FEDERAL COURT OF AUSTRALIA

Sydney Medical Service Co-operative Limited v Lakemba Medical Services Pty Ltd [2016] FCA 763

ORDERS

THE COURT ORDERS THAT:

1.    The Respondent is restrained from distributing any pamphlets bearing the words “Sydney Medical Services 2020”.

2.    As from no later than 4pm on 6 July 2016 the Respondent is restrained from trading using the words “Sydney Medical Services 2020” or the words “Sydney Medical Services”.

3.    Further to Order 2, as from no later than 4pm on 6 July 2016 the Respondent is to:

(a)    remove the words “Sydney Medical Services 2020” from the exterior of the motor vehicle with the registration number BX 17 TX;

(b)    remove the words “Sydney Medical Services 2020” from the website http://www.lakembamedicalservices.com.au/after-hours/;

(c)    cease using the domain name http://www.sydneymedicalservices2020.com.au, and remove the words “Sydney Medical Services 2020” from that website;

(d)    remove or cause the words “Sydney Medical Services 2020” to be removed from the website http://healthengine.com.au; and

(e)    cease using the words “Sydney Medical Services 2020” in any email account.

4.    The parties have liberty to apply by no later than 8 July 2016 to vary the terms of the orders made.

5.    The Respondent is to pay the costs of the Applicant.

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

REASONS FOR JUDGMENT

1    The Applicant in the present proceeding is Sydney Medical Service Co-operative Limited (the “Sydney Medical Service”). That entity was established in 1966 and operates an after-hours medical service under the name “Sydney Medical Services”.

2    In March 2016 the Sydney Medical Service filed in this Court an Originating Application.

3    The Respondent to the proceeding is Lakemba Medical Services Pty Ltd. That is an entity which operates a general medical practice under the name “Lakemba Medical Services”.

4    Sometime shortly prior to 3 March 2016 it came to the attention of the Sydney Medical Service that the Respondent was operating an after-hours home doctor service under the name “Sydney Medical Services 2020”. A letter from the Applicant’s solicitors to the Respondent requested that it refrain from using that name. The Respondent declined. Litigation ensued.

5    The Sydney Medical Service (in very summary form) initially contended that Lakemba Medical Services has:

    engaged in misleading or deceptive conduct in contravention of s 18 of the Australian Consumer Law, which forms Sch 2 to the Competition and Consumer Act 2010 (Cth); and/or

    made a false or misleading representation that its services have an affiliation with those of the Applicant in contravention of s 29(1)(h) of the Australian Consumer Law; and/or

    made a false or misleading representation in contravention of s 29(1)(h), being a representation that the Respondent is accredited by Australian General Practice Accreditation Limited (“AGPAL”); and

    engaged in conduct which seeks to pass off its practice as that of the Applicant.

The Sydney Medical Service seeks a variety of orders, including an order that Lakemba Medical Services “be restrained from trading using the words ‘Sydney Medical Services 2020’…”.

6    The Applicant abandoned its claim that the Respondent contravened s 29(1)(h) by representing that the Respondent was accredited. The form of the Originating Application was otherwise sought to be amended at the outset of the hearing. Leave to amend was not opposed and leave was accordingly granted.

7    It is concluded that the relief sought in the Amended Originating Application should be granted.

Misleading or deceptive conduct & false representations – general principles

8    The Sydney Medical Service relies on s 18(1) of the Australian Consumer Law which provides as follows:

Misleading or deceptive conduct

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

Section 52 of the Trade Practices Act 1974 (Cth) (the “Trade Practices Act”), the predecessor provision of s 18 of the Australian Consumer Law, also employed the phrase “conduct that is misleading or deceptive or is likely to mislead or deceive”.

9    Both the terms of s 52 of the Trade Practices Act and the current s 18 of the Australian Consumer law have attracted considerable judicial attention.

10    It is unnecessary for present purposes to do anything other than to set forth some generally accepted common principles.

11    First, conduct will be “misleading or deceptive” if it induces or is capable of inducing error. It is not confined to conduct which is intended to mislead or deceive: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 197. When addressing the terms of the Trade Practices Act, Gibbs CJ there observed:

The words of s 52 have been said to be clear and unambiguous … Nevertheless they are productive of considerable difficulty when it becomes necessary to apply them to the facts of particular cases. Like most general precepts framed in abstract terms, the section affords little practical guidance to those who seek to arrange their activities so that they will not offend against its provisions. It has been held that the section is not confined to conduct that is intended to mislead or deceive … There is nothing in the section that would confine it to conduct which was engaged in as a result of a failure to take reasonable care. A corporation which has acted honestly and reasonably may therefore nevertheless be rendered liable to be restrained by injunction, and to pay damages, if its conduct has in fact misled or deceived or is likely to mislead or deceive. The liability imposed by s 52, in conjunction with ss 80 and 82, is thus quite unrelated to fault and it need not involve any infringement of a right to a trade name, trade mark, copyright or design …

Similarly, in Yorke v Lucas (1985) 158 CLR 661 at 666, Mason ACJ, Wilson, Deane and Dawson JJ observed:

… It is, of course, established that contravention of that section does not require an intent to mislead or deceive and even though a corporation acts honestly and reasonably, it may nonetheless engage in conduct that is misleading or deceptive or is likely to mislead or deceive …

Conduct which merely causes confusion or wonderment is not necessarily coextensive with misleading or deceptive conduct: Google Inc v Australian Competition and Consumer Commission [2013] HCA 1 at [8], (2013) 249 CLR 435 at 443 per French CJ, Crennan and Kiefel JJ.

12    Second, conduct is “likely to mislead or deceive” if there is a “real or not remote chance or possibility regardless of whether it is less or more than fifty per cent”: cf. Tillmanns Butcheries Pty Ltd v Australasian Meat Industry Employees’ Union (1979) 42 FLR 331 at 346 per Deane J; Sheen v Fields Pty Ltd (1984) 58 ALJR 93 at 95; Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82 at 87.

13    Third, it is not necessary to demonstrate actual deception to establish a contravention of s 18(1): cf. Google Inc [2013] HCA 1 at [6], (2013) 249 CLR 435 at 443 per French CJ, Crennan and Kiefel JJ.

14    In restating a number of well-established principles, Hill, RD Nicholson and Emmett JJ in S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 362 to 363 have observed:

Where the conduct claimed to be misleading or deceptive involves what is said to be a misrepresentation a number of principles applicable are well established. These were summarised in Equity Access Pty Ltd v Westpac Banking Corp (1990) ATPR 40–994 at 50,950–51 in a passage which has been followed in many cases and which was applied by the learned primary judge. We would restate the applicable principles relevant to the present case as follows:

[1]    There will be no contravention of s 52 unless the error or misconception which occurs results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible …

[2]    Conduct will be misleading and deceptive if it leads into error …

[3]    Conduct will be likely to mislead or deceive if there is a “real or not remote chance or possibility” of misleading or deceiving regardless of whether it is less or more than 50 per cent …

[4]    Conduct causing confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products or services might have come from the same source is not necessarily misleading and deceptive conduct …

[5]    In a case such as the present an applicant must establish that it has acquired the relevant reputation in the name or get up such that the name or get up has become distinctive of the applicant's business or products …

[6]    Conduct may be misleading or deceptive or likely to mislead or deceive notwithstanding that the corporation said to engage in that conduct acted honestly and reasonably and did not intend to mislead or deceive … Logically, a finding that conduct had been intentionally engaged upon will be irrelevant in determining whether that conduct is misleading or deceptive. It may perhaps be imagined that conduct engaged upon with the intent to mislead or deceive may fail in its purpose and not be found misleading or deceptive. Nevertheless, where the intention to mislead or deceive is found, it logically would be likely that a court would more easily find that the conduct was misleading or deceptive … It is unnecessary in the present case to consider the question whether a finding of intention to mislead or deceive can have relevance in other ways to issues such as remedies.

[7]    In many cases it will be necessary to consider the class of persons to whom the representation was directed …

[8]    There is no proposition of law to the effect that intervention from erroneous assumption between conduct and misconception destroys the necessary chain of causation with the consequence that the conduct cannot be regarded as likely to mislead or deceive …

[9]    The test of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective one for the court to determine. It is ultimately a question of fact.

15    The application of s 18 and the statutory prohibition against engaging in misleading or deceptive conduct is not constrained by, for example, the registration of a trade mark. The registration of a trade mark, accordingly, confers no defence to an action for passing off: Arthur Martin (Sales) Ltd v Electra Mechanics (1975) Ltd (1986) 13 IPR 122 at 127; New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549 at 570 per Gummow J (aff’d on appeal: New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1990) 171 CLR 363 at 396). Nor does the registration confer a licence upon the registered owner of the trade mark to use that mark in a manner which is misleading or deceptive: CI JI Family Pty Ltd v National Australian Nappies (NAN) Pty Ltd [2014] FCA 79 at [42].

16    The Applicant also places reliance upon s 29(1)(h) of the Australian Consumer Law. That section provides in relevant part as follows:

False or misleading representations about goods or services

(1)    A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

…

(h)    make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation …

Section 29(1)(h) had as its counterpart s 53(d) of the Trade Practices Act which provided as follows:

A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

…

(d)    represent that the corporation has a sponsorship, approval or affiliation it does not have …

The contention is that the Respondent has made a false representation that it is affiliated with the Applicant.

17    Section 29(1)(h) refers to a “false or misleading representation” as opposed to the expression employed in s 18(1), namely “misleading or deceptive”. But no meaningful difference attaches to this difference in terminology: Australian Competition and Consumer Commission v Dukemaster Pty Ltd [2009] FCA 682 at [14] to [15] per Gordon J. The term “false” means “contrary to fact, irrespective of the knowledge of the representor”: Australian Competition and Consumer Commission v Gary Peer and Associates Pty Ltd [2005] FCA 404 at [57] to [58], (2005) 142 FCR 506 at 519 per Sundberg J. It is sufficient for the purposes of s 29(1)(h) to prove that a representation is “false or misleading”; proof of any wrongful intention on the part of the entity making the representation is not required: cf. Given v CV Holland (Holdings) Pty Ltd (1977) 29 FLR 212 at 217. When considering s 53(a) of the Trade Practices Act and the prohibition against “falsely represent[ing] that goods … are of a particular … quality”, Franki J said:

… if a representation is in fact not correct, it comes within the words of the section, even if it is not false to the knowledge of the person making the representation, and even if the person making the representation is a servant of the company of insufficient significance in the company for his knowledge, according to the ordinary principles of the common law, to be deemed to be the knowledge of the company.

See also: Australian Competition and Consumer Commission v Billbusters Pty Ltd [2003] FCA 423 at [65] per Kenny J; Construction, Forestry, Mining and Energy Union v Hadgkiss [2007] FCAFC 197 at [56], (2007) 169 FCR 151 at 161 per Lander J.

18    The making of a “representation” requires that there be an intended representee to whom the representation is directed: Thompson v Riley McKay Pty Ltd (1980) 42 FLR 279 at 289. Deane J (as his Honour then was) said in respect to the term “represent”:

It is implicit in the ordinary use of the word 'represent' that there be an intended representee, to whom the relevant representation is directed. That intended representee may be an identified person, as in the case of a representation made to a particular person in a letter, or unidentified, as is commonly the case with a representation made in an advertisement to be disseminated by the mass media. There is not, however, implicit in the word 'represent' any requirement that the representation actually reach, or be understood by, the intended representee. The act of representing is complete once the subject matter is irrevocably set forth or disseminated upon the course which is intended to lead to the intended representee or representees.

This understanding of the term has since been applied by other Judges of this Court: e.g., Cassidy v NRMA Health Pty Ltd [2002] FCA 1228 at [49] per Jacobson J. With reference to the comments of Deane J that there is not implicit in the word “represent” any requirement that the representation actually reach or be understood by the intended representee, Hely J has noted that “there is authority inconsistent with such a suggestion”: Bank of Valletta PLC v National Crime Authority [1999] FCA 791 at [84], (1999) 164 ALR 45 at 64 to 65. In Thompson Deane J also went on to observe:

Where, as in ordinary conversation, the initial making of the statement of fact itself constitutes the method by which it is destined to reach the intended representee, the making of the statement will itself amount to a representation. Where, however, the initial making of the statement of fact is but a step in a process which is intended to lead up to the ultimate means of communication to the intended representee or representees, the making of the statement will not, in itself, constitute a representation until the statement of fact is set forth or disseminated upon the path of actual communication to the intended representee or representees. Thus, a statement of fact in the oral notes of a speech will not amount to a representation until the speech is actually delivered; (1980) 42 FLR at 289 to 290.

See also: Cassidy v Saatchi & Saatchi Australia Pty Ltd [2004] FCAFC 34 at [60] per Stone J.

19    The question whether a representation is “false or misleading” is one of fact which is to be determined having regard to the context in which the statement is made and all of the surrounding circumstances: cf. Seafolly Pty Ltd v Madden [2012] FCA 1346 at [41], (2012) 297 ALR 337 at 352. Tracey J there went on to state that the “court must determine what a reasonable person who is a member of the class to which the representation was directed would reasonably understand it to convey”.

20    An instance of where a respondent had made representations as to sponsorship and affiliation contrary to the former s 53(d) of the Trade Practices Act is provided in Australian Competition and Consumer Commission v Chen [2003] FCA 897, (2003) 132 FCR 309. The respondent, a person who lived in the United States and took no part in the proceeding, used internet sites promoting the sale of tickets including a website entitled “sydneyopera.org”. The respondent had no affiliation with the Sydney Opera House. The Court granted declaratory and injunctive relief. See also: REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559, (2013) 217 FCR 327.

21    It is not necessary for present purposes to go beyond this skeletal outline of propositions.

The tort of passing off

22    Although there may be some similarities between misleading and deceptive conduct and the tort of passing off, there are also significant differences.

23    The statutory prohibition against misleading and deceptive conduct is designed to protect consumers; the tort of passing off, by way of contrast, is designed to protect the goodwill or reputation attaching to a business or commercial venture: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 at [108], (2000) 202 CLR 45 at 88 per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ; CI JI Family Pty Ltd v National Australian Nappies (NAN) Pty Ltd [2014] FCA 79 at [50] per Flick J; Verrocchi v Direct Chemist Outlet Pty Ltd [2015] FCA 234 at [57], (2015) 112 IPR 200 at 210 per Middleton J.

24    The elements of the modern law of passing off have been summarised as follows by Diplock  LJ in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742:

My Lords, AG Spalding & Bros v AW Gamage Ltd (1915) 84 LJ Ch 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

His Lordship continued:

In seeking to formulate general propositions of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because all passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off. True it is that their presence indicates what a moral code would censure as dishonest trading, based as it is upon deception of customers and consumers of a trader’s wares but in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed: advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial “puffing” which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result.

Lord Diplock’s five “characteristics” of the cause of action for passing off have been adopted in Australia: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 443 to 444 per Deane J; ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 308 to 309 per Lockhart J; Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd [2004] FCA 1394 at [83] to [85], (2004) 213 ALR 153 at 167 to 168 per Weinberg J; Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 at [29] to [30], (2005) 143 FCR 479 at 487 per Merkel J.

Sydney Medical Service -v- Lakemba Medical Services

25    The facts of relevance to the resolution of the present dispute were substantially not put in dispute. The factual issue of the intention of Dr Sayid, who is a director of the Respondent, did assume relevance and should separately be addressed.

The Sydney Medical Service

26    The Sydney Medical Service was established in 1966 and has been known as the “Sydney Medical Service Co-operative Limited” since at least 1971. It provides an after-hours medical service and home visits throughout the entire Sydney Metropolitan region and Wollondilly.

27    The Sydney Medical Service has as its members registered medical practitioners or incorporated medical practices in the Sydney metropolitan area. Its membership has grown consistently since 2007 when it had 1,512 members, to 2,754 members in 2015. As at March 2016 it consisted of 2,824 medical practitioners working in 939 surgeries in the Sydney Metropolitan region. The number of services it has provided has also grown considerably since 2007. In 2007-08 it performed 59,423 services; in 2014-15 it provided 76,885 services.

28    The members of the co-operative refer their patients to the Sydney Medical Service normally by way of a recorded message on the telephone at their practices. The Sydney Medical Service engages locums to provide medical services, typically at night, on weekends or on public holidays. The locums provide a report to the patient’s general practitioner.

29    The Sydney Medical Service employs staff to promote its medical services to current and prospective members. Those promotional activities have included:

    the delivery by Australia Post, between November 2013 and May 2014, of over 330,000 pieces of promotional material to residences in Westmead, Campbelltown and the Inner West;

    the distribution of 516,000 “flyers” and 516,000 “magnets” (attached to the flyers); and

    the distribution by Advertising Printing Australia Pty Ltd of over 436,000 pieces of promotional materials to areas throughout Sydney.

Since November 2013 the Sydney Medical Service has:

    incurred costs of $374,920.54 in connection with the printing and distribution of promotional materials; and

    paid for the distribution of 848,489 pieces of promotional material to residences.

30    On 9 March 2016 the Sydney Medical Service lodged two applications for the registration of composite trademarks, the trade mark words being “Sydney Medical Service Co-operative Limited” and “1300 Home GP Sydney Medical Service Co-operative Limited”. The image for the former mark was as follows:

Lakemba Medical Services & Sydney Medical Services 2020

31    The company name Lakemba Medical Services Pty Ltd was registered in August 2013. Dr Mohammed and Dr Sayid were then listed as directors.

32    Somewhat curiously, Dr Sayid maintained in his affidavit that the “medical practice officially opened on the 16th January 2016 and had not traded as a medical centre or otherwise before that date”. Notwithstanding a written submission advanced on behalf of the Applicant that the Respondent has since 2012 operated a general medical practice under that name, there was no evidence to support that submission (other than the date of incorporation) and there was no cross-examination of Dr Sayid to question the date his medical centre started trading. In closing submissions the Applicant stated that the Repondent’s business only commenced in January 2016. Dr Sayid’s evidence, in this regard, is thus accepted.

33    In September 2015 Lakemba Medical Services registered the business name “Sydney Medical Services 2020”. On 4 March 2016 the Respondent completed the registration of the company Sydney Medical Services 2020 Pty Ltd.

34    Since March 2016 the businesses of Lakemba Medical Services and Sydney Medical Services 2020 have been conducted from premises at Railway Parade, Lakemba. The name “Sydney Medical Services 2020” appears prominently at those premises and on motor vehicles associated with the business.

35    On some of the Respondent’s websites, its trading name is reduced to “Sydney Medical Services”.

36    On the outside of the building located at the registered office of the Respondent are two signs – one bearing the words “Lakemba Medical Services” and the other bearing the words “Sydney Medical Services 2020”. These signs are also displayed on the interior of those premises.

37    The business of Sydney Medical Services 2020 is described in its promotional material as follows:

OUR PRACTICE

Sydney Medical Services 2020 is an after hours medical practice dedicated to provide the highest level of care to all patients.

The Medical Centre is accredited with the Australian General Practice Accreditation Limited (AGPAL), the leading provider of accreditation in Australia, ensuring the highest standard of quality service.

The factual accuracy of the latter statement as to accreditation may be left to one side. Of importance is the statement that the Sydney Medical Services 2020 is held out as “an after hours medical practice…”.

38    The Respondent’s medical patients are usually from northern African countries such as Somalia, Ethiopia, Sierra Leone and Nigeria. The majority of the practice is purely local and confined to particular ethnic groups.

39    On 20 March 2016 the Respondent lodged an application for the registration of a composite trade mark, the image being as follows:

The registered owner of the mark was specified as Sydney Medical Services 2020 Pty Ltd. The registered office and principal place of business is stated as the same as that of Lakemba Medical Services.

Misleading or deceptive conduct – s 18

40    It is concluded that the conduct of the Respondent does contravene s 18 of the Australian Consumer Law.

41    In reaching that conclusion regard has been had to the following considerations:

    the fact that, notwithstanding differences between the nature of the services offered by the parties, both services are directed to securing for patients access to medical practitioners at times when a patient may not have ready access to his regular doctor; and

    the fact there is a distinct similarity between the phrase “Sydney Medical Services”  and “Sydney Medical Services 2020”. The domain www.sydneymedicalservices2020.com.au/services/  and http://www.lakembamedicalservices.com.au/online-booking/ both provide access to websites operated by Lakemba Medical Services. There were, moreover, instances where the Respondent used the phrase “Sydney Medical Services” without the reference to “2020”.

Allied with these considerations is the fact that:

    the hours of operation of the two services are comparable; and

    the geographical areas in which services of the Applicant and the Respondent are offered overlap, albeit the area of operation of the Applicant’s services is much greater than the more confined area in which the Respondent operates.

Although it was submitted on behalf of the Respondent that the Applicant “has not distributed any pamphlets in Lakemba, Wiley Park and West Campsie areas”, there was evidence that the Applicant did distribute pamphlets promoting its services in the Bankstown area. That evidence was to be found in invoices for costs incurred in the printing of “flyers” for “Distribution to Bankstown area” and for “Distribution for Bankstown areas”. There was also evidence that Advertising Printing Australia Pty Ltd has distributed over 436,000 pieces of the Applicant’s promotional material to areas including Bankstown. Submissions as to patients being more likely to be referred to Bankstown Hospital as opposed to Canterbury Hospital were speculative and advanced in the absence of any evidence. Such speculative submissions took the matter no further. Of remaining relevance, however, is the fact of promotion of the Applicant’s services in Bankstown or the “Bankstown area”, a suburb geographically proximate to Lakemba, Wiley Park and West Campsie. On display in the Admissions area at Bankstown Hospital is also a sign setting forth the Applicant’s telephone number next to the heading “After hours GP helpline”.

42    Consideration has also been given to the fact that there is a distinct correlation or comparison between the websites of the Applicant the Respondent, that correlation or comparison including the fact that:

    the Applicant’s website includes a statement encouraging “patients to see their own doctor for routine consultations” where the Respondent’s website includes a statement that “our staff encourage patients to continue to see their own doctor for routine consultations and follow up care”;

    the Applicant’s website contains a statement that “for abnormal results the GP will be contacted by phone immediately or referred to the Service’s Medical Director to organize the appropriate follow up” where the Respondent’s website includes a statement that “if abnormal results arise the regular GP will be contacted by phone immediately or the patient will be referred to the Service’s Medical Director who will then organize appropriate follow up care”; and

    the fact that the Applicant’s website contains a statement that “we take your concerns, suggestions and complaints seriously”. The statement continues: “You may also send a written complaint to our Chief Executive Officer who will complete an appropriate investigation and inform the complainant of the outcome. However, if you wish to take the matter further there are several options available including: Health Care Complaints Commission”. The Respondent’s website includes the following statement: “We take your concerns, suggestions and complaints seriously. You may also send a written complaint to our Practice Manager who will complete an appropriate investigation and inform the complainant of the outcome. However, if you wish to take the matter further there are several options available including Health Care Complaints Commission [sic].”

Such comparisons, it is concluded, cannot all be attributed to the fact that there is a correlation between the services offered by the Applicant and the Respondent. The overlapping nature of the services being offered may account for one or other of the comparable statements; but that cannot account for the extent of duplication and the distinct similarity between the manner in which statements made on the websites are expressed.

43    Some consideration has also been given to the limited degree of similarity between the logos employed by the Applicant and the Respondent. Although there is some similarity between the brochures displaying those logos, it is more attributable to the words employed (i.e., “Sydney Medical Service”) rather than the logos themselves. The Applicant submitted that there was a deceptive similarity between the logos attributable to:

    the circular stethoscope of the Applicant’s logo and the circular shape of the Respondent’s logo; and

    the fact that the logos are often depicted next to the words expressing the businesses of the parties.

Any such similarity between the logos, with respect, would be inadequate in itself to found a contravention of s 18(1). Even taken into account with such similarities in conduct as have been found to exist, the similarity of the logos adds little.

An intention to mislead or deceive

44    As noted in S & I Publishing, a Court may “more easily find that … conduct was misleading or deceptive” where it finds an intention to mislead or deceive.

45    On occasions, a combination of factual circumstances may merely invite speculation as to why the conduct was pursued; on other occasions the circumstances may support an inference that the conduct has been intentionally pursued with full knowledge that it may well be misleading or deceptive.

46    In the circumstances of the present case, factual circumstances which may merely have invited speculation include the fact that:

    there remained unexplained why the Respondent had a day-time medical service known as the Lakemba Medical Services but employed a different name, “Sydney Medical Services 2020”, for its after-hours service; and

    the name employed by the Respondent to describe its after-hours service employed the word “Sydney” in circumstances where its services were confined to a localised area of three suburbs and where it conceded that its medical practice was “limited to a small geographical area within the Sydney metropolitan area” and did not seek to cover any broader area.

In the absence of explanation, a Court may well question the reason for such conduct but nevertheless be content to proceed upon the assumption that such conduct supports a conclusion that a party has engaged in misleading or deceptive conduct – whatever may be the reason.

47    In the circumstances of the present case, however, it is concluded that the Respondent intentionally set out to mislead or deceive.

48    That conclusion is not only supported by the absence of explanation but by the further conclusion that some of the evidence given by Dr Sayid is to be rejected as being inconsistent with objective facts.

49    That evidence is to be found in Dr Sayid’s affidavit where he maintained that he “had never heard of the Applicant and … had no idea of the name nor of its business operations” until 9 March 2016. Dr Sayid in his affidavit further maintained that he had never received a letter dated 3 March 2016. The importance of this letter is that the legal representative of the Applicant (Ms Sorbara) then advised the Respondent that the Applicant contended “that the use of the name ‘Sydney Medical Services 2020’ in relation to the provision of after-hours service and home medical visits amounts to passing off and a contravention of ss 18 and 19 of the Australian Consumer Law…”. Unless the Respondent ceased using the name “Sydney Medical Services 2020” in conjunction with the provision of after-hours medical services, the 3 March 2016 letter advised the Respondent that the Applicant would “commence legal proceedings without further notice to you”.

50    The bases upon which the submission was advanced that such evidence should not be accepted included the following:

    the fact that an e-mail was forwarded to the e-mail address of the Respondent on 3 March 2016 attaching a copy of the letter dated 3 March 2016 and the fact that a copy of the letter was also separately sent by way of express post to the Respondent on that date. Australia Express Post Tracking confirmed delivery of the letter;

    the fact that an internal communication within the Applicant’s legal representatives on 4 March 2016 records a message to Ms Sorbara to “please call Mukta…[sic]” and went on to state that “you wrote him a letter” and that she would “know what its about”. The recorded phone number was that of Dr Sayid;

    the fact that the e-mail dated 3 March 2016 was e-mailed to the same address as that used when sending the 9 March 2016 letter, a copy of which Dr Sayid accepts as having been received; and

    the fact that it was on 4 March 2016 that Dr Sayid formally sought the registration of the company Sydney Medical Services 2020 Pty Ltd, notwithstanding the fact that he had not sought any protection for the Sydney Medical Services 2020 business since registering the business name in September 2015.

The evidence of Dr Sayid that he never received the 3 March 2016 letter and his evidence that the “first communication received by the Respondent from the Applicants [sic] solicitors is an email dated 9 March 2016” is rejected. His denial in his affidavit and his denial in his oral evidence is not accepted. Without descending unnecessarily into the manner in which Dr Sayid gave his evidence, his answers in cross-examination often were more in the nature of advocacy for the Respondent, rather than a simple answer to the question being posed.

51    It is concluded that Dr Sayid did receive a copy of the 3 March 2016 letter and that was the reason he was motivated to seek the formal registration of the company Sydney Medical Services 2020 Pty Ltd on 4 March 2016. His evidence that the date of the letter and the date upon which he formally registered that company was a “coincidence” is rejected.

52    The comparison between the websites posted by the Applicant and the Respondent may also attract a question as to whether there was an intention on the part of the Respondent to deliberately ensure its own web-site was very similar to that of the Applicant. But it is unnecessary to pursue that question further.

53    The Applicant, it is concluded, has discharged the onus to prove a contravention of s 18(1) of the Australian Consumer Law.

A false or misleading representation – s 29(1)(h)

54    It has also been concluded, and for much the same reasons, that there has been a contravention of s 29(1)(h) of the Australian Consumer Law.

55    There can be no doubt that the Respondent has made “representations” that it offers after-hours medical services and does so as “Sydney Medical Services 2020”. That is the representation made in the advertising on the exterior of its business premises, on the interior of those premises and on brochures it has distributed.

56    There can also be little doubt that in doing so the Respondent made a representation that it is affiliated with the Applicant. It is a representation to both the patients that enter the medical practice of the Respondent and to those persons passing the premises occupied by the Respondent. The relevant class of persons to whom the representation is made are both the patients of the medical practice of the Respondent who attend its surgery and also those persons who may be in need of after-hours medical attention.

57    The representation is both false and misleading.

CONCLUSIONS

58    The conclusion that the Respondent has contravened s 18(1) of the Australian Consumer Law is a conclusion founded upon a combined assessment of each of the indicia or considerations set forth, including the finding as to the intention pursued by the Respondent to mislead or deceive. It would most probably have been the case that this conclusion would have been reached even in the absence of the finding as to intent. That finding has nevertheless considerably assisted the reaching of that conclusion.

59    It is also further concluded that the Respondent has contravened s 29(1)(h) of the Australian Consumer Law in that it has made representations that it is affiliated with the Applicant. These representations are both false and misleading.

60    Given these conclusions, it is unnecessary to resolve the further contention of the Applicant that the Respondent’s conduct also amounted to passing off its services as those of the Applicant’s.

61    The Respondent, it should be noted, has already given an undertaking not to distribute any pamphlets bearing the words “Sydney Medical Services 2020” until judgment. The injunctive relief substantially as sought by the Applicant should be made.

62    Costs should follow the event.

63    Liberty is reserved to the parties to apply by no later than 8 July 2016 to vary the terms of the orders made.

THE ORDERS OF THE COURT ARE:

1.    The Respondent is restrained from distributing any pamphlets bearing the words “Sydney Medical Services 2020”.

2.    As from no later than 4pm on 6 July 2016 the Respondent is restrained from trading using the words “Sydney Medical Services 2020” or the words “Sydney Medical Services”.

3.    Further to Order 2, as from no later than 4pm on 6 July 2016 the Respondent is to:

(a)    remove the words “Sydney Medical Services 2020” from the exterior of the motor vehicle with the registration number BX 17 TX;

(b)    remove the words “Sydney Medical Services 2020” from the website http://www.lakembamedicalservices.com.au/after-hours/;

(c)    cease using the domain name http://www.sydneymedicalservices2020.com.au, and remove the words “Sydney Medical Services 2020” from that website;

(d)    remove or cause the words “Sydney Medical Services 2020” to be removed from the website http://healthengine.com.au; and

(e)    cease using the words “Sydney Medical Services 2020” in any email account.

4.    The parties have liberty to apply by no later than 8 July 2016 to vary the terms of the orders made.

5.    The Respondent is to pay the costs of the Applicant.

Associate:

Dated:    29 June 2016