FEDERAL COURT OF AUSTRALIA

Sumitomo Mitsui Banking Corporation v Sumitomo Mitsui Financial Group Pty Ltd [2009] FCA 300

Corporations Act 2001 (Cth), s 153  

SUMITOMO MITSUI BANKING CORPORATION (ARBN 114 053 459) v SUMITOMO MITSUI FINANCIAL GROUP PTY LTD (ACN 135 090 096)

NSD 212 of 2009

FOSTER J

30 MARCH 2009

SYDNEY

THE COURT:

1.                  GRANTS leave to the applicant to file in Court, to read and to rely upon the affidavits of Alison Armorel Castle sworn on 30 March 2009 and Simon Andrew Marsh sworn on 27 March 2009.

2.                  NOTES the undertaking as to damages given by the applicant by its Counsel.

3.                  ORDERS THAT, until further order, the respondent, by itself, its officers, servants and agents be restrained, in trade or commerce, from:

(a)                In relation to a financial product or a financial service using the name “Sumitomo Mitsui Banking Corporation” or “Sumitomo Mitsui Financial Group” or any name similar thereto; and

(b)               Otherwise using the name “Sumitomo Mitsui Banking Corporation” or “Sumitomo Mitsui Financial Group” or any name similar thereto, other than as required by s 153 of the Corporations Act 2001 (Cth).

4.                  RESERVES the question of costs. 

5.                  ADJOURNS the proceedings for final hearing to a date to be fixed by arrangement with the Associate to Foster J. 

6.                  GRANTS leave to the parties to apply on 24 hours’ notice. 

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

REASONS FOR JUDGMENT

1                     The applicant is a member of a large conglomerate which originated in Japan.   It has a local agent called Sumitomo Mitsui Finance Australia Limited (Sumitomo Mitsui Finance), which is part of the Japanese group. 

2                     The applicant and Sumitomo Mitsui Finance provide banking and financial services together with related products and services in Australia.  Those companies have been involved in such activities in Australia since 2001. 

3                     The applicant is also the owner of Australian Registered Trade Mark Number 840494 (the trade mark) for the name “Sumitomo Mitsui Banking Corporation” being registered in Class 36.  The trade mark was registered on 27 June 2000.  The applicant has been using that trade mark in Australia to promote, market and offer services under or by reference to the trade mark.

4                     On 27 January 2009, a person who describes himself as Franklin Christopher Schuleigh, made application to the Australian Securities and Investments Commission (ASIC) to register an Australian proprietary company under the name “Sumitomo Mitsui Financial Group Pty Ltd”.  ASIC, in due course, registered that company.  On the application which Mr Schuleigh made, he showed the postal address of the company, its registered address and its principal place of business as Suite 55, 377 Kent Street, Sydney.  He also showed himself as the sole director with a residential address of 105 Adelphi Street, Rouse Hill, NSW. 

5                     By letter dated 27 January 2009, addressed to Sumitomo Mitsui Financial Group Pty Ltd, ASIC advised the principal office holder of that company of certain confidential details concerning that company’s registration.  The letter was sent to the Kent Street, Sydney, address shown on the application for registration to which I have referred.  It was then, apparently, passed on or sent to the applicant who received it on 2 February 2009.  In or about early February 2009, the applicant also mistakenly received an envelope from Suncorp Metway Ltd which was addressed to the respondent.  That envelope contained a cheque book for an account opened by the respondent with Suncorp Metway Ltd in the name:  “Sumitomo Mitsui Fianacial [sic] Group P/L”.

6                     The registration of the respondent as a private company limited by shares and the receipt of the mail intended for the respondent caused the applicant to write letters of demand to the respondent, at least one of which was sent to both of the addresses known to the applicant.  The address, 377 Kent Street, Sydney, is a residential apartment building.  Suite 55 appears to be occupied by persons unconnected with Mr Schuleigh or the respondent.  The address at Rouse Hill is also a residential property.  It is owned by Ms Penelope Shiralee Goodman.  It appears that Mr Schuleigh is or once may have been in occupation of that property under some arrangement with Ms Goodman.

7                     Comprehensive efforts have been made by the applicant to serve the process by which these proceedings were commenced and supported.  Documents have been attempted to be left at the only two addresses known and identified in the ASIC records as addresses for the respondent and its sole director but Mr Schuleigh has not been personally served. 

8                     The interlocutory application made by the applicant was fixed by me for hearing this morning.  There has been no appearance this morning either by or on behalf of the respondent.  The applicant seeks the interlocutory injunction claimed by it in the Amended Application filed on 23 March 2009 and, by its Counsel, gives an undertaking as to damages.   

9                     It seems to me quite clear that Mr Schuleigh has taken steps to establish the respondent with a view to conducting some kind of business activity.  It also seems quite clear to me that there is a strong prima facie case or serious question to be tried on the causes of action relied upon in the Amended Application.  The respondent intends to exploit the applicant’s established reputation in Australia in the markets to which I have referred and, by registering itself under its present corporate name, is likely to mislead or deceive members of the public into believing that it has some association with the applicant.  The balance of convenience favours the grant of an interlocutory injunction.

10                  In those circumstances, I will grant an order substantially in the terms of the interlocutory injunction sought by the applicant and I note the undertaking as to damages given by the applicant by its Counsel.  I will reserve the question of costs for the moment.  I will adjourn the proceedings for final hearing to a date to be fixed by arrangement with my associate.  I grant leave to the parties to apply on 24 hours’ notice. 

Associate:

Dated:         31 March 2009