FEDERAL COURT OF AUSTRALIA

Collins House Pty Ltd v Golden Age Sunrise Development Pty Ltd [2015] FCA 724

THE COURT ORDERS THAT:

1.    The application for interlocutory relief is refused.

2.    Any party who wishes to file and serve evidence on the question of costs and/or alternatively submissions on the question of costs is to do so on or before 4 pm on Friday 31 July 2015.

3.    Pursuant to s 37AF of the Federal Court of Australia Act 1976 (Cth), to prevent prejudice to the proper administration of justice, in particular, to prevent disclosure of commercially sensitive information, until further order, the page marked “Confidential Exhibit DA-A” appearing at page 27 of the affidavit made by Mr Dominic Alafaci dated 29 June 2015 will be confidential in this Federal Court Proceeding No. VID 343 of 2015 and except by prior consent of the applicants:

(a)    may be used only for the purposes of this proceeding; and

(b)    will not be open to public inspection, disclosed in open Court or disclosed in the open part of any Court transcript.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011 (Cth).

REASONS FOR JUDGMENT

introduction

1    This proceeding was commenced on 29 June 2015, and an early hearing was sought for the purposes of an application for interlocutory relief against the respondents. The matter came before me on 1 July 2015, but was adjourned to enable the respondents sufficient time to file and serve evidence and submissions in answer to the application. Directions were made to prepare the matter for interlocutory hearing on 15 July 2015.

2    The first applicant Collins House Pty Ltd is the holder of three registered business names, all commencing with the words “Collins House”: “Collins House Legal”; “Collins House Accountants” and “Collins House Private Wealth”. The second applicant Alafaci Nominees Pty Ltd is the owner of the trade mark “Collins House”, which has been registered since 13 September 2010. The second applicant is the majority shareholder of the first applicant.

3    The identity of the respondents has changed over the short life of this proceeding. There was some confusion about the corporate entities who should be named as respondents, which was cooperatively resolved and which is not material to the issues I must decide on this application.

4    The originally named first and second respondents have been substituted, and there are now three respondents (to whom I shall refer, as the parties have, as the third, fourth and fifth respondents). The third respondent (Golden Age Sunrise Development Pty Ltd), whom I will describe as GAS, is the registered proprietor of the property situated at 466 Collins Street, Melbourne, where a residential tower development is to be constructed. GAS is also the promoter and the developer and has operational control over the development.

5    The fifth respondent GA Collins Development Pty Ltd is one of two investors in the development. It is a related entity to GAS. Both these entities are related to Mr Jun Xu, who has been involved in a number of substantial residential and commercial developments in Australia.

6    The fourth respondent is APG on Collins Pty Ltd, a member of the Asian Pacific group of companies. It is the second investor in the 466 Collins Street development.

7    The application for interlocutory relief is focused on restraining the respondents from using the names “Collins House” and “Collins House Melbourne”, and a mark with the words “Collins House Melbourne” in the advertising and promotion of the development located at 466 Collins Street, Melbourne. The terms of the interlocutory relief now sought are set out below at [20].

8    For the reasons that follow, the interlocutory relief sought by the applicants must be refused.

nature of the claim

9    There have been several amendments to the Fast Track Statement, dealing with parties, which did not affect the substance of the claims made. The Further Amended Fast Track Statement at [1]-[3] describes the applicants’ claim in the following terms:

The dispute concerns use by the Third, Fourth and Fifth Respondents (together Respondents) of the names and trade marks “Collins House” and “Collins House Melbourne” in relation to the marketing of a residential property development, in circumstances where the First Applicant and its predecessor have used substantially identical names and trade marks, since 1999, in relation to accounting services, financial and business management and advisory services and legal services, and where the Second Applicant is the owner of a corresponding trade mark registration in classes 35, 36, 42 and 45.

The dispute also concerns an application by the Third Respondent to register “Collins House Melbourne” as a trade mark in relation to services in classes 36 and 37.

The Applicants claim that, in the circumstances described above, the Respondents’ conduct is:

(a)    Misleading or deceptive, or likely to mislead or deceive, in contravention of sub-section 18(1) of the Australian Consumer Law (ACL) set out at Schedule 2 to the Competition and Consumer Act 2010 (Cth).

(b)    False or misleading, in contravention of the sub-sections 29(1)(g) and 29(1)(h) of the ACL;

(c)    Passing off;

(d)    An infringement, or threatened infringement, of Australian trade mark registration no 1383039, pursuant to sub-section 120(1) and/or (2) of the Trade Marks Act 1995 (Cth) (TMA).

10    The second applicant’s trade mark is in classes 35, 36, 42 and 45, being the classes respectively for accounting services, tax advice and business management; financial services and insurance; information technology services; and legal services and advice.

11    The second applicant’s trade mark is:

12    The mark which, on the evidence, the third respondent has applied to register, and is using in the promotional material for the development, is:

13    Registration is sought by the third respondent in classes 36 and 37, being broadly the classes respectively for financial services and insurance, and for building construction, repair and installation services.

The final relief sought

14    The applicants seek declarations under s 21 of the Federal Court of Australia Act 1976 (Cth), injunctions under s 232 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) and damages pursuant to s 236 of the Australian Consumer Law arising out of alleged misleading and deceptive conduct and false and misleading representations in breach of ss 18 and 29(1)(g) and (h) of the Australian Consumer Law.

15    In particular, the applicants seek injunctions under s 232 of the Australian Consumer Law restraining the respondents from:

(1)    in respect of the alleged misleading and deceptive conduct in breach of s 18, engaging in misleading or deceptive conduct and in particular:

(a)    advertising and promoting investment in the residential tower development located at 466 Collins Street, Melbourne by reference to the names “Collins House” and “Collins House Melbourne” or the mark I have reproduced at [12] above;

(b)    offering or providing investment advice in connection with the development by reference to those names or trade mark; and

(c)    offering or providing any accounting services, financial and/or business management and advisory services or legal services under or by reference to those names or trade mark;

(2)    in respect of the alleged false and misleading representations in breach of ss 29(1)(g) and (h), making representations:

(a)    that certain services provided by the respondents have the sponsorship or approval of the first applicant Collins House Pty Ltd; and

(b)    that the respondents have the sponsorship or approval of, or are affiliated with, the first applicant Collins House Pty Ltd;

as well as corresponding declarations under s 21 of the Federal Court Act and damages pursuant to s 236 of the Australian Consumer Law.

16    The applicants also seek injunctions:

(1)    restraining the respondents from passing off those services as being certain services provided by, or affiliated with, the first applicant or its associated entities under certain Collins House marks; and

(2)    pursuant to s 126(1) of the Trade Marks Act 1995 (Cth), restraining the respondents from providing certain services by reference to the names and mark described above,

together with corresponding declarations and either an order for damages or an account for profits.

17    In addition, the applicants seek as final relief various orders directing delivery up to the applicants of offending marketing material, that the third respondent withdraw its pending trade mark application, the cancellation of the registration of the domain name “collinshousemelbourne.com.au” and corrective advertising in certain major newspapers.

The interlocutory relief sought

18    The applicants originally sought interlocutory injunctions in the same terms as those sought by way of final relief.

19    The applicants, ultimately, did not press the interlocutory injunction restraining the third respondent from prosecuting its Australian trade mark application.

20    At the hearing of the application, counsel for the applicants informed the Court that the relief sought was in the following form:

1.    The Third, Fourth and Fifth Respondents (whether by themselves, or by their servants or agents or otherwise) be restrained, until further order or final judgment in this proceeding, from:

(a)     Advertising and promoting investment in the property development at 466 Collins Street, Melbourne, Victoria 3000 (Property Development) under or by reference to any one or more of the following names or trade marks:

i.     COLLINS HOUSE;

ii.    COLLINS HOUSE MELBOURNE

iii.    

(the Offending Marks)

(b)     Offering or providing investment advice in connection with the Property Development under or by reference to any one or more of the Offending Marks;

(c)     Offering or providing any accounting services, financial and/or business management and advisory services or legal services, including such services offered or provided in connection with investment in real estate, under or by reference to any one or more of the Offending Marks.

2.     Pursuant to section 50 of the Federal Court of Australia Act 1976 (Cth), the publication of the evidence or information contained in Confidential Exhibit DA-A to the Affidavit of Dominic Alafaci sworn 29 June 2015 is forbidden.

3.     Costs Reserved.

21    It is plain that some modifications are required to para 2, in particular to refer to s 37AF of the Federal Court Act rather than the repealed s 50, and to reflect more appropriate wording to accord with ss 37AF and 37AG. However, the respondents did not dispute the substance of this order.

Mr Alafaci’s evidence

22    Subject to a few paragraphs which were not read, the application was supported by two affidavits of Mr Dominic Alafaci, the managing director and secretary of the first applicant and director, secretary and sole shareholder of the second applicant. In his affidavit, Mr Alafaci deposed that since 1999 he has operated a financial planning business under and by reference to the Collins House name and logo through a number of entities, including more recently the first applicant. He deposed that those entities, described as the Collins House Group, offer services in accounting, taxation, business management, management consultancy, employment and recruitment, financial planning, information technology consultancy and legal services and advice under the Collins House mark.

23    He states that between 2005 and 2007 the company Collins House Financial Services Pty Ltd established by him had marketed property services under the Collins House mark.

24    Annexed to his affidavit were multiple examples of how the Collins House Group has used the “Collins House” trade mark, as well as a confidential exhibit of annual sale revenue derived from those services offered under the mark. The revenue to which Mr Alafaci deposes is not insignificant, but has fluctuated over the years.

25    Mr Alafaci gave evidence about how the mark and the applicants’ services had been promoted, principally by his personal appearances on radio, including:

    regular appearances from 1999 onwards as a financial commentator on programs for the major Melbourne radio station Radio 3AW, on which he deposed he was always introduced as “Dominic Alafaci from Collins House”;

    paid advertising on Radio 3AW including “almost continuously” since 2001.

26    Examples of recorded radio and television appearances, print advertising, and stock market and business reports using the Collins House mark were exhibited to Mr Alafaci’s affidavit and some examples were played in Court. It is clear that the name “Collins House” was prominent in these advertisements and reports. The longevity and continuity of these activities was emphasised in Mr Alafaci’s evidence. His evidence also showed Collins House sponsored the news on 3AW in the morning and Collins House services were advertised over three news segments each weekday morning on 3AW.

27    Mr Alafaci also stated that when callers phoned in to his “spot” on 3AW with questions, or in need of advice, the following would occur:

When callers requested advice on an issue, including those relating to investment in property that fell within the Applicants' Services, I was able to refer them to an appropriate person within the Collins House Group, who I would describe on air as an "in house expert at Collins House" or provide the general guidance on air myself.

When a caller required specific advice on a property I would refer them to a qualified estate agent or property consultant and assist them if they required any taxation, legal or conveyancing work through one of our in house experts at Collins House. The caller would be asked to leave their details with Radio 3AW and I would call them after the programme.

28    Mr Alafaci described his concern about the potential for confusion between the applicants’ business operations and the respondents’ development including by reference to telephone calls received by the first applicant about the respondents’ development. His evidence was:

I have already encountered instances of confusion between the Mark and the Collins

House Melbourne Mark. I have been informed by Yi Li employed by the First Applicant as a receptionist, and believe that she received a phone call on 22 May, 2015 from a member of the public making enquiries about the Development, using words to the effect of "when do the properties go up for sale?". Sebastian Campisi, a Director of the First Applicant, has informed me and I believe that he has received two other phone calls to the same effect.

On 23 June, 2015, John Fusco, a contractor who helped move the Collins House Group into new offices recently, stated to me "I thought you just moved Collins House" referring to the Development.

29    Mr Alafaci also deposed to what he described as “adverse publicity associated with Melbourne property developments and developers and the Respondents or their officers/employees”. There is no need to set his allegations out in these reasons because, in my opinion, his allegations about the “adverse publicity” and what might or might not occur in relation to the Collins House Melbourne development did not amount to anything more than sheer speculation. Such speculation is not probative of any matter which could be weighed in the discretionary exercise concerning whether to grant the interlocutory relief sought.

30    Mr Alafaci sought to rely on the first applicant’s obligations as a licensed provider of financial services. He stated:

At all times the First Applicant must not receive any benefit that would reasonably be expected to influence the advice provided nor be restricted in providing investment products from a restricted list. If the First Applicant was perceived as being involved in the marketing of property in connection with the Development alone, this would indicate a huge conflict of interest and the First Applicant does not want to be associated with such perceived conflict. Secondly, the First Applicant must act in the best interests of the client in relation to advice, give priority to the client's interests when giving the advice over the advisor and is prohibited from receiving commissions from the sale of financial products or other conflicted remuneration. Some financial planners sell real property off the plan because generally this is a relatively easy way to make money as real property is not a financial product under the Corporations Act, 2001, even though property is an investment. The First Applicant does not sell any products where it receives a benefit, especially real property where high commissions are commonplace. However, there is a serious risk that, for the reasons referred to at paragraph 65(a) to (d), members of the public are likely to assume that the First Applicant is associated with the marketing of the Development property and that it is no longer independent or is in breach of the Corporations Act.

31    It was the matters referred to in [28]-[30] above that Mr Alafaci identified as the matters for which damages would not be an adequate remedy.

32    There was evidence about cease and desist correspondence sent before this proceeding was commenced, some to the appropriate corporate entities, some not. Ultimately, there was no dispute on the evidence that the three current respondents had notice, whether directly or indirectly, of the applicants’ claims prior to this proceeding. Indeed, it became clear that the trade mark application by GAS was reactive or responsive to the applicants’ demands.

33    Mr Alafaci stated that he was prepared to give the usual undertaking as to damages on behalf of the applicants. I return to this issue in examining the balance of convenience, as the respondents disputed that the applicants would be able to make good on any such undertaking.

Other evidence relied on by the applicants

34    The applicants relied on two affidavits of Ms Catherine Chant, filed in the proceeding on 1 July 2015 and 14 July 2015. Ms Chant is a solicitor employed by Thomson Geer lawyers, who act for the applicants in this proceeding. Ms Chant’s 1 July affidavit includes details of legal work undertaken between 18 May 2015 after receiving instructions from a director of the first applicant and 30 June 2015 before the applicants commenced this proceeding. Ms Chant’s 14 July affidavit responds to Ms Tieyan Du’s affidavit (to which I refer below) and is principally concerned with what the publicly available information about the development shows in relation to the involvement of entities other than GAS.

35    The applicants relied on an affidavit of Ms Katherine Nicol filed in the proceeding on 14 July 2015. Ms Nicol is a senior financial adviser employed by the first applicant. Her evidence was that on 9 July 2015 she attended the Collins House Melbourne display suite at 466 Collins Street, Melbourne where she spoke with Ms Sherree Gibbs and put herself forward as a prospective purchaser of an apartment clearly for the purpose of obtaining evidence to be used in this proceeding. I make no criticism of Ms Nicol, but simply observe that was the obvious purpose of her visit. Following her attendance at the Collins House display suite, she received three emails from Ms Gibbs which provided information on the Collins House residential tower development and attached depreciation schedules.

36    The applicants rely on the opinion evidence of Mr Laurie Tomaino. Mr Tomaino is a national director of Charter Keck Cramer, a Melbourne-based independent property advisory firm. Mr Tomaino is an associate of the Australian Property Institute and an affiliate of the Real Estate Institute of Victoria. Mr Tomaino has worked in the property advisory industry for over 30 years and the respondents did not dispute his entitlement to express the opinions he did.

37    He deposed that it is commonplace for developers in the marketing of large-scale apartment projects to provide prospective purchasers with a detailed financial package:

From my knowledge of the market segment in Australia involving high density apartment investment products (as distinct from owner-occupier market product) it is commonplace for developers in the marketing of large scale apartment projects, like the 57 level, 270 plus apartment development planned for 466 Collins Street, Melbourne, to provide prospective purchasers with a detailed financial package (in addition to the usual plans and contractual documentation) to assist and incentivise them in assessing the opportunity.

This type of information package (often prepared by expert consultants engaged by the developer) can include information on off-the-plan stamp duty concessions, taxation depreciation, FIRB (Foreign Investment Review Board) requirements, market research and analysis on supply and demand factors, capital and rental growth projections, sales and rental data, negative gearing, valuation certificates, borrowing costs from nominated lenders.

In my experience, a lot of this apartment product is marketed for the developer, both locally and overseas, through sales channels involving financial planners who can use this financial information to great effect in promoting this type of investment opportunity.

38    The applicants also relied on opinion evidence from Mr Michael Gareth Dotchin. Mr Dotchin is a graphic designer and owner of the Melbourne graphic design business, Empire Creative Group Pty Ltd. Again the respondents did not dispute his entitlement to express the opinions he did. In his affidavit, Mr Dotchin sets out the likely cost involved in the respondents redesigning their names or trade marks by removing the word “House” and inserting another word after “Collins”. It is not necessary to set out the detail of his evidence. It suffices to summarise it as estimating the costs involved in changing the mark and name Collins House to something else with the word “Collins” in it, but to remove the word “House”, as very modest. In substance, he described the process of changing all the promotional and marketing material (in hard and soft copy) as straightforward and not at all time-consuming. He also said:

(a)    From a creative process point of view, if the name is kept to ‘Collins’ with a change to the second part of the name, the Trade Mark change involves changing one word and, in the case of the CH Logo, one letter and then applying that change on to the existing documentation. The Trade Mark Change does not require all artwork to begin from scratch and there is not a high degree of creative components required in my opinion.

(b)    The periods of "6 weeks to rebrand" and "4 weeks to provide artwork" (referred to in paragraph 21 of the Du Affidavit) appear excessive to me because all that is required is the Trade Mark Change and the change to the CH Logo. Similarly, I believe that the rebranding costs referred to in paragraph 23(a) of the Du Affidavit and annexure TD-3 are relatively extreme. I estimate that it would take between 4 to 8 hours to create a new icon to give effect to the Trade Mark Change and the change to the CH Logo. In regards to the logo the design work is where the majority of time would be spent. I would also allow a further 2 hours to produce the finished art, based on the new design, to supply all relevant file formats (being EPS, JPEG, PNG and GIF), that is, to create a usable file for all media (including newspapers and websites). Finally, I estimate that it would take a maximum of 1 hour per item to insert the new trade mark and logo onto existing artwork to create new print ready files. The existing artwork with the addition of the modified brand can then be used in all media.

(c)    All existing artwork requires only this change and minor text changes to be available for immediate use.

(d)    In respect of media advertising, long term media spots advertising the Development could be held and used immediately that the new trade mark and new logo are available.

39    Mr Jeffrey Wayne Ewing is the Chief Financial Officer of Match Media Australia Pty Ltd (Match Media). Match Media is a media agency which provides services relating to communications planning, media strategy, trading and analytics across all forms of media. Mr Ewing has worked in the media agency business for 15 years and has particular expertise in financial management of media agency services. In his evidence, Mr Ewing describes the process involved in developing media bookings along with the impact a brand name change will have on media bookings. It is Mr Ewing’s evidence that a brand name change does not significantly affect media bookings, is neither difficult nor time-consuming and can be done on short notice.

40    The applicants emphasised, in relation to their Collins House trade mark, the font used – which is very similar to the one used by the respondents. The mark is found, on the evidence, over a long period on “with compliments” slips, websites, USB sticks, letterheads and the like.

41    The applicants emphasised evidence which suggested the breakfast program on 3AW was one of the highest-rating morning programs in Melbourne. The evidence was said by the applicants to show that during advertising on 3AW and presentations, prominence was given to independence and impartiality as attributes of the Collins House business.

42    Some reliance was placed on a clause in the licence agreement between the first and second applicants ascribing a value of $500,000 per annum to the Collins House trade mark. As the respondents submitted, it is not clear how a unilateral ascription of value as between related entities is probative in the way suggested.

43    The applicants drew attention to the prominent advertising in weekend newspapers (both in hard copy and online), and other online real estate sites, that suggested the investment advantages of buying into such developments. An example was the evidence of Ms Nicol, who visited the respondents’ development on 9 July and was given a copy of the depreciation schedules for the respondents’ development. This is, the applicants say, the context in which confusion in the market can arise.

44    Mr Tomaino’s opinion evidence made a similar point, about the kinds of facilities that residential developers offer to prospective purchasers which are hardly surprising, given a developer’s need to encourage purchasers.

The respondents’ evidence

45    Mr Dean John Pavitt is employed by Asian Pacific Building Corporation Pty Ltd, a related entity of the fourth respondent and the former first respondent, in the role of Legal Counsel. Mr Pavitt’s evidence related to his knowledge of the material relied on by the applicants and when it was received. He also gave some evidence about the entities involved in the 466 Collins Street development.

46    Mr Daniel Faigen is employed as Group Counsel and Development Manager of the Asian Pacific Group which includes both the fourth respondent and the former first respondent. In his evidence Mr Faigen clarifies that the role of the fourth respondent is to provide funds for the investment. Mr Faigen states that the scope of the 466 Collins Street project is limited to the development of the building, securing the settlement of sales and taking profits from the investment. It is Mr Faigen’s evidence that the investors do not, and do not intend to, provide financial, legal, tax advice or other services proffered by the applicants.

47    Mr Rob Diblasi is a director of 4D Workshop Pty Ltd, which has been engaged in the 466 Collins Street development as consultants and structural engineers. In response to some allegations made by the applicants, it is Mr Diblasi’s evidence that the development is structurally sound and 4D Workshop has no concerns with the safety or reliability of the structural system used in the development.

48    The principal evidence relied on by the respondents came from Ms Tieyan Du, who is the financial controller for the third respondent GAS, the fifth respondent GA Collins Development Pty Ltd and Golden Age Development Pty Ltd, which was the former second respondent to this proceeding. In my opinion, the critical aspects of her evidence are the following:

The Property and the Development

…

8    The development is a 57 level residential tower with 271 residential lots with a variety of 1 bedroom, 2 bedroom, 3 bedroom and penthouse luxury apartments at 466 Collins Street, Melbourne, Victoria (Development) together with a private terrace called Collins Terrace and housing the St James Club (a private club with dining room and gym). Apartments are being marketed for between $485,000 and $6,880,000 depending on the type of apartment, its location and floor.

9    The Property increases in value as each contract of sale for a lot is entered into.

10    The total market value of the Development is approximately $200 million.

…

15    Golden Age Sunrise is the developer and promoter of the Development as bare trustee for the Partnership.

16    Whilst, GA Collins and APG on Collins are part owners of the Development, they have no operational control of the Development. All operational decisions of the Development are undertaken by Golden Age Sunrise and its director Jun Xu.

Marketing of the Development

19    Golden Age Sunrise has engaged Grenade Pty Ltd (Grenade), a specialist marketing company to assist it to develop the brand, name and marketing of the Development.

20    A total of $1,500,000 is allocated to be spent on marketing, branding and advertising for the Development. Golden Age Sunrise has to date expended more than $500,000 on branding alone including on marketing consultants for the Development.

21    Golden Age Sunrise has expended to date $349,712 and contracted another $144,380 in advertising to the end of October 2015 making a total marketing spend on advertising to October 2015 in the amount of $494,092. Golden Age Sunrise has locked in contracts for advertising in local press and in online channels until October 2015. As Golden Age Sunrise have agreements in place in relation to the marketing of the Development based on a marketing campaign, most if not all of the costs of the pre agreed marketing for July, August and September 2015 have already been incurred. If the injunction sought by the Applicants is granted, this expenditure will be lost as advertisements have long lead times and it will take at least 6 weeks to re-brand as explained later in this affidavit, and up to 4 weeks to provide artwork and obtain slots in the relevant media. This means the $144,380 of the marketing spend will be lost and Golden Age Sunrise will need to spend this amount again to secure new media slots.

Now annexed to my affidavit and marked TD-2 is a spread sheet with the advertising program and monies spent to date by Golden Age Sunrise.

22    The Development display suites have high quality A3 flipbooks showing the Development’s marketing and floor plans and marketing staff provide prospective purchasers with high quality large brochures. If Golden Age Sunrise do not have such brochures and flipbooks, the ability to market the Development will suffer greatly. A copy of the flipbook appears as an annexure to the Affidavit of Dominic Alafaci dated 26 June 2015 as Annexure DA-59. Hard copies of the flipbooks will be made available in Court on 15 July 2015.

23    I am informed by Golden Age Sunrise’s marketing company, Grenade and Golden Age Sunrise’s internal marketing staff and verily believe that:

(a)    if the marketing material and brand needs to be changed to remove references to “Collins House” and/or “Collins House Melbourne” then the whole branding is likely need to be amended in addition to the marks used. It is not simply a matter of changing a word or logo. The branding will need to be redeveloped, the corporate style guide reviewed and potentially changed, all marketing materials and advertising material with the new brand and production of new materials will need to be developed. The estimated cost and time to undertake a rebranding exercise, based upon the initial branding and a quotation obtained from Grenade, are:

(i)    $144,435 plus GST to redesign and rebrand;

(ii)    $103,483 plus GST for production of new materials;

Now annexed to my affidavit and marked TD-3 is a quotation from Grenade with the costs to rebrand and produce new materials for the marketing of the Development.

(b)    It will take approximately 6 weeks to rebrand and redesign all of the marketing materials and advertisements;

(c)    It will take a further approximately 4 weeks to reprint all of the marketing materials;

(d)    Without newspaper advertising, hard copy high quality brochures and the marketing campaign, it is likely to cause a significant drop in sales of the Lots in the Development. There is a real concern that sales will stop completely and the momentum of the sales campaign is interrupted;

(e)    Most sales occur from enquiries obtained after advertising occurs in newspapers, online and onsite;

(f)    Sales are likely to decrease by at least 80% (if not totally) if there is no marketing materials or advertising midway during a campaign;

(g)    Interruptions in marketing campaigns and rebranding leads, in my experience, to a loss of confidence in the developer and the project which will, in my view, negatively affect sales and sale prices;

(h)    Rebranding of the Development will have adverse reputational damage to Golden Age Sunrise and to Dahu and Jun Xu as it will imply that the Development has been undertaken using a name wrongfully taken or ‘stolen’ from another party (even though the question of whether or not the Applicant has a successful case as alleged has not been finally determined) and market confidence in the reputation of the Development, Golden Age Sunrise, Dahu and Jun Xu will be adversely affected;

(i)    The market in Melbourne for residential apartments is highly competitive and any delay in marketing is likely to lead to a loss of purchasers to competitor developments;

(j)    The Golden Age brand will be tarnished by purchasers if the Development is rebranded.

…

27    I am informed by the Development manager for Golden Age Sunrise, Bing Chen, and I believe, that as at 7 July 2015 there were 156 purchasers who have executed contracts to purchase a lot (with a further 30 purchaser whom have reserved lots and paid a deposit) with some contracts still in transit which may increase this number. Over the period between 1 June 2015 and 29 June 2015 there were 31 purchasers who executed contracts for lots in the Development. The breakup of sales in that one month period were:

1 Bed Apartments- 17 Lots subject to contract- total Purchase Price ($9,253,000)

2 Bed Apartments- 11 Lots subject to contract- total Purchase Price ($11,636,000)

3 Bed Apartments- 3 Lots subject to contract- total Purchase Price ($4,720,000)

This equates to an average over that 4 week period on a weekly basis of $6,402,250 worth of contracts executed each week.

28    On the basis of the information provided to me referred to above about potential loss of sales and on the basis of the weekly average sales over the last 4 week period set out above, I estimate that an 80% drop in sales would lead to a potential loss of sales to the value of $51,218,000 in the 10 week period required to redesign, print marketing materials and recommence marketing of the Development if the injunction sought is granted.

29    Any delay in sales will cause a corresponding delay in construction and delay the ultimate settlements of the sale of lots in the Development. Loss which will flow on from delays in sales include:

(a)    Potential purchasers purchasing in other developments;

(b)    Further delays beyond the rebranding to obtain purchasers and re-establish the brand and development;

(c)    Potential for a decrease in prices obtained for lots that remain unsold for a significant period of time;

(d)    Increased holding costs of approximately $306,450. The holding costs currently being incurred are:

(i)    Interest on the $15,000,000 mortgage at the rate of approximately $60,000 per month. This equates over a 3 month period to approximately $180,000;

(ii)    Land Tax at the rate of $176,000 per annum. This equates over a 3 month period to approximately $44,000;

(iii)    Council Rates at the rate of $26,000 per annum. This equates over a 3 month period to approximately $6,500;

(iv)    Water Rates at the rate of $3,800 per annum; This equates over a 3 month period to approximately $950;

(v)    Dahu charges Golden Age Sunrise a project management fee of $25,000 per month. This equates over a 3 month period to $75,000.

(e)    Increased construction costs for delays in project start times;

(f)    Loss of profits resulting from the above. In this regard, if the injunction is granted the likely timeframe for the Development will be pushed back by 3 months. The return on investment for GA Collins and APG on Collins will be dramatically affected in the amount of approximately $120,000 per day based on a 7% interest rate on cash paid into the Development by the Partnership. Over a 3 month period, this equates to an approximate $10,800,000 loss;

(g)    The costs of purchasers seeking to withdraw or terminate contracts as referred to below.

Timing of Development

30    It is expected that if marketing continues, all lots (including the large premium lots) will be sold within the next 6 months, but hopefully earlier. The last few months of that 6 month period represent a significant slowing down in average sales per week as the remaining lots to be sold are normally those with the highest prices or those least sought after locations and floors.

31    Subject to there being no delay in the marketing of the Property, it is expected that construction of the Development will commence in October/November 2015.

32    Once all lots in the Development have been sold, no further marketing of lots in the Development using the marks “Collins House Melbourne” and “Collins House” will continue.

…

Confusion in the market place

56    I have made enquiries of the heads of the sales and marketing staff for the Development, who inform me, and I believe, that they have made enquiries of their staff. I have also spoken to the receptionist at Dahu as to whether or not GAD, Dahu, GA Collins or Golden Age Sunrise have had anyone contacting them for tax, accounting or legal services (or other services) of the Applicant. I am informed and verily believe by each of these people that there are no instances of anyone contacting Dahu, GAD, GA Collins or Golden Age Sunrise looking for the Applicants or being confused about whether or not Golden Age Sunrise or the Development is actually the Applicants’ or in any way associated with the Applicants.

…

Use of Collins House Melbourne by Golden Age Sunrise

66    ‘Collins House’ and ‘Collins House Melbourne’ are marks utilised by Golden Age Sunrise solely for the marketing and promotion of the Development and as the proposed name for the Property. Neither Golden Age Sunrise, GA Collins, Dahu or GAD provide any services under or by reference to the marks in respect to the following:

(a)    Legal services and advice;

(b)    Financial services and advice including financial planning, financial risk management, monetary affairs, insurance services and advice;

(c)    Accounting services and advice;

(d)    Tax advice;

(e)    Business management services;

(f)    Employment agency services including recruitment;

(g)    IT consultancy services and advice;

(h)    Real Estate investment management;

(i)    Real estate investment services; or

(j)    Portfolio management services.

67    The ‘Collins House Melbourne’ and ‘Collins House’ marks are used by Golden Age Sunrise for the promotion, marketing and sale of the Development and as the proposed name of the building being constructed. Once the marketing for the Development is completed and all lots sold Golden Age Sunrise will cease using the marks to market and sell the Development. Any future use, after construction finishes, by Golden Age Sunrise will be in connection with the name of the Development as being one of the projects connected with Golden Age Sunrise or the name of the building.

Advice to purchasers – No finance and No Rent Guarantees

68    Contrary to the broad generalisations made by Mr Alafaci in paragraph 66 of his Affidavit dated 29 June 2015, Golden Age Sunrise, Dahu, GAD and GA Collins do not offer purchasers of the Development:

(a)    Rent guarantees;

(b)    Financial advice (or guidance or advice on obtaining finance);

(c)    Tax advice;

(d)    Stamp duty advice (apart from disclosing stamp duty savings and rates);

(e)    Depreciation advice; or

(f)    Advice re prospective rates of return.

49    There are two further aspects of the evidence to which I should refer, as they illustrate the lack of overlap in the services provided by GAS and those provided by the applicants. First, the respondents point out that the depreciation schedules which were emailed by Ms Gibbs to Ms Nicol and are attached to Ms Nicol’s affidavit are produced by a third party called “WT Partnership”. It is wholly unclear on the evidence how the applicants contend these services should be characterised as provided by the respondents, since GAS appears to do no more than facilitate the provision of this information to prospective purchasers by either having it available when inquiries are made, or by sending various information in emails. Obviously, it is in its commercial interests to ensure such information is provided to prospective purchasers, but the content of the information and the formulation of the advice is undertaken by third parties, not by GAS.

50    Further, the email Ms Gibbs sent to Ms Nicol on behalf of GAS (or the Golden Age Group), put forward by the applicants as an example of an email that would be sent to prospective purchasers of apartments, clearly links Collins House first to a particular residential address on Collins Street, and secondly, to the Golden Age Group.

Relevant legal principles

51    The principles governing the grant of an interlocutory injunction were set out by Gummow and Hayne JJ at [65] to [72] of Australian Broadcasting Corporation v O’Neill [2006] HCA 46; 227 CLR 57, Gleeson CJ and Crennan J agreeing (at [19]) with their Honours’ summation of those “organising principles”. Their Honours said:

65.    The relevant principles in Australia are those explained in Beecham Group Ltd v Bristol Laboratories Pty Ltd. This Court (Kitto, Taylor, Menzies and Owen JJ) said that on such applications the court addresses itself to two main inquiries and continued:

“The first is whether the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief … The second inquiry is … whether the inconvenience or injury which the plaintiff would be likely to suffer if an injunction were refused outweighs or is outweighed by the injury which the defendant would suffer if an injunction were granted.”

By using the phrase “prima facie case”, their Honours did not mean that the plaintiff must show that it is more probable than not that at trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. That this was the sense in which the Court was referring to the notion of a prima facie case is apparent from an observation to that effect made by Kitto J in the course of argument. With reference to the first inquiry, the Court continued, in a statement of central importance for this appeal:

“How strong the probability needs to be depends, no doubt, upon the nature of the rights [the plaintiff] asserts and the practical consequences likely to flow from the order he seeks.”

…

67.    Various views have been expressed and assumptions made respecting the relationship between the judgment of this Court in Beecham and the speech of Lord Diplock in the subsequent decision, American Cyanamid Co v Ethicon Ltd. It should be noted that both were cases of patent infringement and the outcome on each appeal was the grant of an interlocutory injunction to restrain infringement. Each of the judgments appealed from had placed too high the bar for the obtaining of interlocutory injunctive relief.

68.    Lord Diplock was at pains to dispel the notion, which apparently had persuaded the Court of Appeal to refuse interlocutory relief, that to establish a prima face case of infringement it was necessary for the plaintiff to demonstrate more than a 50 per cent chance of ultimate success. Thus Lord Diplock remarked:

“The purpose sought to be achieved by giving to the court discretion to grant such injunctions would be stultified if the discretion were clogged by a technical rule forbidding its exercise if upon that incomplete untested evidence the court evaluated the chances of the plaintiff’s ultimate success in the action at 50 per cent or less, but permitting its exercise if the court evaluated his chances at more than 50 per cent.”

…

70.     When Beecham and American Cyanamid are read with an understanding of the issues for determination and an appreciation of the similarity in outcome, much of the assumed disparity in principle between them loses its force. There is no objection to the use of the phrase “serious question” if it is understood as conveying the notion that the seriousness of the question, like the strength of the probability referred to in Beecham, depends upon the considerations emphasised in Beecham.

(Citations omitted.)

52    In Samsung Electronics Company Ltd v Apple Inc [2011] FCAFC 156; 217 FCR 238, referring to those passages in O’Neill, the Full Court of this Court stated at [59]:

Both Beecham and American Cyanamid were cases of patent infringement. The appeal in each case resulted in the grant of an interlocutory injunction in favour of the patentee. The critical integer in the test explained in Beecham is the need for the Court to assess the strength of the probability of ultimate success on the part of the plaintiff. The strength of that probability will depend upon the nature of the rights asserted and the practical consequences likely to flow from the grant of the injunction which is sought. The emphasis in Beecham is on the need to assess the plaintiff’s probability of success at trial. The extent of the strength required will vary from case to case.

53    In Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd [2001] HCA 63; 208 CLR 199, Gleeson CJ observed at [18]:

The extent to which it is necessary, or appropriate, to examine the legal merits of a plaintiff’s claim for final relief, in determining whether to grant an interlocutory injunction, will depend upon the circumstances of the case. There is no inflexible rule. It may depend upon the nature of the dispute. For example, if there is little room for argument about the legal basis of a plaintiff’s case, and the dispute is about the facts, a court may be persuaded easily, at an interlocutory stage, that there is sufficient evidence to show, prima facie, an entitlement to final relief. The court may then move on to discretionary considerations including the balance of convenience.

54    At [13], the Chief Justice also endorsed the following passage from the judgment of Mason A-CJ in Castlemaine Tooheys Ltd v South Australia [1986] HCA 58; 161 CLR 148 at 153:

In order to secure such an injunction the plaintiff must show (1) that there is a serious question to be tried or that the plaintiff has made out a prima facie case, in the sense that if the evidence remains as it is there is a probability that at the trial of the action the plaintiff will be held entitled to relief; (2) that he will suffer irreparable injury for which damages will not be an adequate compensation unless an injunction is granted; and (3) that the balance of convenience favours the granting of an injunction.

55    I note also the Full Court’s statement, in Samsung at [67]-[68], regarding the related nature of the inquiries into whether the applicant has made out a prima facie case and the question of the balance of convenience:

As Sundberg J observed in Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth (2009) 81 IPR 339 at [15], when considering whether to grant an interlocutory injunction, the issue of whether the plaintiff has made out a prima facie case and whether the balance of convenience and justice favours the grant of an injunction are related inquiries. The question of whether there is a serious question or a prima facie case should not be considered in isolation from the balance of convenience. The apparent strength of the parties’ substantive cases will often be an important consideration to be weighed in the balance.

It may also be necessary to consider and evaluate the impact that the grant or refusal of an injunction will have or is likely to have on third persons and the public generally.

(Other citations omitted.)

56    In Samsung at [196], the Full Court said:

Finally, in the present case, the most compelling features are the assessments of the strengths and weaknesses of the respective cases and the equality of likely detriment. Other considerations pale into insignificance beside those matters.

57    A further aspect of Samsung, emphasised by APG on Collins, is important. In dealing with circumstances where interlocutory relief, if granted, effectively delivered final relief to an applicant, the Court said (at [49] and [87]-[88]):

49.    In the present case the parties accept that the orders made below are effectively final in that the commercial viability of the Galaxy Tab 10.1 in the Australian market will be lost. We doubt whether the grant of interlocutory relief in the present case avoids frustration of the Court’s process. When one keeps in mind that the Court must seek to do justice to both parties, such a consequence for Samsung can hardly be described as other than a frustration of the Court’s process. In our view, the task facing her Honour was not simply to grant or refuse an injunction. The task was to protect the Court’s process from frustration, as best as could be done in the circumstances, following the guidelines laid down by the High Court in the cases to which we will refer in the next section of these reasons. An “all or nothing” outcome was unlikely to produce that result.

…

87.    In its submissions to this Court, Apple pointed to her Honour’s exposition of the relevant principles at [20]-[36] of her reasons and submitted that her Honour applied those principles in the course of her reasons. In particular, Apple submitted that her Honour undertook the necessary evaluation of the strength of Apple’s case of infringement and, indeed, Samsung’s case for invalidity, and took the results of her evaluation into account both when determining whether Apple had established a sufficient prima facie case of infringement and in determining where the balance of convenience and justice lay. Apple pointed to a number of references in her Honour’s reasons to the expression “prima facie case” as indicating that her Honour had conducted the requisite evaluation. Particular reliance was placed upon [36], [58], [75], [125]-[127] and [238]-[244] of her Honour’s reasons. But, with great respect to her Honour, neither in those paragraphs nor anywhere else in her reasons is there revealed any assessment or evaluation of Apple’s case of infringement. Her Honour was obliged to make such an assessment for the purpose of deciding whether Apple had made out a prima facie case of sufficient strength to justify the grant of an interlocutory injunction to restrain infringement of its patents. In this case, given that the grant or refusal of interlocutory injunctive relief was going to have the practical consequence of deciding Apple’s claims for final injunctions and thus deciding the commercial fate of the Galaxy Tab 10.1, Apple was required to demonstrate a relatively strong case.

88.    In addition to deciding whether Apple had made out such a prima facie case, her Honour was also required to assess the strength of that case so that she could take into account her views on that matter in her assessment of the balance of convenience and justice.

58    In applications where there is a considerable amount of evidence, and especially where that evidence is conflicting, the remarks of Mahoney JA in Shercliff v Engadine Acceptance Corporation Pty Ltd [1978] 1 NSWLR 729 at 734 are apposite:

But there are limitations upon the extent to which a judge is to take into account such evidence as the defendant may tender upon an interlocutory application. It is not his function to conduct a preliminary trial of the action, nor is it, in general, to resolve the conflict between the parties' evidence, and grant or refuse the application upon the basis of such findings. Where there is conflict of evidence, the use which may be made of the defendant's evidence in determining whether the plaintiff has made out a prima facie case is a limited one. For example, the plaintiff's evidence, considered alone, may be such a prima facie case as would be acceptable if submitted to a jury in a trial. But, when considered in the light of the defendant's evidence, it may be explained away so as no longer to be such. Or the defendant's evidence, when juxtaposed to that of the plaintiff may show that there is in reality no such case, no real question between the parties, appropriate to warrant preserving the status quo until the hearing.

The parties’ submissions

The applicants’ submissions

59    On the trade mark application, the applicants now accept that the processes for registration of the respondents’ trade mark should be able to take their course. The focus of the application in this proceeding is on preventing the use of the Collins House name, and marks which resemble the Collins House mark.

60    Great emphasis was placed on the special nature of Collins House’s reputation in the Collins House mark, as set out in Mr Alafaci’s evidence. In short, the ongoing success of the Collins House business was said to be uniquely dependent on its reputation for trustworthiness and independence, which was likely to be compromised by mistaken association and confusion with the respondents’ residential development.

61    The applicants’ submissions were summarised in writing in the following way:

(i)    Collins House has a reputation in the Collins House Mark in relation to the provision of financial and business management services and investment advice, including in relation to investment in real estate;

(ii)    Collins House’s reputation in the Collins House Mark is broadly based in the Melbourne community by virtue of extensive exposure on Radio 3AW over a period of many years;

(iii)    The Collins House Mark and the Collins House Melbourne Mark are identical or nearly identical;

(iv)    There is a clear overlap between Collins House’s business under the Collins House Mark and between the Respondents’ marketing activities under the Collins House Melbourne Mark and the real estate consultancy and investment services claimed in the Collin House Melbourne Application;

(v)    There is already confusion as to whether the Development is being marketed by Collins House.

62    It is clear from the applicants’ submissions that the main focus of the complaint is on the use of “Collins House” rather than another word used in conjunction with the name “Collins”, such as “Collins Residence”.

63    The applicants submitted that some of the evidence of the respondents’ principal witness, Ms Du, should not be accepted. Ms Du deposed:

Contrary to the broad generalisations made by Mr Alafaci in paragraph 66 of his Affidavit dated 29 June 2015, Golden Age Sunrise, Dahu, GAD and GA Collins do not offer purchasers of the Development:

(a)    Rent guarantees;

(b)    Financial advice (or guidance or advice on obtaining finance);

(c)    Tax advice;

(d)    Stamp duty advice (apart from disclosing stamp duty savings and rates);

(e)    Depreciation advice; or

(f)    Advice re prospective rates of return.

64    The applicants submitted Ms Nicol’s evidence showed the provision of depreciation schedules, which is, the applicants submit, “depreciation advice”. This alleged inconsistency was a matter emphasised by the applicants, as an example of why Ms Du’s evidence should not be accepted. Her evidence was generally described as exaggerated, in terms of her descriptions of the effects of injunctive relief on the respondents’ development.

65    The applicants relied on the decision of the Full Court of this Court in Abundant Earth Pty Ltd v R & C Products Pty Ltd [1985] FCA 40; 7 FCR 233 at 238:

It may be accepted that the use of ordinary descriptive words as a trade name or trade mark and the lack of a common field of activity are material considerations to be taken into account when considering the application of s 52. But, in the end, the matter must fall to be resolved in the light of the particular circumstances of the case in hand. In the present case, the respondent had established a considerable reputation in and to the name "Pure and Simple" which is distinctive of its product. The evidence also established that the respective products of the parties possessed many significant features in common: they each had the same name; in each case, the name is highlighted as the distinctive name of the product; in each case, the product to which the name is applied is related to food; in each case, the product is relatively inexpensive to purchase; and in each case the advertising places considerable emphasis upon the same matter, the natural ingredients, the "purity" of the product.

66    The point the applicants sought to make was that the Collins House name had become similarly “distinctive”, in terms of the services provided by Mr Alafaci’s companies.

The respondents’ submissions

67    Despite the submissions of the applicants, it is clear that GAS is the principal entity against whom any injunctive relief would be granted. Counsel for GAS and GA Collins Development made the principal responding submissions on the application, which were adopted by counsel for APG on Collins.

68    For the purposes of the interlocutory application, the respondents accept Mr Alafaci’s reputation as it appears from the evidence, but say it does not extend to the provision of residential development services on a specific project.

69    As to the applicants’ evidence from Mr Ewing and Mr Dotchin, they submit it misses the point about the size of the development and the size of the marketing program. They rely on Ms Du’s evidence at [19] to [23] of her affidavit, which I have set out earlier in these reasons.

70    The principal point made by the respondents on the serious question aspect of the application is that there is no overlap in the nature of the services provided by the applicants and by the respondents (in particular, by GAS as the developer). They operate in different markets, for different purposes. That separation, submit the respondents, means that there is no prima facie case against the respondents because there is no basis on which any confusion or misapprehension could arise, to the effect that the applicants are connected to the 466 Collins Street development, nor to the respondents, nor to the services they provide.

71    On the balance of convenience, the respondents rely on the financial and reputational consequences to them flowing from a rebranding of such a high value and high profile development, “mid-stream”, as set out in Ms Du’s affidavit.

consideration

72    I bear in mind the caution in the authorities that there must be no rigid separation between the assessment whether the applicant has identified a serious question to be tried (or prima facie case) and where the balance of convenience lies. The nature and strength of each of the considerations affects the other.

Is there a serious question to be tried: the trade mark infringement claim

73    Whatever might be said about the first limb of s 120(1) of the Trade Marks Act (substantially identical or deceptively similar), I am not satisfied there is a serious question to be tried on infringement because the use to which the respondents have put the mark is not in respect of services of the same description as those for which the Collins House mark is registered.

74    In MID Sydney Pty Ltd v Australian Tourism Company Ltd [1998] FCA 1616; 90 FCR 236 at 243-244, the Full Court said:

where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. If Touraust arranges tenancies for retail shops within an hotel and collects rent, it does not thereby provide property management services: those activities are not to be characterised as the provision of a separate service in relation to the property but simply as an integral, if relatively minor, part of operating the hotel. Nor, we think, does it help to identify a number of discrete aspects of the hotel business which, if carried on in other circumstances, might be characterised as the provision of property management services. In this context, each will take its character from the overall nature of the business which Touraust intends to conduct.

Are, then, services to be provided by Touraust services of the same description as that of services in respect of which MID's mark is registered (s 120(2)(c))? That expression in the context of services seems to have received no reported judicial consideration. This is partly because the statutory protection for trade marks used in relation to goods has been extended to trade marks in relation to services only relatively recently: see F J Smith, "The Trade Marks Amendment Act 1978" (1979) 53 Australian Law Journal 118. It is also a consequence of the fact that s 120(2)(c) of the Act had no precise equivalent in the Trade Marks Act 1955 (Cth) (the TM Act 1955), although the expression "services of the same description as [services in respect of which the trade mark is registered]" was used in the earlier legislation: see the TM Act 1955, ss 33(2), 36(1A). The question whether two sets of goods are "of the same description" has, however, been considered in a number of decisions. Thus, for example, in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606 the High Court said this:

"There may be many matters to be considered apart from inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in Re Jellinek's Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's case the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: 'In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade'."

Similarly (in a passage cited by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 42 FCR 227 at 240) Lord Evershed MR said in Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128:

"In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged … 'in a business sense'; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods … The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited … lend some support to the view that the phrase 'goods of the same description' ought not to be given too restrictive a construction – not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other."

We accept that these principles, subject to any necessary modification, apply in relation to services. But they do not advance MID's argument.

For reasons that have already been given, the services involved in managing an hotel have different characteristics than property management services. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.

This conclusion is reinforced if, as Southern Cross suggests, the proper approach is that attention should be directed to the "trade channels" through which the services are provided. It is not difficult to infer that hotel management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing property management services, such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard hotel managers as being engaged in the same trade or industry as those providing property management services.

75    It is clear on Ms Du’s evidence that the nature of the services provided by GAS using the “Collins House” and “Collins House Melbourne” name and mark are promotion, marketing and sales services for the 466 Collins Street development, being a residential apartment development. In contrast the services Mr Alafaci identified in his first affidavit (accounting services and advice, tax advice, business management and advice, management consultancy services, employment and recruitment services, financial planning, information technology consultancy and legal services and advice) are of an entirely different nature.

76    An important contextual distinction is that what Mr Alafaci does is to provide advice to clients who engage with others in a range of commercial personal or business activities, whereas the services provided by GAS are not advisory at all, and do not relate to commercial personal or business activities with others. Rather, they are promotional and marketing activities designed to encourage individuals to purchase apartments in a particular residential development, at a particular street address, and it is that street address with which the Collins House and Collins House Melbourne names and marks are connected. Those names and marks are used entirely descriptively. These very specific and targeted promotional and marketing activities in relation to a particular building are quite different from the professional services provided by Mr Alafaci, and in which he has built his considerable reputation.

77    The role of APG on Collins is, as I find below, that of a passive investor and it cannot be said on the evidence to provide any services at all, nor itself to be using the Collins House name or mark alleged to constitute the infringing mark.

78    There is no doubt on the evidence that, as an incident of its marketing and promotion of residential property, GAS provides information supplied by third party financial advisers, banks, mortgage brokers and other professionals, and makes referrals to such service providers. It does this in order to advance its own interests in the success of its property development, rather than to build a client base in those areas. I do not consider those activities create any real possibility of confusion or misapprehension in consumers, or those considering using such services, that the applicants, and their services, are part of the 466 Collins Street development. Quite the opposite, as the third parties (such as WT Partnership) who do provide services which might be said to operate in the same market as the applicants employ their own branding and marks.

79    In making this finding, I do not need to resolve what is said by the applicants to be an inconsistency or inaccuracy in Ms Du’s evidence revealed by the evidence of Ms Nicol. On an interlocutory application such as this it is inappropriate to resolve such precise questions of fact about conversations, and the exchange of information. Whatever Ms Nicol was told, the remainder of the respondents’ evidence makes it clear that they do not provide the kinds of services provided by the applicants. Ms Nicol’s receipt of depreciation schedules simply illustrates the point I make at [78] above.

Is there a serious question to be tried: the consumer law and passing off claims

80    These claims can be considered together.

81    I do not accept the applicants’ contentions in their written submissions that:

By their conduct, the Respondents have represented to the public that:

(i)    The Development is a project of the Collins House Group, or otherwise sponsored or endorsed by or affiliated with the Collins House Group;

(ii)    The marketing of the Development, including any financial information or advice given in relation to investing in the Development is given by the Collins House Group, or is otherwise sponsored or endorsed by or affiliated with the Collins House Group.

82    The findings I have made at [75]-[78] above are also relevant to my rejection of the applicants’ submission that they have a prima facie case on the consumer law and passing off claims.

83    In Registrar of Trademarks v Woolworths Ltd [1999] FCA 1020, 93 FCR 365 at [40] French J said:

In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

84    Although it might be said a feature of the property market in Melbourne is the way developers incentivise purchases by highlighting the taxation and financial advantages of purchasing “off the plan” in residential developments such as 466 Collins Street, I do not consider the existence of that feature suggests, at the level of practical judgment, that the applicants have a prima facie case that consumers will confuse the services provided by the applicants with those offered by the respondents. The areas in which the parties operate are too different, not only as to the nature of the services provided, but also because the respondents’ focus is entirely on one residential development at one address, and it is the address which supplies the connection with the Collins House name and mark. That is especially so since the respondents’ development, and the promotion of it, occurs with the promotion (and marks) of the Golden Age Group.

85    I accept the respondents’ submissions that the evidence shows an association between the Collins House development at 466 Collins Street, Melbourne and the Golden Age Group, and shows no association with the applicants or Mr Alafaci. The applicants do appear to take umbrage at the use, in a very public way, of the Collins House name and mark but in my opinion there is force in the respondents’ submissions that at one level this amounts, at best for the applicants, to copying of a kind that is not actionable under consumer law without the added element that the respondents’ product or service will be mistaken for that of the applicant: see Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd [1999] FCA 1655; 95 FCR 136 at [40]-[41]; REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559; 217 FCR 327 at [79]-[80] per Bromberg J and the cases there cited. As I have found, I do not accept the applicants have made out a prima facie case that this may occur.

86    The observations in Abundant Earth were pertinent to the similarity of circumstances found to exist in that case: namely, products sold in supermarkets and in health food stores. The Court said (at 237) it was “easy to understand” how shoppers could be misled into thinking the same company was selling both products. I see no comparison with the facts in this proceeding.

87    McIlhenny Co v Blue Yonder Holdings Pty Ltd [1997] FCA 962; 149 ALR 496 provides a more relevant comparison in my opinion, in the sense of illustrating how critical to the analysis is the assessment of the fields in which the services are provided (or the goods supplied). At 508 Lehane J said:

It is one thing to suppose a connection where the brand "Dunhill", associated with an "upmarket" cigarette, starts to appear on an expanding range of other — and different — "upmarket" goods (and even then, the expert evidence suggested, one might have wondered rather than jumped to the conclusion that there was an association, when one first saw that occurring); it is another, as a person with marketing responsibilities seeking the services of an exhibition designer, to conclude that a designer whose services are promoted under the name "Tabasco" has a commercial association with the well-known sauce of that name.

88    Mere confusion or misapprehension is insufficient to make out a contravention of s 18 of the Australian Consumer Law, or supply the essential ingredient of the tort of passing off: see Knight v Beyond Properties [2007] FCAFC 170; 242 ALR 586 at [57]. At [54] the Full Court said:

In Conagra, French J referred to the test for whether a claimed reputation is sufficient to ground an application for passing off as being whether “a substantial number of persons” were aware of the product. The reference to “substantial” involves considerations such as the size and distribution of the population of prospective consumers. His Honour referred to the concept of a “threshold” of requisite reputation, and noted that the question was one of characterising the impugned conduct and not assessing the reaction of consumers or others to that conduct. Finally, his Honour referred to the proposition that, where the similarity complained of is “commercially irrelevant, having regard to the number of people who know of it”, then, despite that similarity, any association made by that small number of people will not be the result of misleading or deceptive conduct for the purposes of s 52 of the TPA. A transitory or ephemeral impression, if misleading, but which is immediately dispelled, may, depending on the circumstances, be of no commercial significance and therefore not misleading conduct within s 52 of the TPA.

(Citations omitted.)

89    The applicants’ evidence concerning several calls asking if the applicants are involved in the development at 466 Collins Street, or assuming the applicants are involved, can best be characterised in my opinion as transitory confusion or misapprehension. They are fleeting misapprehensions, easily displaced by any reasonable consideration of the material available about the development. Any reasonable member of the community reading that material will see the link with the Golden Age Group, and will understand the use of the phrase “Collins House” as identifying the property with its location in Collins Street, and no more.

90    For those reasons, I do not consider there is a serious question to be tried on the applicants’ claims, or (to use the alternative expression) that the applicants have made out a prima facie case for the relief they seek. It is apparent from the evidence that there was little if any basis for interlocutory relief to have been sought against APG on Collins, as a passive investor.

91    This is not a case where there is an overwhelming balance of convenience in favour of the grant of injunctive relief, such that the weakness of the arguments might be afforded considerably less weight, or might be found not to be determinative. As I set out below, in my opinion the applicants can be appropriately compensated by damages if their claims succeed.

92    Further, even if I were to assume in favour of the applicants that there was such a serious question or that they had made out a prima facie case, on the evidence the balance of convenience clearly does not favour the grant of an injunction because of the level of financial and reputational harm which would be suffered by the respondents in relation to the 466 Collins Street development.

Where the balance of convenience and justice lies

93    In submitting that the balance of convenience favoured the grant of the interlocutory relief sought, the applicants relied on the matters to which Mr Alafaci deposed and which I have summarised at [28]-[30] above. Essentially they concern injury to the applicants’ reputation, and the impression it is said members of the public may gather that the first applicant is not able to provide independent financial advice because it is involved in a residential development.

94    Submissions were also made to the effect that it was not possible to quantify in terms of damages the harm which would be done to the flow of existing or new clients to the applicants’ services if the applicants were to be mistakenly seen as involved in the Collins House development.

95    As I have noted above, in my opinion Mr Alafaci’s assertions about the perceived poor reputational aspects of those associated with the Collins House development, or some more general adverse perception about high level residential developers, are nothing more than speculation on his part. I see no basis to infer that there is any risk Mr Alafaci’s business activities will be mistakenly identified with the 466 Collins Street development. It seems to me, on the contrary, that his reputation is well entrenched and the nature of the services he provides clearly marked out. If there is a transitory misapprehension arising from the use of the two words “Collins House” together, it would be but fleeting and easily dispelled on any real inquiry by an existing or prospective client of Mr Alafaci’s. The matters he relies on and which I have set out at [30] are, as the respondents submitted, misconceived. The first applicant’s legal obligations concerning conflicts of interest relate to conflicts that exist in fact, not by way of the speculative and generalised perception of unidentified individuals.

96    In contrast, the prejudice to the respondents from the grant of an injunction of the kind sought would, in my opinion, be considerable. The proposal that the respondents can change the branding of a development of this magnitude and sophistication halfway through its marketing in a way that would cost only thousands of dollars, and would take only a couple of weeks, is unrealistic. Mr Dotchin’s evidence (on which this submission is based) may confirm the technological ease of some changes where information is in digital form, but says nothing about how the design choices are to be made or costed. No allowance is made as to how new words may or may not fit on existing promotional material. No allowance is made for the obviously careful creative design process involved in choosing a new brand that will be the most commercially appropriate and successful.

97    Originals of the promotional material were handed up and treated as part of the evidence without objection. I have examined them. They are extremely sophisticated, and detailed. They include a device which relies on the “H” in Collins House. This device appears not only in text, but is superimposed onto photographs in much of the material. The materials are obviously expensive to produce, and the evidence testifies to the expense in design. The production of all these materials as well as the promotion and advertising costs themselves are included in the overall estimate by Ms Du of $1.5 million allocated to spend on “marketing, branding and advertisement”. There is no basis to suppose that the respondents could, or should, reasonably reduce the nature and quality of their promotional material if they were forced to change the branding: indeed, the very high-end nature of the residential development means those considering purchasing apartments in this development will expect high quality visual material and information.

98    I find Ms Du’s evidence persuasive. She deposes to rebranding costs of approximately $250,000, a price which has been sourced from the respondents’ current marketing consultants. Again there is no reason to suppose that in a practical business sense the respondents would do anything but use these consultants, who already have significant familiarity with the development. She also deposes, as I have set out above, to the likely reputational consequences of rebranding a high level residential development in the middle of its promotion, and I consider her evidence reflects commercial realities. The effects of rebranding on those who have already purchased apartments cannot be discounted.

99    For the respondents to change the entire branding of such a large development, mid-stream, would be a considerably expensive undertaking and would have the obvious adverse reputational effects to which Ms Du deposes.

100    For the Court to compel that to occur, the applicants would need to have a strong case indeed.

101    Four further matters have weighed in my decision.

102    The first is the clear evidence that the Collins House development is being promoted in an intense way over a short period (in June 2015, 31 contracts for sale were executed representing 11% of the total 271 apartments), and that the high profile, high intensity promotion of the name “Collins House” will cease when all the apartments are sold. Ms Du estimates this will occur in the next few months, given that as at 7 July 2015 approximately 58 per cent of the apartments are already sold, and deposits paid by way of reserving lots on a further 11 per cent.

103    The applicants’ principal complaint, on their own evidence, stems from this intense and high profile marketing. If that stops shortly, as the evidence strongly suggests it will, so will the confusion and potential damage. In that way, the quicker the respondents can sell the apartments, the less damage (if indeed there is damage) may be done to the applicants’ interests.

104    The second is that I also consider that, in relation to the applicants’ claims, damages are an adequate remedy. If it be supposed that the trade mark infringement claim is successful, or the s 18 Australian Consumer Law claim, then it would seem the loss and damage is likely to be the loss of existing clients, or the failure to recruit new clients at the expected rate. Changes in revenue will be easily discernible on the applicants’ financial records. While the explanation for such changes will be largely a matter for inference, that is to say nothing more than that the applicants must prove what they assert. If the applicants are otherwise able to prove diminution of their (in reality Mr Alafaci’s) reputation, then I see no reasons why damages cannot compensate Mr Alafaci for this, especially given the high intensity promotion of the 466 Collins Street development occurs over a short term.

105    The third matter is, as the applicants’ counsel properly recognised, that the applicants essentially seek final relief on this application. Once it is necessary for the respondents to rebrand the entire development, the objections of the applicants dissolve. That being the case, the principles set out in Samsung [2011] FCAFC 156; 217 FCR 238 are applicable, and the applicants have failed to meet those thresholds of persuasion.

106    The fourth matter is that, based on the evidence before me, I doubt the applicants could satisfy any order for damages made consequent upon their undertaking. If I had been firmly persuaded of the merit of interlocutory relief, this factor would have loomed larger in my reasons. As it is, there are other factors which persuade me relief should be refused.

CONCLUSION

107    The application must be refused.

108    Counsel for GAS and GA Collins Development Pty Ltd sought an opportunity to be heard on the question of costs. It is appropriate the parties all have an opportunity put on whatever evidence and submissions they wish the Court to take into account in determining what if any costs orders should be made.

Associate:     

Dated:    17 July 2015