World Series Cricket Pty Ltd Parish, Robert James [1977] FCA 77

Federal Court of Australia|1977-07-01|Before: Brennan JJ

Trade Practices - Interim injunction - Conduct alleged to be misleading and deceptive - Principles applicable to interim injunctions. 'Trade Practices Act 1974, ss.52, 53(c)

World Series Cricket Ptv. Limited v. Robert James Parish

NEW SCULH VaLhs DISTRICT REGISTRY ) No. G72 of 1977

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT GH AUSTRALIA

BOWEN C.J.: This is an appeal from the decision and orders of a single Judge of this Cow't granting an interin injunction. The proceedings were comnenced by Mr. Robert Janes Parish. He obtained an order nisi callang upon World Series Cricket Pty. Limited to show cause why certain injunctions set forth in five numbered paragraphs shovid not be granted against it. On the retura of the order, which was fixed for the next day, the matter was dealt

with by -Ehe Judge below on an interlocutory basis.

Iir. Parish is the Chairman of the Australian Cricket Board.

which is an administrative body that for many years has

included amongst its functions the organisation of representative cricket matches between Australia and other countries. These matches are known as test matches and the cricket pleyed in

those matches is known as test cricket. The Avstraliaa

Cricket Board appoints selectors to select cricketers to represent Australia. The Board is a member of the International Cricket Conference which is an association whose members are

the governing boards of various cricketing countries. International cricket 1s generally controlled by the Internationil Cricket Conference, but when Australia plays a series of

test matches with another country, that test series is organised by the Australian Cricket Board and the cricketing administrative body of the other country concerned, Thus, for many years,

when test cricket has been played in Australia, the only Australian body concerned in the organisation of those cricket

Although Mr. Parish is the Chairman of the Australian Cricket Board, he did not commence the action in a representative capacity for the Board, but brought the

It was common ground that the appellant is a company which is organising a series of cricket matches to be played in Australia in the coming cricket season, some of which

will be knowm as "Super Tests". The appellant, 1tt appears, has

entered into contractual arrangements with a number of cricketers who formerly represented their countries in test cricket. These arrangements provide that those cricketers will participate in the series of cricket matches organised by the appellant. The appellant's proposals first became publicly known on 14th May 1977 and since then, there has been widespread publicity about the proposed "Super Tests". Those matches will be played between teams that will include teams made up of Australian cricketers which will be called Australia or fustraliats team, and West Indian cricketers who

will form a team known as West Indies, or The Vest Indies team.

On or about the 21st September 1977 there fas published in a megazine known as the Australian Vomen's Weekly a colovred brochure prepared by the appellant. The issue actually bore the date 28th September 1977. It was on this brochure that Mr. Perish based part of his complaint.

The brochure 1s in evidence as Exhibit npn, It contains statements about the proposed Super Test series, photographs of cricketers who will be participating in the series. a schedule of the dates of the matches, and an order form by which tickets to the matches may be obtained. The photographs include photographs of players wearing cricket caps which bear the insignia of the countries for whom they played test cricket.

"On November 20 this year, the best of the world's professional cricketers arrive in Melbourne to join Australiats top players in a summer - -long series of the most exciting professional cricket matches ever seen in Australia".

"World Series Cricket has contracted the world's top cricketers to participate 1n this summer's Super Test series. They anclude such players as ... Australra?s record-breaking wicket keeper Rod Marsh ... The great Dennis Lillee ... back in action in the Super Tests to strengthen the Australian team",

"Australia: Undoubtedly a much stronger team than that vhich played in England".

"West Indies: The brillient West Indies squad, including ..."

"The world: This team willbe made up of the best players from the West Indies team plus ... (here are listed a number of English, Pakistani and South

African cricketers) ... who have not been seen under Test Match conditions in Austral2a for some time",

Prominent on the brochure are the words "World Series Cricket", and a logo of the appellant bearing the words "World Series Cricket". Emphasis is placed in the brochure on the ability

of the cricketers concerned and the expectéd high standard of the cricket matches, the prize money being offered to the winning teams, and the coaching clinics which the cricketers will give. It is also emphasised that the Super Tests will be played over five days, and that all matches will be played under accepted International Cricket Laws and Standards. There was evidence that the magazine in which the brochure was published, the Australian Vomen's Weekly, is read by approximately 45% of women in Austrelia over the age of sixteen, and by approximately 41,000,000 men and that the magezine hes a circulation which exceed:

The proceedings vere brought by Mr. Parish pursuant to s.80 of the Trade Practices Act 1974. He sought anjgunctions restraining World Ser1es Cricket Pty. Limited from engaging in conduct which was alleged to contravene ss.52 and 52(c) of the Act. Section 52 provides that a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or which is likely to mislead or deceive. Seclion 53(c) provides, so far as is relevant, that a corporation shall not, in trade or commerce, in connection with the promotion by any means of the supply of services, represent thiv services have sponsorship or approval they do not have. The main complaint made on behalf of Mr. Parish before the learned Judge below, appears to have been that the brochure (Exhibit "B") was misleading and deceptive in that it might mislead a reader into thinking that the series of cricket matches being orgautecd py World Series Cricket Pty. Limited were organised by the Australian Cricket Board. Before this Court the complaint was expanded. It vas submitted that the vord "Test", the emblems and motifs showm on the players' outfits, the descriptions of the 'competing teams by reference to nations or countries, the reference to the traditional laws of cricket, were intended to and did evoke 9 response in the recipient of the publication that reference was being made to something which, 1n the minds of the public, had only had one character for the last fifty years; in other words, it was

to the tradition of test cricket that the appeal was made.

The learned Judge held that the brochure would mislead a significant section of the public into whose hands it came, anto believing that "Super Tests" were tests organized

During the course of the hearing below, the appellant informed the Court that it had prepared a number of television advertisements which 17 had arranged to be shown on television in Sydney and Melbourne. The learned Judge found that one of these advertisements would be likely to contravene s.52 because it used the words "Super Tests" on three occasions, on one of which the context suggested an identification with test

Pty. Limited be restrained from engaging in the folloving conduct:- -

1, Any conduct that is misleading or deceptive or is likely to mislead or deceive.

Publishing*tor causing to be published any further advertasemenl in the form of the advertisement being exhibit EFG 7 to the affidavit of Edward Furnival Griffin sworn 22nd September, 1977 and filed herein.

Representing expressly or by implication that any cricket matches organised by it have the sponsorship or approval of or any affiliation with the Australian Cricket Board or the International Cricket Conference.

Referring 1n such a way as to be misleading or deceptive to any cricket matches organised by it as "Tests" or "Test Serles" or "Super Tests".

Referring to any teams of cricket players in cricket motches organised by it as "Tho Australian Team" or ""hustral.ra" or any similar expression in such a way as to mislead or deceive."

The application before the learned Judge below for an interim ingunction was based upon s.80(2) of the Act. That section provides:- -

"(2) Where in the opinion of the Court is*is desirable to do so, the Court may grant an interim angunction pending determination of an application under sub-section (1)".

Section 80(1) empowers the Court, on the application of, inter alia, "any other person", to grant an injunction restraining a person from engaging in conduct that constitutes or would constitute a contravention of ss.52 or 53(c). The Court may grant the interim tnjunction whether or not it appears that the person to be restrained intends to engage again, or to continue to engage, in such conduct (s.80(4)). Where an injunction is sought by the Minister or the Commission, an undertaking as to damages cannot be required of them as a condition for the

The appellant submitted that the learned Judge below misapprehended his function on an application for an interin injunction, in that he found as a fact on the evidence before him that the appellant's advertisement would be likely to mislead or deceive, and grounded the injunctive relief solely on that

interim injunction under s.80(2) vhere, 1n 2ts opinion, "it is

desirable Eo do so". These words confer a judicial discretion of the widest kind upon the Court. It is not an arbitrary discretion but one to be exercised judicially in accordance

with principle. The principles concerning the grant of interlocutory injunctions were developed in the Court of Chancery, but have been moulded to what is appropriate for different jurisdictions in which interlocutory relief may be obtained. Whether or not the jurisdiction being exercised is equitable,

it is inherent in the nature of en epplication for interlocutury relief that the evidence upon which the application must be

determined will be incomplete and unsatisfactory for the purpose

Pty. Limsted (1968) 118 C.L.R. 618, the Full Court of the Hugh Court granted an interlocutory injunction pursuant to its statutory jurisdiction under s.31 of the Judiciary Act 1903,

to make such orders in the cause before 1t as were just. The High Court was seized of the matter under the Patents Act 1952, and was not exercising any inherent equitable jurisdiction. Nevertheless, it invoked principles developed in equity to determine how it should exercise its statutory jurisdiction, though in some ways departing from those principles, where the special nature of the patent jurisdiction made it appropriate to do so. The High Covrt expressed the view thet in all cases,

including patent cases, a court, when contemplating granting or

refusing interlocutory relief, must direct itself to both the

prima facie strength of the plaitiit's claim and the balance

of convenience. A plaintiff 1s required to make out a prima

facie case, "in the sense that if the evidence remains as it ls, there is a probability that at the trial of the action, the plaintiff will be held entitled to relief". (Ipia. p.622). The strength of the case which the plaintiff must make out will depend upon the nature of the right which he is seeking to assert, and the consequences which w211 flow from the making of the interlocut:: order. However, where the facts are seriously in dispute, the court will not undertake a preliminary trial of the action in order to forecast a probable result, but rather, if the

plaintiff has a fair chance of success (and what will be

required will vary according to the nature of the case), the

court will proceed to look to the balance of convenience.

Lords in American Cyanamid v. Ethicon Limited (1975) A.C. 396

that if the court is satisfied that there 1s a serious question to be tried, it should not further test the strength of the pleintiff's case before deciding the balance of convenience. It may be that in a case such as the present there is no essential aiffereace between the views of the Iligh Court and of the House

of Lords as to the strength of the case which the applicant

must make out. Whether it is necessary to establish a prima facie case in the Beecham sense, or a serious question to be tried in

the American Cyanamid sense, what will. be required will vary from

case to case. If there is a divergence in approach, it would

'be proper for this Court to follow the gudgment of the High Courc

in Beecham Group Limited v. Bristol Laboratories Pty. Limited. (See Ashburt: | O12 N.L. v. Alpha Mincorals N.L. (1971) 123 C.L.R. 614 at pp.627 and 641; Firth Industries Limited & Ors. v.

Polyglas Engineering Pty. Limited (1975) 132 C.L.R. 489; Fortuns

Holdings Pty. Limited v. Deputy Federal Commissioner of Teration

(1976) 76 A.T.C. 4312 at p.4336; Winthrop Investments Limited v.

Winns Ltd. (1975) 2 N.S.W.L.R. 666 at 673, 708. cf. Hoffmanv-La Roche & Co. A.G. & Ors. v. Secretary of State for Trade and

Industry (1975) A.C. 295, per Lord Daplock at 360-361).

Proceedings under the Trade Practices Act have e special character in that the Act deals with the protection of the public interest, and in the instant case, with the protection of consumers. In the course of protecting that mrblic interest, the Act also enables a party to seek relief from Injury to his owm interests. An applicant for an injunction under s,.&0 need not show that a proprietary interest of his is arfectcd, or that he has suffered special damage, or indeed, that he personally has suffered any damage at all. Even where the application is prought by a rival competitor seeking redress of damage to his business caused by the allegedly unfair and illegal practices of the respondent, the application, thovgh it vindicates or protects the private interests of the competitor, at the same time secures the public interest of consumer protection. Though, for example, the complaint under Part V of the Act 1n some cases closely resembles an action for passing off or trade 1.bel, it is nevertheless an action to protect Lhe consuming public from being misled or misinformed. For competition between rival traders properly to be promoted, it is necessary that the

relevant market 1s kept adequately informed about the goods c:

services available for purchase, and is not misled by deceptive

These factors, however, although important in determining what considerations should be taken into account when assessing the strength of the applicant's case and when weighing the balance of convenience, do nob require that the balance of convenience should be ignored or that a party's I entitlement to anterlocutory relief should depend on an assessment ' of facts made from unsatisfactory evidence. The reasons which militate against such a course apply with equal force to

proceedings under the Trade Practices Act as they do elsewhere.

That is not to say thet there are not special factors to be taken into account when exercising jurisdiction under the Trade Practices Act. Special considerations with respect to interlocutory injunctions ply in other fields including' common law injunctions to restrain defamation, injunctions to restrain breach of a patent and injunctions to restrain breach of copyright. In the same way special considerations will arise ' under the Trade Practices Act, and the Court will not necessarily apply all of the principles which a court of equity would apply

in a suit where only individual interests of private litigants were

In has reasons for judgment the learned Judge below stated certain findings of fact. These were not expressed to be findings of fact sufficient to establish that the epplicant

had such a possibility of success on the final hearing that 1t wovld

justify the Court in granting an interlocutory injunction if, on the balance of convenience, it was appropriate to do so. Thus his Honour found that the brochure inserted in the Australian Women's Weekly magazine "would 'mislead a significant section of the public into whose hands it came into this error that 'Super Tests? were tests organised by the Australian Cricket Board." His Honour found an advertisement for television which used the words "Super Tests" on one occasion in a context suggesting identification with Test Matches as previously organised was "...probably likely to mislead because of such identification". As to the remaining advertisements, his Honour found that "...on the present state of the evidence I am not satisfied that

These findings were attacked by the appellant as being final findings of fact, and the respondent did not Gispute that that was the case. It was also assumed by both parties to the appeal that the Judge below had not considered where the balance of convenience lay. These assumptions might not be entirely accurate. His Honour did on more than one occasion qualify his findings as being made "on the present state of the evidence", and although his Honour did not refer

to the balance of convenience by using that phrase, he did

pear in mind, "...that there appear to be alternative expressions which would seem to be sdequate to describe

tSuper Tests and it would appear also that to emphasise

the difference between 'Super Tests* and tests erranged py the Australian Cricket Board would present no difficulty". That observation would seem to be relevant

However, on the whole, I am of opinion that his Honour did fall into error in discharging his task 1n that he did not direct his mind to finding whether a prima facie case had been made out nor to the question whether, if it had, the balance of convenience required the grant of injunctive relief. Furthermore, I am of opinion the orders made were 1n some respects, to

which I refer later, open to objection. In the circumstances

I think the Court should intervene and come to its own

Mr. Parish specifically complained of the brochure which is Exhibit "B", and of the television advertisements. _

His complaint also related generally to the use of the words

"Tests" or "Test series" or "Super Tests" and the reference

to "Australian team" or "Australia" in association with a cricket team, where used in the brochure or elsewhere including television advertisements. .

It 1s suggested that persons reading or seeing the material referred to might wrongly come to the conelusion that the matches being publicised by the appellant were organised or had the approval of the Australian Cricket Board or the International Cricket Conference, or were organised or had the approval of those 1n authority in Australia who had hitherto controlled cricket. Counsel for Mir. Parish also argued that there was a possibility or error in that a person reading this material might wrongly conclude that matches being conducted by the appellant were the last in a descending traditional series of international games and in some way had the same quality. This last argument is somewhat elusive and may perhaps be said to depend upon giving to the word "test"

a secondary meaning which would not be met by the matches conducted by the appellant and which does not necessarily involve any knowledge as to who are the authorities controlling cricket

For the appellant, World Series Cricket Pty. Limited, it was argued that anyone sufficiently knowledgeable about cricket to come to the conclusion that the matches were being organised or approved by the Australian Cricket Board or the International Cricket Conference or the authorities

controlling cricket in Australia, would inevitably be aware

of the greatly publicised conflict between the appellant and

those authorities 1n relation to the staging of these matches.

However, a person may have.some acquaintance with established test cricket without knowing by whom that cricket is organised, and if he is misled into believing that World Series cricket is of the same nature as test cricket, he may conclude that it is organised by whatever body organises test cricket. Advertisements or publications that mislead persons into that error would contravene s.52. In the same way it is sufficient in a suit for passing off that the public associate the defendant's goods as being of the same manufacture as those of the plaintiff because of their similar get-up and appearance,

It is to be remembered that the advertisements are designed to meet a very wide audience which will include people possessing the widest possible range of knowledge or lack of knowledge about cricket and previous association or

At the interlocutory stage, it is, I think, inadvisable to express detailed or concluded views on the evidence relating to the issues in dispute. Briefly, I am of opinion that a prima facie case in the Beecham sense has been established by Mr. Parish for some form of interlocutory relief in relation to the use of the words "Tests" or "Test Series" or "Super Tests". The word "Test" is a word which commonly refers to established

test cricket. It is not uncommon for that word to be qualified

py an adjective, as in the expression "Centenary Test". I

am also of opinion that a prima facie case has been established for interlocutory relief of a limited kind in relation to the

use of the words "the Australian team" or "Australia". These

are ordinary words in the English language. Any attempt to acquire a monopoly in their use should be discouraged. However, I think a prima facie case has been made for restraining their use in relation to matches organised by the appellant between Australian and West Indian players. Such matches were advertised

in the brochure (Exhibit "B") as "Australia v. West Indies".

that it had no intention of publishing or causing to be published

any further advertisement in the form of the brochure, Exhibit "B", -

Although the Court may grant an interim injunction whether or not the person intends to engage in conduct of the kind sought to be prohibited, (s.80(4)), nevertheless, in the circumstances, I would be content to allow matters to rest on the appellant's assurance pending the hearing. I would, in any event, propose

In relation to the matters on which Mr. Parish has made out a prima facie case, the question arises whether, on the balance of convenience, injunctive relief should be granted.

For the appellant it was submitted that the respondent was guilty of laches which was a discretionary- factor which the Court ought to take into account in weighing the balance of convenience so as to

disentitle the respondent to relief. It is not an easy matter to

determine the relevance of a defence of laches to an application for

an interim injunction under the Act. If the application was fcr a

final injunction, it would usually be the case that laches

in the sense of mere delay (if mere delay can constitute laches), or delay sufficient to constitute in equity an equitable release or abandonment of the claim, would rarely disentitle an applicant to relief under s.80. Even where the laches consists of delay which has led the respondent to alter his position to his detriment in reliance on the non-enforcement of the Act, the applicant will not automatically be precluded from the injunction he seeks. Because of the public interest involved, the Court will be slower to withhold relief than would an equity court in a suit involving only individual interests. As was said by

the Privy Council in Associated Minerals Consolidated Limited v.

Wyong Shire Council (1974) 29 L.G.R.A. 323 at p.334:-

"The injury to a public interest by denial of relief, its extent and degree of irremeciability, must be weighed against any loss which the defendant may have sustained by the plaintiff standing by while the Gefendant incurs expense or, if such is the case, misleading the defendant anto thinking that its activities were or wovld be permitted",

Thus the effect of laches will differ from case to case and will depend on factors which will include the identity of the applicant and the nature of his claim, the nature of the delay and of

the prejudice it caused to the respondent, and the nature

Where the application is for an interim injunction, the Court will no doubt be prepared to give a greater degree of weight to a defence of laches, especially if the

delay has caused the respondent to alter his position to his

detriment. This, however, will always depend on the circumstances of the particular case and the degree of public interest involved. Of course in equity, as an applicant for an interlocutory injunction seeks urgent relief, the application must be brought promptly and mere delay can bar lhe applicant's claim. This case however is brought solely for the protection of the public interest. Even if the evidence were such that a case of laches could be made against Mr. Parish, that circumstance would

not weigh heavily in considering the desirability of granting

the ingunction. In fact, however, it is the concatenation of symbols, names and photographs in the brochure Exhibit "B" and

in the television advertisements which Mr. Parish complains

has a tendency to mislead or deceive. Although it waswell

publicised months before the application was brought that fir. Packer

or J.P. Sport Pty. Limited (now World Series Cricket Pty. Limited would be staging a series of "Super Tests" in which an "Australian team" would be competing, nevertheless I am satisfied that the respondent moved promptly on the first material that might contravene ss.52 and 53(c).

On the balance of convenience it ought to be noticed that Mr. Parish does not allege that he ought not to have been required to furnish an undertaking as to damages. Nor did the appellant attack the value of that undertaking on the ground that Mr. Parish 1s a private citizen appearing in his personal capacity about whose means to satisfy the undertaking there appears to be no evidence. The appellant did attack the undertaking on the ground that the terms in which the orders were

made rendered it impossible to enforce the undertaking. As the

court considers that the orders require amendment in any event,

it is not necessary to deal further with that submission,

where there is a prima facie case made out by the applicant that the consumer protection provisions of the Act have been contravened, it is necessary to look, on the one hand, to the possible damage to consumers that would flow from a refusal of the interlocutory injunction, and on the other, to the damage that would flow to the advertiser if the injunction is granted but not made perpetual at the final hearing. This is a far more

difficult task than weighing two private interests against each

Before the learned Judge below, the appellant adduced evidence that it had made arrangements for obtaining time for advertising its series on television, and that a programe of advertising had been planned for the available time slots. , The trial Judge did not deal with this evidence, perhaps because he considered that it was not necessary to consider the balance of convenience. Accepting that evidence, it appears that the appellant will have suffered some injury which cannot be adequately compensated by the undertaking for damages, if at the final hearing, the injunctions are refused. On the other hand, if the conduct is found to contravene ss.52 or 53{c), the damage to the public caused by the refusal of the interim relief would

Although the appellant has made arrangements for advertising on television, it would seem that it could substitute for any advertisement which has been prepared which might infringe the order of the Court, advertisements which do make any necessary distinction between the material advertised and the cricket matches organised by or sponsored or approved by the Australian Cricket Board. That is, the loss caused to the appellant if the interim injunction is not made perpetual upon the final determination of the matter, though it may not be adequately compensated for by the undertaking as to damarces. will not be wholly irreparable. Further, unless there is something which tilts the balance of convenience in favour of the appellant, it is usually proper to maintain the status quo, in this case, by enjoining the appellant from commencing this new course of conduct that is alleged to be a breach of ss.52

The appellant submitted that if the case was a proper one for injunctive relief, the orders made below should not be allowed to stand without amendment. I propose the substitution of new orders for those made below and do not find it necessary to deal in any detail with the criticisms made in relation to those orders. It should be mentioned however, that one of the orders made restrained conduct that was misleading or deceptive and another two restrained the use of certain expressions "in such a way as to be misleading or deceptive" or "in such a way as to mislead or deceive". In my view, it is often undesirable

to frame interlocutory orders in such a way as to raise the very

zssuves that will fall to be decided at the 'hearing. Jf the conduct is again called in question, it w21l usually not be possible to determine, on a contempt application, whether or

not the interlocutory order has been infringed (Australian Consolidated Press Limited v. Morgan & Anor. (7965) 112 C.L.R. 483). By leaving that question to the final hearing, there will be a failure to meet the need for urgent relief, and the party enjoined will, on the final hearing, be put at risk not only of a final injunction but also of being in contempt. That is not a

purpose which an interlocutory order 1s meant to serve.

I propose that the orders made by his Honour be set aside. Subject to an appropriate undertaking as to damages being given by Mr. Parish, I propose that an interim injunction be granted pending the determination of this matter or further order restraining World Series Cricket Pty. Limited from engaging in the following conduct in trade or commerce -

Referring to cricket matches organised by it as Tests or a Test Series or Super Tests without clearly distinguishing those matches from the matches controlled wholly or in part by the Australian Cricket Board or the International Cricket Conference.

Referring to any team of cricket players in cricket matches organised by it between Australianand West Indian players

as the Australian team or as Australia without clearly Gistinguishing that team from any team selected or controlled by the Australian Cricket Board.

I propose that the costs of the proceedings below and of this appeal be costs in the cause. I propose thst

Liberty be reserved to either party to apply on two days notice.

) ) HEW SOUTH WALES DISTRICT REGISTRY ) No G~72 of 1977 ) GENERAL DIVISION )

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

WORLD SERIES CRICKET PTY. LIMITED Appellant (Respondent)

FRANKI J.: This is an appeal by World Series Cricket Pty. Ltd. (the appellant) against an interim injunction granted by a single Judge of this court on the application of Mr. Robert James Parish, the respondent herein. Mr. Parish is the chairman of the Australian Cricket Board but the proceedings were brought on his own behalf and not on behalf of the Board.

The appellant is a company organised to promote international cricket matches, the first of which are to take place during the forthcoming cricket season in Australia. Since this appeal is in relation to interlocutory proceedings I do not propose to deal in great detail with the evidence.

It appears that the first announcement in the press that the appellant was promoting international cricket appeared early in May 1977 and there was a considerable amount of publicity in the media directed to the matter of disputes, or likely disputes,bectween the appellant and those previously conducting international cricket and to the position of

players who might wish to participate, not only in the games

promoted by the appellant, but also in games arranged hy those who had previously arranged international cricket.

"THE COURT ORDERS THAT: the respondent company be restrained from engaging in the following conduct:-

Any conduct that is misleading or deceptive or is likely to mislead or deceive. 5
Publishing or causing to be published any further advertisement in the form of the advertisement being exhibit "B".
Representing expressly or by implication that any cricket matches organised by it have the sponsorship or approval of or any affiliation with the Australian Cricket Board or the International Cricket Conference.
Referring in such a way as to be misleading or deceptive "to any cricket matches organised by it as "Tests" or "Test Series" or "Super Tests".
Referring to any teams of cricket players in cricket matches organised by it as "The Australian Team" or "Australia" or any similar expression in such a way as to mislead or deceive." . It was cenceded that the failure to limit the orders in time was an accidental slip or omission. The appellant based its appeal on three grounds, first, that the learned Judge failed to recognise and apply the principles by which the court should be guided in the exercise of its discretionary power under s. 80(2) of the Trade Practices Act 1974, secondly, the learned Judge made various errors of law and fact and thirdly, that the form of some of the orders made was

The proceedings were based on s. 52 and s. 53(c) of the

Act and Mr. Parish had sought an interim injunction under the

-3- provisions of s.80 of the Act pending the determination of the application for a permanent injunction.

Section 80(1)(c) of the Act provides 'that "any other person" may apply for an injunction restraining a person from engaging in . conduct that constitutes or would constitute a contravention of 8.52 or s.53(c). It was common ground that no question arose as to the right of the respondent to commence the proceedings.

An advertisement (Exhibit B) by the appellant was published as a four page insert ("the brochure") in a publication "The Australian Women's Weekly" on or about the 21st September 1977. This brochure described the cricket matches to be staged by the appellant as "Super Tests", played under "Test Match conditions", referred to a team of Australian players as "The Australian team" or "Australia" and showed pictures of players in action wearing caps as worn by players playing in the past in test matches for Australia, England or the West Indies. On the 22nd September the respondent obtained an order nisi returnable the next day, and it was in these proceedings that the interim injunction was granted on the 30th September 1977.

The appellant attacked the first order in particular upon the ground that it was not restricted to "in trade or commerce", Similar criticism 'is also relevant in considering orders 3, 4, and 5. The appellant also directed particular attention to the following passage in the learned Judge's reasons for judgment:

"T am of the view that such brochure would mislead a significant section of the public into whose hands it came into this error that "Super Tests" were tests organised by the Australian Cricket Board."" It was argued that the learned trial Judge had approached . the matter under consideration by making final findings of fact and by not applying the appropriate discretionary considerations. Under s. 80(2) the court may grant an interim injunction were in

The principles to be applied where interlocutory injunctions are sought are set out in Beecham Group v. Bristol Laboratories Ply. Ltd. (1968) 118 C.L.R. 618. This case was referred to by Stephen J., in Firth Industries Ltd. v. Polyglass Engineering

I am of the opinion that the principles set out in Beecham Group v. Bristol Laboratories Pty. Ltd., supra, were applicable to the proceedings before the learned Judge and before granting an interim injunction he had to be satisfied that a prima facie case had been made out. It was also submitted by the appellant that the learned Judge had not properly considered the various questions which arise under s. 80(2) and (4). One of the matters relied upon was that there had been some evidence that the brochure was not to be repeated but that the judge, whilst not rejecting this evidence, formed a conclusion not open to him. I do not consider this to be so. Section 80(4) permits the Court if it thinks it desirable to do so, to grant an interim injunction wnether or not it appears to the Court that the person sought to be restrained intends to engage again, or to continue to engage in conduct contrary to s. 52 or s.53{c) and indeed, in the case of an interim injunction s.80(5) permits this whether or not there is an imminent danger of substantial damage to any person. The learned Judge also had before him certain television advertisements which the appellant was considering it might use.

I turn now to consider the form of the orders made. Orders 1, 3, 4 and 5 are not limited to conduct in trade or commerce. Because of this, and because His Honour made what appears to be a final finding of fact in relation to the brochure, I consider that the appellant has made out a sufficient case to

warrant the intervention of this Court. In performing its task

this Court is entitled to exercise the powers conferred on 1t

-5- under ss. 27 and 28 of the Federal Court of Australia Act, and the Court should examine the material before the Learned Judge and make such orders as in all the circumstances 1t thinks desirable.

I think that the Court, in deciding whether or not a prima facie case has been made out, is required to examine as the major question whether a significant number of the relevant potential purchasers of tickets would be likely to be deceived or misled by an advertisement on television or elsewhere of the respondent into considering that cricket matches called "Tests or "Super Tests" came from the same people as had organised cricket tests in the past, whether or not the relevant potential purchasers knew who had organised these previous cricket matches. .

This is so particulerly (1) where the use is associated . with other material likely to point in the same direction, and (2) in the absence of any sufficient distinguishing matter appearing at the same time.

It is clear that in the instant case there is no need to show any goodwill or proprietory interest in the applicant for an injunction since the legislation is for the protection of consumers. Because of the findings that I have already made I do not consider that it is necessary in these interlocutory proceedings to have regard to the effect of any advertisements cn persons who ere no more relevant than as viewers of television.

I pass now to consider whether a prima facie case has been made out. Without considering the matter as one would if one were making a final order, on the evidence before the learned Judge, I consider that a prima facie case has been made out that the brochure would be likely to-deceive or mislead at least a sufficient number of potential purchasers of tickets. Whilst it

may be said that the phrase "Super Tests" had not, at the date

-~6- of the advertisement, any positive association with the previous organisers of test matches, 1t does seem that sufficient people would be likely to be misled into thinking that "Super Tests" were ~ matches developed by the organisers of what they had previously known as test matches. In argument before us, the appellant sought to rely on the publicity from which, it alleged, all relevant potential customers would have learnt that there was no connection between those organising "Super Tests" and those who had in the past organised tests. I think that so far as concerns '° a prima facie case, it is likely that a sufficient section of the potential purchasers of tickets would not draw this distanctio and would be likely to be misled or 2eceived. Only this year the Australian public has been exposed to a cricket event called the "Centenary Test".

The words Australia: and Australim team are words of very general import but I consider that a prima facie case has been made ovt in the case of a match organised by the appellant, ° and referred to as being between Australia and the West Indies, for requiring the team described as the Australian Team or fustralia, to be clearly distinguished from a team selected or controlled by the Australian Cricket Board.

It is necessary to consider such matches because it is clear from what appears in the brochure and elsewhere in the evidence, that the appellant has organised such matches for the coming cricket season. I do not consider it necessary to have regard to the position of matches between an Australian team and a team of players from any other country because none are planned by the appellant for the coming cricket season. Matches between a team of Australian players and players representing "The World" are in a different category because I am not satisfied that there

is sufficient evidence that any such matches would be associated

with matches in which the team of Australian players were selected or controlled by the Australian Cricket Board.

I pass now to consider the ques Lion of whal relief, if any, should be granted. It was put to us that on the balance of convenience relief should not be granted because of its effect on the advertising of the appellant. In my opinion, no interim injunction appropriately framed would affect the legitimate advertising of the appellant reasonably describing in a fair manner the activities in which 1t proposed to engage.

Considerable argument took place before us on the question - of whether or not the doctrine of laches applied to interin relief in respect of applications under s.80 based on conduct to which s.52 or s.53(c) applied. Matters which would support a defence of laches seem appropriate for examination in deciding whether it is desirable to grant an interim injunction, but I do not consider that since the function of this legislation 1s the protection of consumers, one should necessarily give effect to the defence unless it is clearly appropriate to do so. Section 80(1)(c) permits a wide variety of people to take proceedings and it is difficult to apply the same principles as one applies in private litigation, where one party has changed his position because of the conduct of the other party. These proceedings have a measure of urgency and are in a comparatively new field of law in Australia and I do not think it appropriate in this judgment to say more than is necessary. I consider that it is sufficient to say that in the matter before us I do not consider that, on the evidence, any conduct of Mr. Parish or lack of action by him in failing to seek relief earlier or otherwise, affords a defence to the appellant in this interlocutory application. It is relevant to note that the brochure was the

first advertisement made by the appellant for the purpose of

I now pass to consider the appropriate form of orders.

The applicant assured the Court that the advertisement in the form of Exhibit "B" would not be repeated and I would accept this assurance.

I do not think Order 5 is appropriate because I consider that, on the material before the Court, the words "...have the sponsorship or approval or any affiliation with the Australian Cricket Board or the International Cricket Conference" are inappropriate to describe the relationship between previously known cricket test matches and the Australian Cricket Board or the International Cricket Conference and, in any event, such order 3 is too uncertain to be desirable. Without wishing to lay down any principles, I consider that it is wndesirable in this case to grant an order based on s.53(c), since an order based on s.52 1s adequate.

i propose that the orders made by His Honour be set aside and thal, subject to an appropriate undertaking as to damages being given by Mr. Parish, an interim injunction be granted pendi ne the determination of this matter, or further order restraining World Series Cricket Pty. Limited from engaging in the following conduct in trade or commerce.

(1) Referring to cricket matches organised by it as Tests or

a Test Series or Super Tests without clearly distinguishing

those matches from the matches controlled wholly or in part

by the Australian Cricket Board or the International

(2) Referring to any team of cricket players in cricket matches organised by it between Australian and West Indian players as the Australian team or as Australia without clearly

These follow the usual form of order in a passing off action where the word to be protected 1s one to which the plaintiff has no exclusive right bus which has achieved a secondary meaning to a significant section of the relevant purchasing public (Kerly's, "Law of Trade Marks and Trade Names", loth ed., pages 442-444), I also note that, in general, the words "without clearly distinguishing" have been considered sufficiently precise and that it has been considered undesirable for such an order to go into detail. It has been said that it is certainly not the business of the Court to give a person instructions or hints as to how near the wind he can sail.

I would order the costs of the proceedings before the Single Judge and of this appeal be costs in the cause. I would also reserve liberty to either party to apply on two day's

preceding pages are a true copy of the Reasons for Judgement herein of his Honour Mir. Justice Founky

At a glance

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Before

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Source

Catchwords

Judgment (300 paragraphs)

Cited By (1)