FEDERAL COURT OF AUSTRALIA

Sumitomo Mitsui Banking Corporation v Sumitomo Mitsui Financial Group Pty Ltd (No 2) [2009] FCA 496

PRACTICE AND PROCEDURE – final hearing in the absence of the respondent – default procedure in case injunction not obeyed – lump sum costs order

TRADE AND COMMERCE – appropriate form of relief – passing off and s 52 of the Trade Practices Act 1974 (Cth) – respondent registered as a corporation – deceptively similar name to the applicant’s name – respondent ordered to change its name  

Corporations Act 2001 (Cth), s 147, s 153  

Trade Practices Act 1974 (Cth), ss 52, 80 and 87

Federal Court Rules, O 37 r 3  

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

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

13 MAY 2009

SYDNEY

THE COURT:

1.                  ORDERS that 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).

2.                  ORDERS that, within 14 days of the date of the making of this order, the respondent do all things necessary to effect a change of its name to a name which does not include the words “Sumitomo” or “Mitsui” or any combination of those words.

3.                  ORDERS AND DIRECTS that, in the event that the respondent fails to comply with order 2 above, Simon Walter Johnson, the solicitor for the applicant, be appointed by the Court to do all things (including executing all instruments, documents and things, whether in the name of the respondent or otherwise) as may be necessary to effect a change of the respondent’s name from its current name to its ACN and any other words that s 147 of the Corporations Act 2001 (Cth) requires.

4.                  ORDERS that the respondent pay the costs of the applicant of and incidental to these proceedings including reserved costs assessed at the amount of $40,000. 

5.                  GRANTS to the applicant liberty to apply on short notice should any difficulty arise in relation to these orders.

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                                             On 30 March 2009, I delivered reasons for judgment and made orders as a consequence of those reasons (Sumitomo Mitsui Banking Corporation v Sumitomo Mitsui Financial Group Pty Ltd [2009] FCA 300). 

2                                             The orders which I made on 30 March 2009 were interlocutory.  The proceedings have been listed before me today for final hearing.  As was the case on 30 March 2009, there has been no appearance either by or on behalf of the respondent although the listing of the matter today was notified to the respondent at its registered office.  The matter has also been called outside the Court. 

3                                             In the circumstances, the applicant seeks relief in the absence of the respondent.  The relief which the applicant seeks is set out in Short Minutes of Order which have been handed up to me and which I shall mark as MFI-1. 

4                                             It is not necessary for me to repeat what I said in the earlier reasons for judgment.  It is quite clear that the respondent intended to exploit the applicant’s established reputation in Australia in the markets in which the applicant has operated for some years and, as I said in the earlier judgment, by registering itself under its present corporate name, the respondent is likely to mislead or deceive members of the public into believing that it has some association with the applicant. 

5                                             The applicant, in my view, has made out a case both in passing off and pursuant to ss 52, 80 and 87 of the Trade Practices Act 1974 (Cth).  The evidence tendered in support of the applicant’s case also makes clear that the principal of the respondent, a Mr Schuleigh, has persistently avoided service of correspondence and process for some months and has probably now left the country.  The evidence before me suggests that no other individual is associated with, or in control of, the respondent. 

6                                             The applicant has sought relief on a final basis in the terms of the interlocutory injunction which I granted on 30 March 2009.  I have no difficulty in granting that relief.  I will therefore make an order on a final basis in the same terms as order 3 which I made on 30 March 2009.

7                                             The applicant also seeks an order requiring the respondent to change its name with a view to removing any possibility that the use of the respondent’s current name might mislead or deceive members of the public and might also constitute passing off.  In substance, I also think that the applicant is entitled to an order more or less to that effect.  In fulfilment of that claim, I propose to make the following order, namely that:

Within 14 days of the date of the making of this order, the respondent is to do all things necessary to effect a change of its name to a name which does not include the words “Sumitomo” or “Mitsui” or any combination of those words. 

8                                             The applicant also seeks relief in the nature of default relief should the respondent fail to comply with the order which I just made.  A question arises as to what power, if any, this Court has to make the orders which the applicant seeks.  In the course of argument, Counsel for the applicant drew my attention to the provisions of O 37 r 3 of the Federal Court Rules.  That rule is in the following terms:  

3          Substituted performance

(1)        Where a judgment or order requires the person bound to do an act and the person bound does not do the act, the Court may:

(a)        direct that the act be done by a person appointed by the Court; and

(b)        order the person bound to pay the costs incurred pursuant to the direction.

(2)        Subrule (1) does not affect any other mode of enforcement of the judgment or order, or the powers of the Court to punish for contempt.

9                                             It seems to me that that rule empowers the Court to take a sensible approach to ensuring that its orders are complied with.  In particular, it seems to me that I may accommodate the claim with which I am presently dealing by resort to that order.

10                                          Further, I think I can make an order now which will satisfactorily deal with the matter in order to save time and avoid the expenditure of unnecessary costs.  For these reasons I propose to make the following additional order:

I direct that, in the event that the respondent fails to comply with order 2 above, Simon Walter Johnson, the solicitor for the applicant, be appointed by the Court to do all things (including executing all instruments, documents or things, whether in the name of the respondent or otherwise) as may be necessary to effect a change of the respondent’s name from its current name to its ACN and any other words that s 147 of the Corporations Act 2001 (Cth) requires.

11                                          In light of the above decisions it is appropriate that the respondent be ordered to pay the applicant’s costs of and incidental to these proceedings.  I have been informed from the bar table that the actual costs incurred by the applicant are of the order of $62,000.  Although I do not have evidence as to that amount or a breakdown of what work was done in the matter, it seems to me that the interests of justice require that a lump sum order for costs be made in favour of the applicant in order to avoid unnecessary expense being incurred by the applicant in a taxation of costs in circumstances where the respondent has shown no interest whatsoever in the proceedings. 

12                                          Doing the best I can and appreciating that the assessment which I am about to make is rather broad, but taking into account my detailed knowledge of the matter and the work that was done in order to bring the proceedings forward, I propose to order that the respondent pay the costs of the applicant of and incidental to these proceedings, including reserved costs assessed at the amount of $40,000. 

13                                          Finally, I grant to the applicant liberty to apply on short notice should any difficulty arise in relation to the orders which I have made.

Associate:

Dated:         18 May 2009