since March 2000 the respondent has advertised its business in various newspapers. In May 2000 the respondent advertised its business on the back of taxis in the Sydney metropolitan area for one month. In June 2000 after the institution of the proceedings, the signage on Shop 1 at Town Hall was changed to that of Sydney Flower Market, and about the same time a similar change was made on the shop conducted at North Sydney Station. On 3 June 2000 the signage around the markets at Flemington was changed from "Flower Market" to "Sydney Flower Market".

Industry witnesses 82 The applicant called a number of witnesses directed towards establishing the name by which the market conducted by the applicant is known. Mr Osmelak, the Executive Director of Flower Victoria, said in his first affidavit that for the last twenty years he had always known the market as "Sydney Flower Market". In his third affidavit he said that the market is only colloquially known by that name, and that it is not its business or trading name. The market was also known and referred to as "Flemington Market", "the Haymarket" or "Sydney Markets". 83 Ms Maddock was a district horticulturalist in Sydney in the period 1983-1992. She had involvement with the flower industry and was also involved in the production of a newsletter "Flower Talk", information sheets and other publications relating to flowers. During her employment as district horticulturalist she always referred to the flower market located in Sydney as the Sydney Flower Market. She always referred to the market by that name in any publications which she produced. In addition, sometimes she referred to the market more specifically as "The Sydney Flower Market in shed F at Flemington Markets". The schedules with which I was provided demonstrate that Ms Maddock, more than most people, was reasonably consistent in her usage of the expression "Sydney Flower Market" to describe the applicant's market, but there are occasional references in publications for which she was responsible to the "Flower Markets at Flemington" and to "the Flower Market". Mr Jones was a magazine editor and publisher who publishes "Flower Link" and "The Market Link". He has had dealings with SMA and the applicant for a period of 18 years. His evidence was that he has always known the flower market conducted by SMA or the applicant as "Sydney Flower Market" or "the Flemington Flower Market". 84 Three florists who have purchased flowers from the market for very many years swore affidavits on behalf of the applicant that each of them referred to the market as "Sydney Flower Market" both before and after the shift to Flemington. 85 Affidavits were also sworn by two flower growers, each of whom has been a stallholder at the market for a period in excess of 25 years. Mr Lynch said that he had always known the flower market conducted by the applicant, and by SMA before it, as either "Sydney Markets" or "Sydney Flower Market". Yet invoices issued by Leo Lynch & Sons have given its address as a Post Office box at Flemington Markets, and in telephone directories the address appearing is Stands 55-57, Sydney Markets Flemington. The other grower, Mr Oliveri said that he has always known and referred to the market as the Sydney Flower Market, and that is the name which he uses in his dealings with other growers, stallholders and florists. Yet on his stationery, the business is described as A & L Florists Supplies, Stand 102, F Shed, Flemington Markets. He said in cross-examination that he regards that as the address of his business for people who come and see him in the market, but when interstate or overseas, he refers to the market as the Sydney Flower Market. 86 A review of the sections "Florist Supplies" and "Florists-W'sale" in the 1986-2000 editions of the Sydney Yellow Pages showed that no standholders at the flower market conducted by the applicant referred to themselves as being located at the "Sydney Flower Market". The standholders refer to themselves as being located at "Flemington Market", "Sydney Market Flemington", "Sydney Markets" or "F Shed, Flemington Markets" with some occasional minor variations of these expressions. 87 Affidavits were filed on behalf of the respondent by eight florists who purchased their flowers from the markets, and by six growers who sold their produce to stallholders at the markets or who were themselves stallholders. There are differences in the detail of this evidence. There is, however, a common thread. Each has always known and referred to the flower market conducted by the applicant or its predecessor as "Flemington Markets". They have never known the market as Sydney Flower Market, or heard it referred to as Sydney Flower Market. In addition, an affidavit was filed by Mr White, the General Manager of a company which is a national wholesaler and flower growing company. He has been involved in the flower industry for over 25 years. In his experience, the market has been referred to by a number of names, including "Flemington Markets", the "Sydney Flower Market" and "the Markets". His company always addresses correspondence to the "Flemington Markets", as in his understanding "the Sydney Flower Market" is merely a colloquial reference to the markets. 88 Paragraph 8 of Mr White's affidavit is as follows: "If someone, during a conversation was to refer to the 'Sydney Flower Market', which entity I believed they were referring to, would depend on the context in which the reference 'Sydney Flower Market' is made. For example, if it was in the context of retail florist sales, I would assume they were referring to the respondent. On the other hand, if the reference was in the context of flower markets throughout Australia, I would assume they were referring to the flower market conducted by the applicant. This is because, from my experience, it is common in the flower industry in Australia, to refer to the particular flower market in a city by reference to that city. For example, although the flower market in Melbourne is officially called the 'National Flower Centre' if I was talking to someone in the industry, in particular who was located interstate, I would refer to it as the Melbourne Flower Market. However, if I was referring to someone in the flower industry located in Melbourne I would refer to it as the 'Footscray Markets' or the 'Market'." Whilst hypothetical evidence as to what an expression would convey to a person is rarely of much assistance, I quote this passage because it makes the obvious point that much depends upon the context in which the expression is used. 89 There are florists' shops called the Bellevue Hill Flower Market, The Lane Cove Flower Market, The Hills Flower Market and the Cronulla Flower Market. There may be others which incorporate the words "Flower Market".

Market research 90 In February 2000 Mr McNair was instructed by the applicant to undertake a survey in which members of the public would be asked questions in relation to the name "Sydney Flower Market". The methodology used in the survey was to select at random 300 telephone numbers by computer from the latest electronic White Pages directory. Three questions were asked of respondents: "(1) Have you heard of the Sydney Flower Market? (2) Where is the Sydney Flower Market? (3) When did you first become aware of the Sydney Flower Market?" 91 A question-by-question summary of the results of this survey follows: (1) Have you heard of the Sydney Flower Market? Yes 51%. No 49% (2) Where is the Sydney Flower Market? (Do not read list) Flemington 44% City 9% Homebush 9% Haymarket 3% Town Hall - Other 6% Don't know 30% (3) When did you first become aware of the Sydney Flower Market? (Do not read list) Within the past Five years up to ten year 31% years ago 12% One year up to two Over ten years ago 13% years ago 13% Two years up to five Other 1% years ago 22% Don't know 9% Mean = 4.3 years ago 92 Question 1 is a prompted question which leads to an overstatement of recognition because of a perceived expectation on the part of respondents that the name is one of which they should be aware. Mr McNair puts the level of overstatement at 10 per cent. Mr Kayande, an expert called by the respondent, puts the level of overstatement at 10 per cent to 20 per cent and supports that range by reference to a recognised text. 93 The experts agree that one appropriate way to deal with the overstatement problem is to ask a second question of a type illustrated by Mr McNair's question (2). This gives a "true" awareness level of 51 per cent x 44 per cent = 22.5 per cent. If the Homebush results were aggregated with Flemington, the figure becomes 27.03 per cent. 94 Mr Kayande makes the further point that questions (1) and (2) of the survey reveal whether there is an association between Sydney Flower Market and Flemington in the minds of 22.5 per cent of the respondents, but it does not follow that the market at Flemington is known to those respondents as the Sydney Flower Market. I agree with this conclusion, and with Mr Kayande's observation that a better way to ascertain whether the Flower Market at Flemington is associated with the brand name "Sydney Flower Market" is to ask the following questions: "have you heard of the flower market located in Flemington?", then if they have heard of the flower market, "would you know its name?" and finally, if so, "what is its name?" or questions to similar effect. 95 No reliance was placed in submissions on the answer to question (3). Substantially for the reasons given by Mr Kayande, this is likely to be an unreliable statistic. 96 Two further observations about the results of the survey should be made. First, the survey was conducted in February 2000 after the applicant had changed the direction of its promotional activities to "marketing the markets". Whatever interpretation one places on the results of the survey, it cannot be assumed that the results reflect the level of awareness or recognition of the Sydney Flower Market at some earlier point in time, particularly 1996 or 1997. The schedules with which I was provided by the parties as to the names by which the market was referred to in journals, newspapers, magazines, promotional material etc show an increasing tendency, particularly from about October 1998 onwards, to refer to the market conducted by the applicant as the Sydney Flower Market. 97 Second, the reason for the recommendations coming from the strategic planning weekend held in September 1999 was a perception of a lack of recognition in the minds of the public of the individual markets, bearing in mind, in the case of the flower market, that it did not have a logo, and had not been specifically marketed until 1999. Whilst the perception of those attending the weekend might not have been accurate, it is a factor which needs to be borne in mind in determining whether the results of the survey have any validity at earlier points in time, particularly 1996 or 1997.

The case as pleaded 98 The Amended Statement of Claim ("ASC") pleaded causes of action based on contraventions of s 52, s 53(a), s 53(c), s 53(d) and s 53(e) of the Trade Practices Act 1974 (Cth) ("the Act"), as well as passing off. The passing off claim was specifically abandoned, and the applicant's final submissions were confined to contravention of s 52 of the Act. The Amended Statement of Claim alleges that the respondent was guilty of misleading and deceptive conduct in two ways. The first alleges a misrepresentation that flowers offered for sale by the respondent are supplied at wholesale prices (ASC 9(a)). This case was not put in final submissions, nor was my attention drawn to any evidence which would sustain it. The second (ASC (b)-(f)) alleges misleading and deceptive conduct in one form or another arising from the use of the names. It was the second case which the applicant's submissions propounded. 99 There is a cross claim by the respondent against the applicant which pleads various causes of action. The respondent's final submissions were also confined to s 52 of the Act. The cross claim was described by Mr McDougall QC as defensive in character, by which I took him to mean that if the applicant's claim contracted, then so too did the cross claim.

Different businesses, different markets 100 The applicant's business is the provision of facilities for the conduct of various markets, including a flower market. The applicant does not itself sell flowers or other produce by wholesale, or by retail or by means of the Internet. The business of the respondent is the selling of flowers, primarily by retail, although it will supply at "wholesale" prices for bulk orders. At T 102 Mr Stevens said: "If someone wants to call and require 50 to 100 bunches of flowers, I'm sure that we could give them a far better price than we would at normal retail prices and I would dare say that the prices would be as competitive as the prices out at the marketplace." 101 The applicant's market and its administration activities are located at Flemington and have been so located for the last 25 years or more. The respondent's business is conducted from flower shops in the city of Sydney and North Sydney. The trading hours of the two businesses are quite different, inasmuch as the applicant's market opens early in the morning and is closed by lunchtime, whereas the respondent's shops remain open between the morning and the evening peak hours. While this was not a matter of specific evidence, it was common ground that the respondent's shops are open from about 7-8 am to about 6-7 pm. 102 Thus the applicant and respondent conduct non-competing businesses, in different markets. This is a relevant, but not a determinative factor, in deciding whether the conduct complained of is misleading or deceptive. The law of passing off is not limited to situations involving competing traders: Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd (1981) 1 NSWLR 196. There may be passing off even though there is no common field of activity: Campomar Sociedad, Limitada v Nike International Ltd (1999) 202 CLR 45 at par 110. A fortiori, conduct may be misleading or deceptive in terms of s 52 of the Act even if the parties do not occupy a common field of activity.

The relevant date 103 The applicant alleges that the words Sydney Flower Market have acquired a secondary meaning signifying the flower market conducted by the applicant at Flemington. It is common ground that the date at which reputation or secondary meaning is to be assessed is the date on which the respondent commenced the conduct complained of: see, eg, Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 2 NSWLR 851 at 861; Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989-1990) 17 IPR 289 at 302. The position may be otherwise if the complainant allows its trade to fall away and later seeks to re-enter the market, in which case causation questions would arise as to whether any likelihood of deception flowed from the respondent's activities, or whether it resulted from the complainant's re-entry into the market. It is not necessary to further pursue that issue here. 104 Trading under or by reference to the name Sydney Flower Market on the part of a company controlled by Mr Stevens began at Kent Street in December 1996 and continued at Shop 22A Town Hall Arcade from April 1997. It was in December 1996 that the respondent attempted to appropriate the name Sydney Flower Market to itself by its business name registration, and by its trade mark application. Although it was not until December 1998 that the respondent took over the flower trading which had theretofore been conducted by Town Hall Florists Pty Ltd under the business name which the respondent had registered, the relevant date for determining the issue of distinctiveness is December 1996 rather than December 1998. That is when the conduct complained of began. The trading between December 1996 and December 1998 under the name Sydney Flower Market was conducted with the implied licence of the respondent, and the respondent succeeded to whatever reputation attached to the name when it commenced to trade under it in December 1998. 105 Mr Catterns QC submitted (T 170) "we only tentatively say that you push the date back" to December 1998. I reject this submission, albeit only tentatively advanced, for the reasons which I have given. The relevant date is either December 1996, or alternatively, April 1997. It is not material to distinguish between the two.

Has "Sydney Flower Market" acquired a secondary meaning? 106 The name consists of two descriptive words - flower market - prefaced by a word of locality. The applicant contends that prior to December 1996 the flower market conducted by the applicant and its predecessor was referred to and known, inter alia, as the Sydney Flower Market. The issue is whether the descriptive phrase has become distinctive of the applicant's business, as this is directly relevant to whether the respondent's conduct is likely to mislead or deceive the relevant public. However, as Hill J explained in Equity Access Pty Ltd v Westpac Banking Corporation (1989-1990) 16 IPR 431 at 448 it is wrong to see the distinction between descriptive and fancy names in black and white terms, when the reality is that there is a continuum; the closer along the continuum one moves towards a merely descriptive name the more an applicant will need to show that the name has obtained a secondary meaning. 107 In the applicant's contention, the secondary meaning which the expression "Sydney Flower Market" has acquired signifies: - the flower market conducted by the applicant at Flemington (now Sydney Market); - an "official" wholesale flower market; - a wholesale market associated with the applicant or with the "official" wholesale flower market. 108 The applicant put its case in this way: "Whilst the term 'Flower Market' is descriptive and the name 'Sydney' is the name of the city, the collocation of the two in the phrase 'Sydney Flower Market' connotes a specific, authorised, entity with particular attributes - that of a particular market at a particular place, dedicated to wholesale trading of flowers, attached to and forming part of the fabric of the city, either being a public owned and operated market or having official or quasi-official imprimatur. A name such as 'Australian Patent Office' or 'Sydney Fish Market' is entirely descriptive but can possess a powerful and exclusive secondary meaning." 109 The applicant submits that I should conclude that "Sydney Flower Market" was the name by which the applicant's flower market was known at the relevant date albeit it may have been only colloquially that it was referred to by that name and even though it may also have been known by other names such as the Flemington Flower Market, the Flemington Markets, Shed F Flemington or Sydney Markets, or by its produce. Clearly enough the fact that the flower market was known and referred to by those other names is relevant to whether the words "Sydney Flower Market" have acquired a secondary meaning signifying the applicant's flower market, but I agree with Mr Catterns' submission that if that issue is resolved in the applicant's favour, the relevance of alternative names is exhausted. But the real question is whether that issue should be resolved in the applicant's favour. 110 Sydney Flower Market is not the name under which the applicant carried on its business in relation to the flower market as at the relevant date. Nor did the applicant advertise itself as Sydney Flower Market at that time. Nor did it then actively promote the flower market as a market. The minutes of the meeting of the applicant's flower promotions committee held on 11 April 1996 record: "Ray McDonald expressed the view that any promotions must promote flower sales through florists and not promote the sale of flowers from the wholesale market. The committee agreed." A public relations brief prepared by SMA in June 1996 in relation to fresh cut flowers records: "... SMA promotes fresh produce and fresh cut flowers within NSW. To date, minimal flower marketing and promotion has been undertaken by the SMA or the industry." 111 The publications on which the applicant relies do not make out a case that the applicant's flower market was generally referred to as Sydney Flower Market, at least in the period prior to about October 1998. The applicant also relies on a number of witnesses who say, in effect, that they have always known the flower market conducted at Flemington as the "Sydney Flower Market", whereas the respondent relies on a number of witnesses who say to the contrary. The objective evidence is that standholders in the market did not refer to themselves as being located at the Sydney Flower Market on their invoices, or in the Yellow Pages of the telephone book. Rather, they referred to themselves as being located at "Flemington Market", "Sydney Market Flemington", "Sydney Markets" or "F Shed, Flemington Markets". 112 The evidence does not establish a consistent pattern of usage of the name Sydney Flower Market to describe the flower market conducted by SMA prior to the relevant date such that the name came to signify that market. 113 It was not until after the respondent registered its business name in December 1996 that there is any recorded concern on the part of SMA that the flower market at Flemington should be known as Sydney Flower Market. Thus, on 19 February 1997 it was decided that Sydney Flower Market would be an appropriate name for the flower market, rather than the trading names which SMA had previously registered. The painting of the name on F Shed on 1 May 1997 was the first substantial overt act on the part of SMA directed towards that end. 114 The letter of 15 May 1997 (referred to at par 39 above) asserting that the F Shed has always been known as Sydney Flower Market is an exaggeration or distortion of the facts. The draft minutes of the SMA board meeting on 20 May 1997 referring to "establishing" the name Sydney Flower Market for SMA's own use is inconsistent with a perception on the part of SMA that it enjoyed a reputation under that name, such that the name had become distinctive of its flower market (see 42 above). 115 If SMA, or the applicant, had the reputation under the name Sydney Flower Market for which it now contends, it would have declared its position in response to the respondent's Letter of Demand of 17 February 1998. Instead, it sent a temporising response and then lapsed into silence. Although it was aware since May 1997 that the respondent was carrying on business under the name Sydney Flower Market, the applicant did not complain of this until 14 December 1999. 116 It was not until after the strategic planning weekend of September 1999 that a logo was devised for the applicant's flower market. The flower market was not specifically marketed by the applicant until 1999 (see par 77 above). If the applicant's reputation was as it now contends, whether in terms of the name "Sydney Flower Market" or the name "Sydney Markets", then there would have been no need for the change in direction which was proposed and adopted as a result of the strategic planning weekend. 117 For these reasons, the evidence fails to make out the applicant's primary case on reputation. The applicant has not established that the name Sydney Flower Market had acquired the secondary meaning for which it contends. The market survey conducted in February 2000 does not indicate or require any different conclusion for the reasons given above.

Whether the words "Sydney Market" have acquired a secondary meaning 118 The applicant puts an alternative case that the words "Sydney Market" have acquired a secondary meaning such that the use of the name "Sydney Flower Market" signifies a connection with the official produce markets conducted by the applicant at Flemington. 119 Whilst the markets at Flemington were operated by the SMA, they were generally referred to as Sydney Markets or Flemington Markets or simply as "The Markets". The markets were privatised in November 1997. Thereafter shares in the applicant were substantially held by traders at the markets, and the markets ceased to be publicly owned and operated. It is not established that after November 1997, the markets at Flemington had an official or quasi official imprimatur, or a reputation as having such an imprimatur. 120 It was not until mid-1996 that SMA decided to develop a marketing plan to establish the Sydney Markets as a brand (see par 29 above). The location name was changed from Flemington Markets to Sydney Markets with effect from January 1997, but the Sydney Markets Gazette for April 1997 indicates that the attempted repositioning from Flemington Markets to Sydney Markets was something which had not been achieved at that point in time (see par 33 above). If it had been achieved, there would be no need to enjoin people to use the new name of Sydney Markets rather than Flemington Markets when changing their stationery in the future. The strategic planning weekend held in September 1999 reflects the fact that "marketing the markets" remained a goal, rather than something which had been achieved up to that point in time. 121 The applicant faces similar evidentiary problems in establishing that the words Sydney Market have acquired a secondary meaning as it faced in relation to the words Sydney Flower Market. Even if I were wrong in coming to that conclusion, a further issue would arise as to whether use of the name "Sydney Flower Market" signifies that the business conducted under that name is a business conducted by the applicant or is otherwise connected with the applicant. A party which uses descriptive words in its trade name "will find that quite small differences in a competitor's trade name will render the latter immune from action": Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1977-1978) 140 CLR 216 at 229.

Intention to deceive 122 It is well established that where a name or get up is adopted with an intention to deceive, the Court may infer that the intention has been, or in all probability will be, effective. See for example Campomar v Nike International (supra) at (33). 123 In Turner v General Motors (Australia) Pty Ltd (1929) 42 CLR 352 an American manufacturer of cars, who had a trade reputation in Australia, advertised its intention to form an Australian company, with a name based on the American company's name, to assemble cars in Australia and to market them here. The defendant began to carry on business in Sydney as a dealer in secondhand cars under a name which resembled that of General Motors. Proceedings were instituted against the defendant for passing off. Isaacs J said (at 364): "But on principle the whole contention is fallacious [that is the contention that the appellants had done nothing legally wrong as regards the respondent]. In the first place, a man who digs a pit in a path along which he has reason to believe another man will shortly travel, does nothing of which the man can legally complain before he comes to it. But if the latter happens to fall into the hole and suffers injury, does the argument of original freedom from responsibility avail the man who digs the pit? What Ernest Samuel Turner for all the defendants in the suit did was to dig a commercial pit in advance. If there ensued injury, or a probability of injury, there is surely a remedy. But I do not for a moment concede that before October 1926 the respondent would have been helpless. Having the undoubted intention to commence business, it could, in the circumstances, in my opinion, have obtained protection against the injury the appellants were preparing in advance. Intention in such a case is an important factor." If Mr Stevens' purpose in registering the name included the purpose of preventing the use of the name by the applicant (unless it reached an accommodation with Mr Stevens), then the attempted appropriation of that name by the respondent would be ineffective if the applicant enjoyed a reputation under that name at the time the name was registered. However, the position would be otherwise if the applicant did not have a reputation under the name. In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 365 Gummow J said: "In such a case (ie where a respondent seeks to pre-empt the entry of an overseas company into the Australian market) is it necessary that the appellant establish a case of the existence in Australia of a reputation among consumers, or is it sufficient that the respondent is acting in the manner described by 'digging a pit' in the path of the entry by the appellant into the Australian market? In my view, the appellant cannot succeed in such a case, even if fraud be shown, unless the plaintiff can show a reputation in that market. Only if this be so will the activities of the defendant convey a misrepresentation to the public and the misrepresentation is the gist of the action." 124 Thus even if a factor underlying the selection of the name by Mr Stevens was a perception on his part that at some stage in the future the applicant might wish to acquire the name, that would not be of any legal significance unless the applicant enjoyed a reputation under that name at the time of registration. It is only in those circumstances that the registration of the name, and the carrying on of business under the name, is likely to mislead or deceive the public. 125 The applicant accepts that it would have no case if the name which the respondent had adopted was, for example, Town Hall Flower Market. Its complaint is confined to the collocation "Sydney Flower Market". It was not submitted that there is any misrepresentation flowing from the use of the words "flower market" in relation to the respondent's business. Unless the applicant can establish that the words "Sydney Flower Market" have become distinctive of its business, then the use of that phrase in relation to the respondent's business does not convey any relevant misrepresentation. 126 Whilst I have not accepted aspects of the evidence of Mr Stevens, I am not persuaded that his explanation for the selection of the name (see 11 above) is false, or that he adopted the name in order to create the illusion of an association between his business, and the flower market at Flemington. It was not suggested to Mr Stevens in cross-examination that there was any particular reason why his commercial interests would have been furthered by the creation of an illusion to that effect, and it is by no means self-evident why this would be so. 127 Nor am I persuaded that I should reject Mr Stevens' sworn denial of the proposition that his objective was to acquire something valuable "that at a later date you might be able to sell to the Sydney Flower Market". Mr Stevens was not alone in holding the view (which I accept he held) that the applicant's market was known as Flemington Flower Markets. It was suggested to him that he knew at about the time of registration of the business name that SMA was to be privatised. Mr Stevens denied knowledge of that fact (see 9 above). Even if it be assumed that he was aware of a rumour to that effect, no connection has been established between privatisation of the markets, and the likely name by which the flower market would be known. 128 The applicant has not made out a case that the name was adopted by Mr Stevens with an intention to deceive. Nor has the applicant made out a case that the circumstances in which the name was adopted result in an implied admission on the part of Mr Stevens that it was by that name that the flower market conducted by the applicant at Flemington was then known.

Whether the respondent's use of the name is likely to mislead or deceive even if the name is not distinctive of the applicant's flower market 129 In final submissions, counsel for the applicant accepted that growers and florists in Sydney are unlikely to be misled: "It's more likely ordinary members of the public who wanted to buy some flowers". On the evidence, interstate growers had no difficulty in getting their product through to its intended destination (see Exhibit 4). 130 In ConAgra Inc v McCain Foods (supra) Lockhart J held that the failure on the part of the appellant in that case to establish a relevant reputation in Australia for the purposes of the law of passing off must cause it to fail also in its case of contravention of Part V of the Trade Practices Act 1974 (Cth) as there was not a sufficiently substantial number of people in Australia aware of the appellant's product. His Honour referred to the decision of Hill J in Equity Access v Westpac Banking Corp (supra) where his Honour concluded that the threshold under the Trade Practices Act may well be lower than it is for passing off. Lockhart J said (at 353): "I do not find it necessary to decide whether there is a difference between the tort of passing off and contraventions of Part V of the Trade Practices Act in the nature or numeracy of the relevant persons likely to be misled or deceived because I agree with his Honour's findings that on the facts the appellant failed to pass even the lower threshold." See also the decision of the Full Court in Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2001) 49 IPR 303 at par 46-47. 131 Whether the respondent's conduct involves a contravention of s 52 is a question of fact to be decided by considering what the respondent does against the backdrop provided by the surrounding circumstances. The Court must assess the reactions or likely reactions of ordinary and reasonable members of the class to whom the conduct was addressed, which, for present purposes, may be taken as potential purchasers of flowers. 132 Consideration of whether the name in question has become distinctive of the complainant's business may be a useful tool in conducting the factual analysis which s 52 requires, but there is no legal rule that there cannot be a contravention of s 52 in a case such as the present unless the conclusion is also reached that the name has become distinctive of the complainant's business such that the complainant would also succeed in a claim for passing off. 133 Thus in Peter Isaacson Publications Pty Ltd v Nationwide News Pty Ltd (1984) 56 ALR 595 Beaumont J was concerned with a case in which rival newspaper proprietors had sought orders against each other in relation to the use of the name "Sunday Territorian" in relation to Sunday newspapers published in the Northern Territory. The applicant's newspaper was first published on 30 September, and the respondent's on 7 October. Proceedings were instituted under s 52 of the Act as well as for passing off. Beaumont J found that if the litigation had involved no more than a claim under the general law or in passing off, the result would be a stalemate in which neither party could obtain relief against the other. At 606 his Honour said: "In my opinion, both sides face similar difficulties in maintaining a passing off action against the other here. Since neither can establish an exclusive reputation in the name ... any claim for passing off must fail." Nonetheless, the residents of the Territory would somehow have to distinguish between two rival publications of identical name, with similar content and price, and aimed at the same market. That focused attention on s 52. 134 Beaumont J found that there was honest concurrent conduct on both sides of the dispute but that the respondent contravened s 52 because its use of the name "Sunday Territorian" in the circumstances amounted to a representation to the public that there was some connection between the two papers. On the cross claim, his Honour held that the applicant, by continuing to publish under the name "Sunday Territorian", without attempting to distinguish the applicant's publication from that of the respondent, had itself contravened s 52. Given the honest concurrent conduct of both sides to the dispute, his Honour granted cross injunctions against both sides restraining each of them from publishing under the name "Sunday Territorian" without clearly distinguishing the publication from the opposition's product. 135 That was a case where only a short period had elapsed between first commencement of publication of either newspaper and the hearing. That is not the case here. The respondent commenced to use the name "Sydney Flower Market" in December 1996, and the applicant painted the name on F Shed in May 1997. Since that time each has continued to use the name to the knowledge of the other. In the editions of the White Pages and the Yellow Pages for the years 1998, 1999, 2000 and 2001 adjacent entries have appeared in relation to the Sydney Flower Market at Flemington and the Sydney Flower Market at Town Hall Arcade or Town Hall Station. Subject to one possible qualification, there is no evidence that any member of the public has been misled or deceived by the concurrent use by the applicant and respondent of the name. Thai World Import v Shuey Shing (supra) at 305 confirms that this is a factor to be taken into account when applying s 52 of the Act. 136 The possible qualification is that on 18 March 2001 an article appeared in the Tempo supplement in the Sun-Herald directed to preparing for weddings. Part of the article is sub-headed "Floral frenzy". Under that sub-heading the following appears: "Head to the Sydney Flower Market (phone 02 9261 4477 for opening hours). The market sells blooms at wholesale prices. You can save a packet by selecting your own flowers and creating your own design." The phone number given is that of the respondent rather than the applicant. The author probably intended to refer to the applicant's flower market. 137 In my view, one isolated instance of confusion (perhaps caused by a cursory look at the telephone book) does not detract from the general proposition that the applicant's business and the respondent's business have co-existed for about four years without any evidence that the industry or the general public has thereby been misled or deceived. A contributing factor to that outcome is the different nature of the two businesses. The Sydney Markets site is approximately 40 hectares in size. For the last 27 years it has been located at Flemington and a number of different markets are conducted at the site. 138 The difference in the nature and size of the applicant's business compared with that of the respondent, the different locations at which their respective businesses are conducted coupled with the fact that each business has operated for a period of about four years with adjacent entries in the telephone book without any evidence that any member of the public has been misled or deceived thereby (apart from the isolated instance of confusion referred to above), leads to the conclusion that neither party has established that the conduct of its business by the other involves a contravention of s 52. I except from that finding the conduct of the websites by each party, which requires separate consideration and is dealt with below.

Estoppel 139 Even though this is a s 52 case, it was common ground that estoppel principles, if otherwise enlivened, may be taken into account: Glev Pty Ltd & Glev Franchises v Kentucky Fried Chicken Pty Ltd (1994) ATPR ¶ 41-299. I will proceed upon this basis, without giving independent consideration to the question of principle involved. 140 The estoppel claim is grounded on Mr Stevens' evidence that as he did not hear from the applicant or its solicitors in relation to the use of the name "Sydney Flower Market" he assumed that the issue of entitlement to use the name had been resolved and that the applicant accepted that the respondent was entitled to use the name "Sydney Flower Market" to the exclusion of the applicant. Accordingly, Mr Stevens assumed that the respondent could continue to develop and promote its business under the name "Sydney Flower Market"; something which he would not have done (without investigation and advice) had the applicant declared its hand. 141 I have already indicated that I do not accept Mr Stevens' evidence in this respect. Mr Stevens' continued use of the name was not by reason of any belief on his part that the issue had been resolved by an acceptance on the part of the applicant that the respondent was entitled to the exclusive right to use of the name. Mr Stevens simply decided to press on with his use of the name, notwithstanding its concurrent use by the respondent. Mr Stevens could not have genuinely held the belief to which he swears having regard to what was happening in relation to use of the name in and after February 1998. 142 The estoppel case fails, as reliance has not been established.

The Websites 143 It was common ground that even if I came to the conclusion which I have reached, separate consideration of the position in relation to the websites is required. 144 On 30 July 1998 the respondent registered the domain name sydneyflowermarket.com.au. The website www.sydneyflowermarket.com.au became operational in June 1999 as an e-commerce site. The respondent has over 500 people who order flowers on its internet database. It promotes itself to these people by e-mailing them specials on a weekly or monthly basis. 145 In November 1998 a website - www.sydneyflower.com.au - was established by the applicant. The applicant owns and administers that site. The site provides information about flowers and some information about the flower market. It is not a site at which orders for flowers may be placed. 146 At some stage in 2000 the applicant registered the domain names: sydneyflowermarket.com sydneyflowermarket.net sydneyflowermarket.net.au The respondent came to learn of this fact in July 2000, in circumstances which suggest that the applicant's websites are active. 147 The respondent's website is a selling point; the applicant's sites are not. My attention was not drawn in submissions to any evidence as to the material which is displayed when access is gained to either of these sites. But there is no context which would enable a person seeking to gain access to either site to determine from the domain names whether the site is that of the applicant or of the respondent. 148 In Capital Webworks Pty Limited v Adultshop.com Ltd [2000] FCA 492, Nicholson J rejected an argument for the application of s 52 to a domain name dispute. The applicants sought, inter alia, injunctive relief pursuant to s 80 of the Trade Practices Act 1974 (Cth) to restrain the respondents from carrying on the business of selling adult leisure products by or through the Internet using the domain name "Adultshop.com.au" or from directing Internet inquiries from the domain name to the first respondent's business; and an injunction requiring the respondents to have the domain name re-allocated to the applicant's name servers. The applicant's business was the retailing through the Internet of adult leisure products. The applicant was registered as the holder of the domain name "Adultshop.com.au" until 31 March 2001, when the applicant's registration apparently lapsed and the domain name was allocated to the first respondent. The result was that the applicant became unable to transact business under that domain name. The applicant argued that the use of the domain name by the first respondent would ultimately be found to be misleading and deceptive, contrary to s 52 of the Act. Nicholson J rejected this argument, saying that: "In my view it is open to inference … that the reference to the Web site as it is presently operated by the first respondent would direct the person activating the Web site to the business of the first respondent. Therefore, in express terms the member of the public would be directed to the business of the entity to which the domain name had been allocated. There would be nothing misleading or deceptive in that. … here the domain name expressly directs the members of the public to the correct business and the domain name does not in itself seek to refer to the business of the applicant save that the applicant previously was the allocated user of the domain name." 149 The case before Nicholson J was quite different to the present case. The case before his Honour involved the one domain name, which was registered in the name of different businesses at different times. On the other hand, the present case involves two businesses that each have at least one similar domain name on the register contemporaneously. True it is that the domain names registered by the parties will expressly direct members of the public to the business of the entity to which the domain name has been allocated. However, where two domain names are sufficiently similar so as to make it difficult for a member of the public to know in advance exactly which site they will be taken to (as, for example, where the only difference between them is the presence or absence of ".au"), there is considerable scope for the public to be misled. As I mentioned above, there is no context provided by either domain name that would enable a person seeking to gain access to either site to determine whether the site is that of the applicant or that of the respondent. 150 There is some evidence that a person seeking to access the respondent's site kept arriving at the applicant's site, presumably by reason of the failure to enter the ".au", which alone serves to distinguish between the addresses of the two sites. The similarity between the website addresses is such that those members of the public who wish to order flowers from the respondent by means of the Internet, might by mistake access one of the applicant's sites, and persons seeking the applicant's site may arrive at that of the respondent. 151 It does not follow from this finding that the respondent is entitled to succeed generally on its cross claim, as it is no more entitled to exclusive use of the name "Sydney Flower Market" than is the applicant. But it does follow that there is a discrete pocket of commercial activity in which the public may be misled by concurrent use of the names, at least without explanation. This problem has arisen comparatively recently, by reason of the domain names which the applicant registered in 2000. 152 If the applicant wishes to persist in the use of websites which include "sydneyflowermarket", particularly the site "www.sydneyflowermarket.com", having regard to the use by the respondent of "www.sydneyflowermarket.com.au" since June 1999, then in order to avoid the public being thereby misled, there should be some appropriate disclosure or disclaimer on the applicant's website so that members of the public who seek to buy flowers from the respondent are directed to the respondent's website. The respondent acknowledges that it would be appropriate to put an equivalent disclosure or disclaimer on its website so that members of the public who are (for whatever reason) seeking to access the applicant's website are directed there. Whilst disclaimers (particularly on the labels for products) are often regarded as insufficient to avoid the public being misled, the same considerations are not applicable in the case of a website. 153 Cross injunctions should be granted so as to give effect to this conclusion. I direct that the parties bring in short minutes of order which formulate an appropriate injunction. The claim and cross claim are otherwise dismissed. I will hear argument on the question of costs unless there is agreement as to the appropriate costs order. I certify that the preceding one hundred and fifty-three (153) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Hely.

Counsel for the Applicant: D K Catterns QC, J R Baird

Counsel for the Respondent: R McDougall QC, S Ivantsoff

Date of Hearing: 10, 11, 12 December 2001