FEDERAL COURT OF AUSTRALIA

Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649

ORDERS

THE COURT ORDERS THAT:

1.    The applicants are directed to submit proposed orders arising out of the reasons for judgment published today.

2.    The parties are directed to file and serve submissions in relation to the costs of and incidental to the proceedings within three weeks.

3.    Costs be reserved.

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

ORDERS

THE COURT ORDERS THAT:

1.    The applicant is directed to submit proposed orders arising out of the reasons for judgment published today.

2.    The parties are directed to file and serve submissions in relation to the costs of and incidental to the proceedings within three weeks.

3.    Costs be reserved.

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

REASONS FOR JUDGMENT

GREENWOOD J:

INTRODUCTION

1    These proceedings are concerned with two actions heard together. The first (NSD 975 of 2014) is a proceeding commenced by Mr Philip Selth in a representative capacity for the members of an unincorporated body (well-known amongst the relevant cohorts) described as The Australian Bar Association (the “ABA”). The inaugural general meeting of the ABA was held on 24 January 1963 at Theatre Royal, 29 Campbell Street, Hobart, Tasmania. It seems that the first draft of the Constitution for the ABA was prepared by the Hon Nigel Bowen QC and was settled at a meeting of representatives of the New South Wales Bar Association, the Victorian Bar Council and the Queensland Bar Association at the home of the Hon Nigel Bowen QC in Wahroonga in Sydney.

2    The ABA is said to consist of practising barristers who are members from time to time of the Australian Capital Territory Bar Association, the Bar Association of Queensland, the New South Wales Bar Association, the Northern Territory Bar Association, the South Australian Bar Association, the Tasmanian Independent Bar, the Victoria Bar Incorporated and the Western Australian Bar Association, and such other practising barristers who may from time to time be admitted to membership of the ABA according to the constitutional arrangements for that purpose.

3    A company limited by guarantee, ABA Australian Bar Association Limited (“ABA Ltd”) joined the proceeding as second applicant. That company was incorporated on 20 May 2015 for the purpose of assuming the role and function of the ABA. The origin of the ABA and the relationship between the ABA and ABA Ltd is described later in these reasons. It should be noted, however, that all references in these reasons to the “ABA” should be understood as a reference to the unincorporated body up to the point in time at which ABA Ltd assumed the role and function of the unincorporated body and thereafter a reference to ABA Ltd unless expressly otherwise indicated. Where a particular reference to the legal character of the earlier body is necessary, I describe it as “ABAU”.

The respondents to the first proceeding

4    The first respondent is Australasian Barrister Chambers Pty Ltd (in liq) (“Chambers”). A liquidator was appointed to Chambers on 8 December 2015. On 18 December 2015, the applicants were given leave to proceed against Chambers in liquidation.

5    The second respondent is Mr Derek Minus (“Mr Minus”). Mr Minus is a barrister. He was formerly a member of the New South Wales Bar Association and at the date of the trial was a member of the Victorian Bar Association. Until 1 October 2014, Mr Minus was the sole director of Chambers. He has been the Secretary of Chambers since its incorporation on 15 October 2008. Since 1 October 2014, the sole director of Chambers has been Ms Armine Minasian, the wife of Mr Minus. All of the issued 10 shares in Chambers have been held by ABCD Corporation Pty Ltd (“ABCD”) and the sole directors of, and shareholders in, ABCD are Mr Minus and Ms Minasian.

6    The third respondent is Dispute Resolution Associates Pty Ltd (“DRA”). It was incorporated on 9 December 1999. Mr Minus has been a director of that company since 9 December 1999 and its sole director since 19 July 2006. The 300 issued shares in DRA are held by Aplus Pty Ltd (“Aplus”). The directors of Aplus are Mr Minus, Ms Minasian and Sathenik Minus. Of the 10 issued shares in Aplus, one is beneficially held by Ms Minasian and nine are held beneficially by Mr Minus. Aplus is the owner of a registered business name Australian Dispute Resolvers.

7    The fourth respondent is Austbar Pty Ltd (“Austbar PL”). That company was incorporated on 9 September 2015. The sole shareholder is Aplus. The sole director is Mr Minus.

8    At the trial, Mr Minus appeared on his own behalf and on behalf of DRA and Austbar PL. Chambers was not represented at the trial although it was represented by Mr Minus up until the appointment of a liquidator to that company. Thus, a reference in these reasons to the contentions of the respondents is a reference to all respondents other than Chambers.

The applicants’ claims in the first proceeding

9    The applicants seek the following relief.

10    First, a declaration that Chambers, by using the names and marks Australian Bar Association and Australian Barristers Association in connection with the conduct of an association, organisation or business concerned with representing or promoting the interests of Australian barristers (a collection of services described by the applicants as the “relevant services”), has infringed two Registered Trade Marks owned, since 27 July 2015, by ABA Ltd. Prior to that, they are said to have been owned by ABAU.

11    The two Registered Trade Marks are these:

(1)    Trade Mark 1587902, “AUSTRALIAN BAR ASSOCIATION”, registered in Classes 9, 16, 35, 41 and 45 (TM 902); and

(2)    Trade Mark 1558252 (the “device mark” or “TM 252”) as set out below, registered in Classes 9, 14, 16, 25, 35, 41 and 45.

12    The applicants describe the device mark as the “ABA Logo Mark”.

13    The applicants contend that each such use or proposed use by Chambers is use or proposed use of a name or mark (that is, a “sign”) substantially identical with, or deceptively similar to, each registered trade mark in respect of services for which each trade mark is registered: s 120(1), Trade Marks Act 1995 (Cth) (the “TM Act”).

14    The applicants also seek a declaration that Chambers, by use of the following names and marks:

    Australian Barrister Chambers;

    AustBar Chambers; and

    Australian Barrister,

in conjunction with, or in close proximity to, an image of the scales of justice “similar to” the scales forming part of the logo comprising the device mark (being use in conjunction with the relevant services), has infringed the device mark (TM 252) on the footing that such use is use of a sign substantially identical with, or deceptively similar to, TM 252 in respect of services for which the mark is registered: s 120(1), TM Act; Declaration 1A, Second Further Amended Originating Application (“SFAOA”).

15    The origin of the use of the marks by the applicants and the services for which they are registered is discussed later in these reasons. However, it should be noted at this point that none of the respondents have cross-claimed for revocation of either mark and Mr Minus expressly disavowed any such claim on behalf of any of the respondents including Chambers (in the period up to the point at which a liquidator was appointed to that company).

16    Nevertheless, in answer to the claims of infringement, the respondents contend that ABAU is “unable to own any Australian trade mark” and ABAU has “no members” who have “formally applied” to join it or “authorised” an application to be made to it for membership for which a trade mark registration could be held on trust. Apart from that contention, the respondents say that the “ownership” of each registered trade mark is held on trust “as indivisible joint trustees on behalf of the members of the association” by those 12 identified members of the Australian Bar Council (the “AB Council”, being the management organ of ABAU under its Constitution) who applied for registration of each trade mark. They also contend that the assignment of ownership of each trade mark from those persons to those members constituting the AB Council on 17 April 2014 was invalid. The new Council was comprised of 11 members. The new members were Mr William Alstergren SC and Mr Peter Davis QC. The outgoing members were Mr Colbran QC, Mr Traves QC and Mr Walker. Those outgoing members assigned their “joint ownership” of each registered trade mark to the incoming members. That assignment is said, by the respondents, to be invalid. The respondents also contend that the assignment on 27 June 2015 of the trade marks to ABA Ltd was invalid because ABAU did not own and could not pass a valid title to ABA Ltd.

17    Second, the applicants seek a declaration that Chambers by use, in connection with the relevant services, of:

    Australian Bar Association;

    Australian Barristers Association;

    Australasian Barrister Chambers;

    Australian Barrister; and

    Australian Barristers Chambers, AustBar Chambers, and Australian Barrister, each in conjunction with, or in proximity to, the scales of justice forming part of the logo comprising the ABA logo,

engaged in conduct in contravention of s 18(1) of the Australian Consumer Law (“ACL”) and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.

18    Third, they seek a declaration that Chambers by use, in connection with the relevant services, of the mark or name AustBar engaged in conduct in contravention of s 18(1) of the ACL and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.

19    Fourth, they seek a declaration that Chambers by use, in connection with the relevant services, of each of:

    URL ˂www.austbar.com.au˃;

    the name AustBar Chambers;

    the name AustBar ADR; and

    the tweet identifier ˂Australian Barrister@AustBar˃;

    the URLs, names and marks above, and the name and mark “AustBar”, each in conjunction with, or in proximity to, the scales forming part of the logo comprising the ABA logo,

engaged in conduct in contravention of s 18(1) of the ACL and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.

20    Fifth, they seek a declaration that Mr Minus is liable as a joint tortfeasor in respect of the infringement of TM 902 and TM 252 by Chambers; that Mr Minus has aided and abetted, counselled or procured, the contraventions by Chambers of the ACL falling within declarations 2, 3 and 4 above; and that Mr Minus has aided and abetted, counselled or procured, the contraventions by Austbar PL described below in these reasons.

21    Sixth, they seek a declaration that DRA has aided and abetted, counselled or procured, the contraventions by Chambers of the ACL falling within the scope of the fourth declaration sought by the applicants described above.

22    As to Austbar PL, the applicants seek a declaration that that company has, by the use of the name and mark “AustBar” and the name “AustBar Chambers”, in connection with the relevant services, engaged in conduct in contravention of s 18(1) of the ACL and has made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.

23    The applicants also seek injunctions against the respondents. They seek by para 7 of the SFAOA an order that the respondents be restrained from using, in trade or commerce in Australia, in respect of the relevant services:

    the name and mark Australian Bar Association or any name deceptively similar to that name;

    the name and mark Australian Barristers Association or any name deceptively similar to that name;

    the name and mark Australasian Barrister Chambers or any name deceptively similar to that name;

    the name and marks Austbar and AustBar Chambers or any name deceptively similar to those names;

    the name AustBar ADR or any name deceptively similar to that name;

    the tweet identifier ˂Australian Barrister@AustBar˃ or any identifier deceptively similar to that identifier;

    the URLs, names and marks referred to above, each in conjunction with, or in proximity to, the scales forming part of the logo comprising the ABA logo.

24    The applicants also seek an order by para 8 of the SFAOA that the respondents be restrained from representing, in trade or commerce in Australia, in respect of the relevant services, by use of:

    the name and mark Australian Bar Association or any name deceptively similar to that name;

    the name and mark Australian Barristers Association or any name deceptively similar to that name;

    the name and mark Australasian Barrister Chambers or any name deceptively similar to that name;

    the name and marks Austbar and AustBar Chambers or any name deceptively similar to those names;

    the name AustBar ADR or any name deceptively similar to that name;

    the tweet identifier ˂Australian Barrister@AustBar˃ or any identifier deceptively similar to that identifier;

    the URLs, names and marks referred to above, each in conjunction with, or in proximity to, the scales forming part of the logo comprising the ABA logo,

that any association, organisation and business set up by the respondents or any of them to provide services to Australian barristers is sponsored by, approved of or affiliated with, the applicants.

25    The applicants then seek a range of other orders consequential upon the earlier orders. It is not necessary to identify the full scope of those orders. It should be noted, however, that the claim for damages is not pressed by the applicants against any of the respondents.

The second proceeding

26    The second proceeding (NSD 1019 of 2014) is a proceeding commenced by the New South Wales Bar Association (“NSWBA”). The NSWBA was incorporated in 1936 and is now a public company limited by guarantee. It is also well-known amongst the relevant cohorts. Its members are said to primarily comprise barristers holding Practising Certificates under the Legal Profession Act 2004 (NSW). It is governed by a Bar Council consisting of 21 members. In 1998, the NSWBA registered and has used since that date the domain name ˂www.nswbar.asn.au˃ which is the website for the NSWBA.

27    The respondents to the proceeding are Mr Minus and Chambers.

28    In the proceeding, the NSWBA seeks the following relief.

29    First, a declaration that the respondents have infringed Registered Trade Mark 1564401 BARADR (“TM 401”) by use of the mark “BARADR” and the domain name ˂www.baradr.com.au˃, in connection with the promotion of, and provision on the internet or otherwise of, information about alternative dispute resolution (“ADR”) and Australian barristers involved in ADR.

30    Second, a declaration that Chambers has, by the use of the mark “BARADR”; the domain name ˂www.baradr.com.au˃; and the domain name ˂www.austbaradr.com.au˃, in connection with the promotion of, and provision on the internet or otherwise of, information about ADR and Australian barristers involved in ADR, engaged in conduct in contravention of s 18(1) of the ACL and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.

31    Third, a declaration that Mr Minus is liable as a joint tortfeasor in respect of the infringement of TM 401 by Chambers; and that Mr Minus has aided and abetted, counselled or procured, the contraventions by Chambers of ss 18(1), 29(1)(g) and 29(1)(h) of the ACL.

32    The applicant also seeks injunctions restraining the respondents from particular conduct.

33    An injunction is sought restraining the respondents, in trade or commerce in Australia, in respect of the promotion and provision on the internet or otherwise of information about ADR and Australian barristers involved in ADR, from using the mark “BARADR” and any mark substantially identical with or deceptively similar to that mark; the domain name ˂www.baradr.com.au˃ and any domain name substantially identical with, or deceptively similar to, that domain name; and the domain name ˂www.austbaradr.com.au˃ and any domain name substantially identical with, or deceptively similar to, that domain name.

34    The applicant also seeks an order that the respondents be restrained, in trade or commerce in Australia, in respect of the promotion of and provision on the internet or otherwise of information about ADR and Australian barristers involved in ADR, from representing, by use of the mark “BARADR” and any mark substantially identical with or deceptively similar to that mark; the domain name ˂www.baradr.com.au˃ and any domain name substantially identical with, or deceptively similar to, that domain name; and the domain name ˂www.austbaradr.com.au˃ and any domain name substantially identical with, or deceptively similar to, that domain name, that they or either of them, any website associated with either of them or any promotion or provision on the internet or otherwise by either of them of information about ADR and Australian barristers involved in ADR has the sponsorship or approval of or is associated with the NSWBA.

35    The NSWBA also seeks a series of consequential orders arising out of the relief otherwise claimed. It is not necessary to set out the nature of the consequential relief. The NSWBA does not press a claim for damages against either respondent.

36    I will now deal with the underlying factual matters relating to the ABA proceedings. I will then address the underlying factual matters in relation to the NSWBA proceedings.

THE ABA PROCEEDINGS

37    The applicants rely upon 10 affidavits recited in Ex 3(A). The respondents rely upon the affidavits also recited in Ex 3(A). There are, of course, other exhibits tendered in evidence and oral evidence arising out of the cross-examination of the deponents.

38    The principal evidence given on behalf of the applicants concerning the ABAU, its activities, the formation of ABA Ltd and the relationship between those bodies was given by Mr Philip Alan Selth (“Mr Selth”). Mr Selth is the Executive Director of the NSWBA and Chief Executive Officer (“CEO”) of the ABA. He has held these positions since 10 November 1997 and 2 February 2015 respectively. Mr Selth has been involved with the affairs of the ABA since his appointment as Executive Director of the NSWBA in 1997. He has, from 1997, to the best of his recollection, attended every meeting of the AB Council and has been responsible for a significant part of the administration of the business of the ABA including its financial management.

39    The ABAU is an unincorporated Association governed by a Constitution. The Constitution provided, at the relevant time, that the name of the Association is “The Australian Bar Association”. The ABA’s objectives, set out at cl 3, include:

(a)    To promote and maintain the rule of law.

(b)    To promote the effective administration of justice.

(c)    To encourage the continued existence and growth of an independent Bar in Australia including the Territories.

(d)    To promote, maintain and improve the interests and standards of members.

(e)    To form a bond of union among members of the Bar in the Commonwealth of Australia and its Territories and to provide means whereby:

(i)    Their views can be easily ascertained and expressed;

(ii)    Exchange of information and views on matters affecting barristers may be facilitated;

(iii)    Common standards or rules may, where it is considered desirable, be adopted.

(f)    …

(g)    To maintain and improve standards of instruction and training of barristers and of those intending to become barristers.

(h)    To maintain liaison, and when thought appropriate, cooperate with the Law Council of Australia or any other body representing the profession or any other body at the discretion of the Australian Bar Council.

(i)    To arrange and promote continuing legal education and to undertake the occasional publication of transactions and other papers.

(j)    To establish and publish a periodical Australian Bar review or journal.

(k)    To make representations on behalf of barristers to Commonwealth and other government departments or bodies.

…

40    Clause 4(a) provides that the members of the ABA shall consist of the practising barristers who are members from time to time of the eight bodies described at [2] of these reasons described in cl 4(a) as the “Constituent Bodies”, and “such other practising barristers as may from time to time be admitted to membership by the [AB Council]”. Clause 5 provides for an AB Council charged with the control and management of the affairs of the Association. The AB Council consists of five officers who must all be members of the ABA and one representative from each of the Constituent Bodies. The officers are to be elected annually at the Annual General Meeting.

41    Mr Selth says that, historically, those practising barristers who hold a current Practising Certificate and are also a member of one of the Constituent Bodies, have “automatically” been registered as members of the ABA. For the 2015/2016 financial year, practising barristers who renewed their membership of the NSWBA could elect, on the renewal form, to opt out of continuing membership of the ABA. As to funding, the ABA receives membership revenue based on an annual fee deducted from the membership fees paid by practising barristers to the relevant Australian State or Territory Bar Association. The ABA also generates revenue through the conduct of conferences, events, functions and training courses.

42    As already mentioned, the inaugural Annual General Meeting of the ABA was held on 24 January 1963 in Hobart. The move to form such an Association began with a unanimous resolution of the New South Wales Bar Council on 26 June 1957, to do so. The circumstances that led to such a resolution seemed to have been a concern on the part of the Bar Council that the NSWBA had no voting rights on the Executive of the Law Council of Australia (the “LCA”) in 1955/1956; the notion that the Constitution of the LCA was thought to be “unsatisfactory”; and the concern that the Bar Council and the NSWBA had experienced difficulty in being “heard” by the Commonwealth Attorney-General on issues of importance to the NSWBA, outside the primary consultation forum of the LCA. The Queensland Bar Association supported the proposal provided that the formation of the ABA did not “in any way subvert the condition or status” of the LCA. The Victorian Bar Association opposed the proposal. The proposal to form such an Association was put to the Australian Law Convention held in Melbourne in 1957 in a paper presented by the President of the NSWBA (later Wallace J and President of the New South Wales Court of Appeal). The proposal, however, was “with one exception condemned”. The exception was the support of the Bar Association of Queensland in the proposal. The concern, resulting in the proposal being condemned, was, as expressed by Else-Mitchell QC (later Else-Mitchell J), and others, that “no other consequence would follow than the dismemberment of the [LCA] if there were formed an [ABA] on the basis and with the powers and scope [as proposed]”, should such a proposal be supported: see The Founding of the Australian Bar Association, Hart J and Mr John Helman (later Helman J), Australian Bar Gazette, cited as 1968 2(3), Aust Bar Gaz 3.

43    Since its formation, aspects of the functions and role of the ABA have been recognised under statutory arrangements: The Legal Profession Uniform Law Application Act 2014 (Vic); The Legal Profession Uniform Law Application Act 2014 (NSW). Under those Acts, the ABA has statutory duties and roles concerning the development of Uniform Rules relating to barristers; Legal Practice Rules; Legal Professional Conduct Rules; and Continuing Professional Development Rules.

44    Mr Selth says that in pursuing its objects, the ABA, over time, has undertaken, and continues to undertake, various “activities for its members” and “provides various services to the legal profession generally” both of which he describes as the “ABA Services”. The activities are set out at para 16 of Mr Selth’s affidavit of 22 April 2015 and they include these activities:

(a)    In about 2005 the ABA established the Advocacy Training Council (ATC). The ATC allows the ABA to become directly involved in the initial and ongoing training of barristers practising in Australia. Each year the ABA conducts a series of advocacy courses (ABA Advocacy Courses) comprising:

i.    a five-day residential Advanced Trial Advocacy course in January;

ii.    a five day residential Essential Trial Advocacy course in June; and

iii.    a three day Appellate Advocacy course in September.

The advocacy coaches of the ABA Advocacy Courses include senior judges and senior silks from around Australia, as well as international silks and performance coaches. …;

(b)    The organisation and conduct of international legal conferences which are frequently attended by judges of the High Court of Australia and the Federal Court of Australia as well as prominent members of the judicial and the various State Bars. Many of the judges of both these courts have supported the ABA in this activity by either attending or speaking. …;

The speeches given at ABA conferences are often reproduced in the Australian Bar Review. An example is the keynote address by Mason CJ at the 1992 ABA Conference, London and Edinburgh [see Tab PS-1, Tab 9]. …;

(c)    [Involvement] with several international bodies and affiliation with international legal organisations including the International Bar Association (IBA) and the International Council for Advocates and Barristers. …;

(d)    The establishment of best practice principles not only in Australia but also overseas. In about July 2009 APEC held a two day workshop in Singapore on admission of lawyers in different jurisdictions. [Mr Selth] attended that workshop as the representative [of] all of the State Bars;

(e)    Developing a code of conduct for Australian barristers which resulted in the publication in 1993 of a Code of Conduct for Australian barristers. In 2007 the ABA agreed to a review of each State Bar’s conduct rules with the aim of developing a uniform set of rules for them;

(f)    Being involved in the activities of the Council of Australian Governments (COAG), the peak intergovernmental forum in Australia, to achieve national regulation of the Australian legal profession. ... [Mr Selth] was appointed as a member of COAG’s Consultative Group as a representative of the State Bars. The function of COAG’s Consultative Group was to advise and assist a specialist taskforce appointed by the Attorney-General to make recommendations to implement the national regulation of the Australian legal profession.

(g)    Attending ceremonial sittings at Federal, State and Territory courts. …;

(h)    Commenting on proposed amendments to the procedural rules of both the High Court of Australia and the Federal Court of Australia;

(i)    Each year in January or February it has become the ABA’s practice to hold the annual Australian Bar Association Dinner for new silks in the Great Hall, High Court of Australia, Canberra. This is typically held on the night of the new silks taking their bows in the High Court. All judges and barristers, not just the new silks, and their partners are invited to attend;

(j)    Seeking sponsorships for its various activities including the conduct of conferences. Sponsors have included American Express Australia Limited (American Express), Commonwealth Bank of Australia, Australian and New Zealand Banking Group Limited, Trans Airlines Australia, Qantas Airways Limited, CCH Australia Limited, Law Book Company Limited and Suncorp Group Limited.

The ABA has had a long association with American Express. For example, in 1976 American Express was the official ABA travel Co-ordinator and Consultant for the Round World Study Tour. Since 2006, American Express has offered an ABA Platinum Credit Card to members of the ABA featuring, with the permission of the ABA, the ABA logo [being the device mark] …

…

The ABA’s conferences and courses sponsored by third parties have included [conferences and courses in 1976, 1984, 2005, 2009, 2011, 2012 and 2013].

(k)    Conducting a Member Benefits Program providing a range of services to [members of the ABA] …; and

(l)    Commenting publically on matters of national interest. [Mr Selth sets out examples of such publications for the period 1986 to 2015 at PS-1, Tab 13].

45    The ABA has a website located at ˂www.austbar.asn.au˃, described by Mr Selth as the “Austbar website”. Mr Selth says that the National Library of Australia (the “NLA”) has sought and been given the permission of the ABA to create an archival record of the ABA’s website in the NLA’s Pandora web archive.

46    Apart from these activities, the ABA from 1963 to 1970 caused the Australian Bar Gazette to be published by the entity now known as the Law Book Company of Australasia Pty Ltd reporting on matters relating to the ABA and the practice of law nationally. Since 1963, the citation for the publication has been “Aust Bar Gaz”. The 1963 edition, for example, is cited as “1(1) Aust Bar Gazette” and then the page number of the article. The URL contains the sub-page “/journals/AUBarGaz”. The Australian Bar Gazette was revived by the ABA in the period 1966 to 2007. Since 2005, many editions of the publication have been available online as downloadable publications through the “Austbar Website”. The device or logo depicted at [11](2) of these reasons is displayed on the front page of the Australian Bar Gazette. Mr Minus accepts that this “publication is frequently referred to Aust Bar Gaz” although he says that he has never had occasion to refer to it personally: T, p 208, lns 33-40.

47    As to the Australian Bar Review, Mr Selth says this at paras 34 and 35:

34.    From 1985 to date, with the support and the endorsement of the ABA, LexisNexis and its predecessors have published the legal journal Australian Bar Review. The Australian Bar Review publishes at least three issues per year and regularly features a report of the President of the ABA.

35.    The Australian Bar Review has featured and continues to feature: articles on matters of current interest in legal doctrine and procedure; analytical articles of substantial length, shorter notes, comments and reviews of significant books; reports of the President of the ABA; speeches at ABA conferences; and extra-judicial notes, that is, reports and statements of senior Australian judges.

48    Mr Selth says that Thomson Reuters has a “First Point Table of Abbreviations” which shows that the abbreviated citation reference for the Australian Bar Review is “Aust Bar Rev”. Mr Selth also says that the list of legal abbreviations compiled by Australian universities shows the abbreviated reference to the Australian Bar Review as “Aust Bar Rev”. Mr Minus accepts that “this publication is often referred to as Aust Bar Rev” and that it is published “under the auspices of the Australian Bar Association”: T, p 208, lns 16-23.

49    Mr Selth says that “Aust Bar” has attracted broader use as a description of the ABA. He says that since 1963, the media, newspapers and other publications, have made reference to “Aust Bar” as a description of the ABA. One example (at PS-1, Tab 26) is an article from the Daily Telegraph on 21 October 1963 reporting upon the formation of the Australian Bar Association, introduced under the heading:

4 STATES FORM

AUST. BAR

ASSOCIATION

50    Other examples of media use of “AUST BAR” as a reference to the ABA include: a Radio Australia item of 27 November 2008 bearing, in the printed form, “Aust Bar Association also concerned at Fiji situation”; ABC News 14 June 2014, “Mark Livesey Aust.Bar Association”. The applicants also rely upon a reference to: “The Aust Bar Association” as an institutionally recognised reference to the ABA to be found in footnote 657 (for example) at p 135 of a Law Reform Commission paper of 29 November 1995.

51    As to the Austbar Website ˂www.austbar.asn.au˃, Mr Selth says that the ABA has been the registrant of the Austbar Website since 24 July 2001. He says that since that date the AustBar Website has contained information about the activities of the ABA, details of Australian barristers, updates from the President, copies of ABA media releases, copies of speeches by ABA members, conference information, information about member benefits, links to State and Territory Bar associations and information related to national practice of concerned barristers.

52    There are two other ABA domain names that, when interrogated by an enquirer or user, direct traffic to the ABA Austbar Website and they are ˂www.austbar.com˃ and ˂www.austbar.net.au˃. The ABA also operates an email address in these terms: ˂[mail]@austbar.asn.au˃.

53    As to the use of the email address, Mr Selth attaches copies of ABA brochures for its educational conferences and courses held in Dublin 2005, Chicago 2007, Chicago 2009, Berlin 2011, Bologna 2013 and Rome 2013, all of which extensively display the logo work (shown at [11](2) of these reasons) and all of which direct enquiries to [the mail nominee] at austbar.asn.au.

54    In terms of the traffic or number of visits to the ABA’s Austbar website, Mr Selth attaches a report to his affidavit (PS-1, Tab 32) provided by internet service providers which shows the number of “unique visitors” to the website for the period January to December for 2010, 2011, 2012, 2013 and 2014. Unique visitors are those persons who have made at least one visit to the website and that term excludes multiple visits by the same person: PS-4, Tab 10. The “unique visitors” column therefore correlates with individual single visits. The report also shows the total number of visits, pages visited and total “hits”. The information is set out below:

55    Accordingly, for the period 2010 to 2014, there were 127,773 unique visits; 194,555 visits; 1,531,477 pages; and 2,455,584 hits.

56    From February 2014, the ABA registered a “Twitter account” adopting the “identifier” ˂“@AustBarAssoc”˃. The ABA posts short messages in accordance with the Twitter protocols on topics of interests to the ABA and in relation to its various activities, for the benefit of its Twitter followers.

57    The ABA has used the name Australia Bar Association and the abbreviation ABA since 1963 in the conduct of its affairs as described in these reasons at [44], [46] and [53]. Many examples are given by Mr Selth including brochures, announcements, correspondence and letterheads (showing dealings with third parties since the 1980s using these terms): see PS-1, Tab 7-9; 11-15. Also at PS-1, Tab 16, Mr Selth attaches a number of press articles which show that media discussion from 1963 onwards embraces both the name “Australian Bar Association” and “ABA” as descriptors of the Association.

58    It is now necessary to say something further about the Registered Trade Marks. Although the ABA had extensively used the ABA Logo Mark and the name Australian Bar Association over many years in connection with the promotion of its services to members, dealings with third parties in relation to such things as sponsorship arrangements and otherwise, applications for registration of each mark as a trade mark under the TM Act had not been filed until 2013.

59    An application for registration of the device mark was filed on 21 May 2013. It was accepted on 21 June 2013 and was entered on the Register on 18 December 2013 as registered from 21 May 2013. The renewal date is 21 May 2023. The application was filed on behalf of the “owners”, Mr Colbran QC, Mr Livesey QC, Mr Walker, Mr Boulten SC, Mr Traves QC, Mr Stretton SC, Mr Quinlan SC, Mr McTaggart, Ms McLeod SC, Mr O’Sullivan QC, Mr Lawrence SC and Mr Greenwood SC (who is not related to me). Each of the 12 individual owners assert ownership “as trustee for the Australian Bar Association”. On 17 April 2014, Mr Colbran QC, Mr Traves QC and Mr Walker, as assignors, entered into a Trade Mark Assignment Deed with Mr Alstergren SC and Mr Davis QC, as assignees. The Deed recites that the assignors had retired from the AB Council and had been replaced by the assignees. The remaining nine trustee owners had not retired from the AB Council and were to continue as owners of TM 252 together with the assignees. Clause 2 of the Deed provides:

The ASSIGNORS, as joint owners of the Trade Marks, assign to the ASSIGNEES and the ASSIGNEES accept as trustees for the ABA, the assignment of the Trade Marks throughout the world in perpetuity. This includes the right to bring and maintain suits arising before the date of this deed.

60    The Trade Marks are defined to mean TM 252, the application which became TM 902 and Trade Mark Application 1560119 for the word AUSTBAR (which became the subject of opposition by Chambers).

61    The application for registration of TM 902 (the word mark Australian Bar Association) was filed on 25 October 2013. It was accepted on 6 January 2014 and was entered on the Register on 30 May 2014 as registered from 25 October 2013. The applicant owners were the same 12 individuals described at [58] of these reasons and, again, they each asserted ownership “as trustee for the Australian Bar Association”. The Deed of Assignment earlier mentioned effected an assignment of the ownership interest of each assignor as trustee to the assignees of TM 902 (as it did in relation to Application 1560119). The goods and services for which the word mark AUSTRALIAN BAR ASSOCIATION is registered (TM 902) are set out in Schedule “A” to these reasons and the goods and services for which the device mark is registered (TM 242) are set out in Schedule “B” to these reasons.

62    On 10 September 2014, Mr Livesey QC, Ms McLeod SC, Mr Boulten SC, Mr Stretton SC, Mr Quinlan SC, Mr McTaggart SC, Mr O’Sullivan QC, Mr Lawrence SC, Mr Greenwood SC, Mr Alstergren QC and Mr Davis QC, as assignors, entered into an Assignment Deed with Mr Selth, as assignee, by which they assigned to Mr Selth TM 252, TM 902 and Application 1560119. By cl 2, Mr Selth acknowledges that he holds the legal title as trustee for the members of the ABA consistent with his agreement with the ABA to so hold each trade mark and the trade mark application.

63    Mr Selth says that he became the registered owner of TM 252 and TM 902 by assignment pursuant to a resolution of the AB Council in September 2014. He says that he holds each trade mark registration on behalf of the members of the ABA “from time to time”. He says he is also now the applicant for the AUSTBAR application and also Application No. 1650033 for the word mark AUST BAR.

64    As already mentioned, ABA Ltd was incorporated on 20 May 2015. In the President’s Report (Ms McLeod SC’s Report) of June 2015 to members, the President advised members of the incorporation of ABA Ltd and reported that the new entity would “assume the role and function of the ABA going forward”: affidavit Mr Andrew Christopher (“Mr Christopher”) sworn 27 July 2015, AJC-3, Tab 3. The President also said this in that report:

The ABA Council also proposes to assign all rights and interests of the ABA to ABA Limited. It has been a long-held plan of the ABA to incorporate and this is a positive development for the future activities and governance of the ABA.

65    The objects of ABA Ltd are essentially those of the ABAU. All of the objects (except (j)) recited at [39] of these reasons are present in the Constitution for ABA Ltd. The additional object is: “to assist other jurisdictions internationally with advocacy training”: cl 3(i). ABA Ltd has two categories of membership. The first is “constituent bodies” which, by cl 7, means the eight State and Territory Bar Associations and the second is “individual members” which by cl 8, means practising barristers, life members and honorary members. A practising barrister means a person who practises only as a barrister. By cl 9.2, all practising barristers who are members of a constituent body are individual members of the ABA subject to the Constitution. Clause 9.3 provides that in order to give effect to cl 9.2, the Constitution of each constituent body must include a provision to the effect that by becoming and remaining a member of the relevant constituent body, the member agrees to become and remain a member of ABA Ltd subject to the Constitution of ABA Ltd and a member who ceases to be a member of the relevant constituent body ceases to be a member of ABA Ltd, unless otherwise provided for by the Constitution of ABA Ltd.

66    By cl 28.1, ABA Ltd has 11 directors. Each constituent body appoints one director in accordance with cl 29 (which includes the right to specify the term of that director). There are three others being office holders, namely, a President, a Vice-President and a Treasurer, all appointed at the Annual General Meeting under cl 35. The directors are the voting members of the AB Council: cl 37. The AB Council is responsible for the governance and management of the ABA. Because ABA Ltd was formed to assume the role and function of the ABA going forward, the Constitution of ABA Ltd contains transitional provisions at cl 67. Clause 67(a) provides that until a constituent body has amended its Constitution as contemplated by cl 9.3, cl 9.2 may be satisfied by the constituent body obtaining an individual member’s consent to membership of ABA Ltd.

67    Mr Christopher is a partner of Webb Henderson, the solicitors for the applicants. He exhibits to his affidavit of 27 July 2015 (at AJC-3, Tab 4) a copy of a resolution of the Board of ABA Ltd executed by each director (in July 2015) to enter into a Deed of Assignment with Mr Selth by which Mr Selth is to assign “all rights and interests” held by him on behalf of members of the ABA to ABA Ltd including TM 252, TM 902 and the AUSTBAR and AUST BAR applications. The Deed of Assignment is dated 27 July 2015. The assignment to ABA Ltd was given effect by cl 1.1 of the Deed.

68    A database search of the Trade Marks Register maintained by IP Australia confirms that AB Ltd was recorded as the owner of TM 252 and TM 902 as from 27 July 2015: Mr Christopher’s affidavit, sworn 9 September 2015, AJC-4, Tabs 1-3. The AUSTBAR and AUST BAR applications were also recorded as applications of ABA Ltd as from 30 July 2015: AJC-4, Tab 4.

69    I will return later in these reasons to the contentions of Mr Minus that neither ABAU nor ABA Ltd has or had any members as a matter of fact and law and his contentions of invalidity in the title to sue on TM 252 and TM 902.

70    The conduct of the respondents about which complaint is made by the applicants takes a number of forms.

71    First, Chambers on 14 June 2003 registered under the provisions of the Business Names Registration Act 2011 (Cth) (the “BNR Act”) the name AUSTRALIAN BAR ASSOCIATION. Moreover, the registration of that business name was renewed by Chambers on 14 June 2014. On 1 November 2015, the business name was deregistered. As earlier mentioned, Mr Minus was the sole director of Chambers until 1 October 2014 and thereafter the sole director was Ms Armine Minasian, the wife of Mr Minus. Mr Minus has been the Secretary of Chambers since its incorporation on 15 October 2008.

72    Second, on 9 May 2014, Chambers registered the business name AUSTRALIAN BARRISTERS ASSOCIATION.

73    Third, on 29 May 2014, Chambers registered the business name AUSTBAR. That registration was cancelled on 9 October 2015. However, the business name was registered on 9 September 2015 by Aplus.

74    Fourth, on 3 January 2014, Chambers registered the business name AUSTBAR Chambers. That registration was cancelled on 11 October 2015. However, the business name was registered by Austbar PL on 9 October 2015.

75    The applicants contend that the lodging of these applications for registration of the various business names is only consistent with an intention to use each name in the course of carrying on a business under that name. That follows because s 23(1) of the BNR Act provides that only an entity that intends to carry on a business under a name may lodge an application for that name to be registered to the entity so applying as a business name. The applicants ask: why would the various entities otherwise apply for registration of these business names?

76    Fifth, in July 2011, DRA registered the domain name ˂www.austbar.com.au˃. On 23 July 2014, Chambers registered the domain name ˂www.austbaradr.com.au˃. Mr Minus is the Registrant and Technical Contact for the purposes of each of these domain name registrations: AJC-1, Tabs 11 and 12. The Registrant Contact email address and Technical Contact email address for each registration is ˂aplus@conflict.com.au˃. Mr Christopher deposes to a search he caused to be made by use of the Google search engine conducted on 17 April 2015 of austbar which produced a search result listing as the second entity on the results list (after the ABA result ˂www.austbar.asn.au˃), the website for Chambers ˂www.austbar.com.au˃ and as the third entry a “twitter page” linked to the Chambers website ˂www.austbar.com.au˃ under the “handle” ˂@AustBar˃. The next in the search results was AustBar ADR ˂www.austbaradr.com˃ being the website registered by Austbar PL on 26 September 2015. The search also shows prominently the name of the first respondent, Chambers, and contact details. It also shows as “images for austbar” the device consisting of the scales of justice together with the name Australasian Barrister Chambers as depicted at [78] of these reasons.

77    On 15 May 2013, Mr Minus for Chambers wrote to each State and Territory Bar Association announcing his initiative to launch the activities or undertaking of Australasian Barrister Chambers. The example set out below is the letter sent to Mr Selth for the NSWBA although the content of the body of the letter is the same in the case of each letter sent to the State and Territory Bar Associations. The letter is in these terms:

Mr Philip Selth OAM

[address]

Launch of Australasian Barrister Chambers (˂www.austbar.com.au˃)

Dear Mr Selth OAM

The legal environment in which barristers operate is changing and Australian barristers need to change with it.

Last October, the Bar Council of the NSW Bar Association recognised this situation and in a bold response, adopted a three year Strategic Plan that identified initiatives to be undertaken by the Association to respond to the rapid pace of change in the Australian legal environment.

The Plan supported the development of a National profession; dispute resolution outside of the court; the increasing internationalisation of the law; marketing and promoting the work of barristers; harnessing of the rapid changes in technology and communication in society, including social networking, to increase the visibility and accessibility of barristers.

Australasian Barrister Chambers has been established as a true virtual chambers in support of these new and imaginative ideas, and ˂www.AustBar.com.au˃ as a single web address and place to find an Australian barrister with a national focus. With the eventual move to a national profession, any member of an Australian Bar association can be listed and will be able to promote their expertise to consumers of legal services both in Australia and Asia.

It is intended that the Australasian Barrister Chambers website will provide information and advice for, and eventually services to barristers who wish to avail themselves of the benefits of internet delivery to support their practice: greater national visibility, increased accessibility and lower cost of delivery of their services into an evolving marketplace for learned advice.

I am writing to you and your Bar Association to advise of the imminent launch of this website, to illicit your support for this initiative and to request that you inform your members of this development. I also welcome your Association’s comments, suggestions for changes, improvements and recommendations for clarification, before the site is widely promoted.

Yours sincerely

Derek Minus

[emphasis added]

78    The letterhead recites the full name of the Chambers entity; the address at 6th Floor, 67 Castlereagh Street, Sydney, telephone and fax numbers, an email address of ˂info@austbar.com.au˃ and the website ˂www.austbar.com.au˃. The letterhead also bears the following logo:

79    On 23 May 2013, Mr Colbran QC, the President of the ABA, responded to the letter from Mr Minus. Mr Colbran QC said this:

Dear Mr Minus

I refer to your letter of 15 May to the Presidents and Chief Executive Officers of the Australian Bars that make up the Australian Bar Association concerning the “Australasian Barrister Chambers”.

I am replying on behalf of each of the Bars, including the NSW Bar Association.

I understand that you have had no contact with the NSW Bar Association on this matter. Had you done so, you would have been informed that the NSW Bar Association does not wish to be associated with your website. You would also have been informed that both the Australian Bar Association and the Law Council of Australia are developing a national listing of all practitioners and that the proposed national board will be doing likewise.

The Australian Bar Association notes that in your letter and on your website found at ˂www.austbar.com.au˃:

-    you are using a logo that is deceptively similar to the ABA’s scales of justice logo;

-    you are using a domain name (namely ˂www.austbar.com.au˃) that is deceptively similar to the ABA’s domain name (namely ˂www.austbar.asn.au/˃);

-    you have references to the NSW Bar Association’s strategic plan; and

-    you have links on your website to the various state and territory barristers’ associations.

The Australian Bar Association is concerned that people will be misled into believing that your “virtual chambers” in some way has the support, affiliation, approval or sponsorship of the Australian Bar Association.

It does not.

I ask that you confirm within seven days that you will discontinue using the misleading logo, cancel the domain name ˂www.austbar.com.au˃ and refrain from making any further representations that suggest that you have the support, affiliation, approval or sponsorship of the Australian Bar Association.

Yours sincerely

Michael Colbran QC

President, Australian Bar Association

[emphasis added]

80    The letterhead of the ABA appearing on Mr Colbran QC’s letter bears the following logo:

81    Mr Minus for Chambers responded to that letter on 30 May 2013. Mr Minus noted that Mr Colbran QC’s response was on behalf of the Australian Bar Association and each of the State and Territory Bar Associations. He said that the response was both “disappointing” and “surprising”. He said this:

…

Disappointing that an initiative designed to assist Australian barristers and one which is in support of the well thought out strategic plan published by the NSW Bar Association, does not have the favour of the established Associations. Surprising that the Bar Associations would be concerned at competition from within the ranks of its own members to do this very thing.

I welcome your news that both the Australian Bar Association and the Law Council of Australia are “developing a national listing of all practitioners”. However, I fear that you have misunderstood the nature and purpose of the Australasian Barrister Chambers website. It does not provide a national listing of all barristers (as useful as that would be) rather a listing of Australian barristers who are interested in providing their services nationally.

To deal with your specific issues:

1.    The “scales of justice” logo employed is I understand derived from the Greek mythological figure, Themis, an oracle at Delphi who became known as the goddess of divine justice. It is in common usage by hundreds of organisations that deal with the provision of justice.

2.    The website address is derived from the words of our registered company name “Australasian” and “Barrister”, it complies with the auDA Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (Policy No. 2008-06) and it is located in a totally different gTLD from that of your Association, namely “.com”.

3.    The Australian Bar Association’s concern that people will be misled into believing that the Australasian Barrister Chambers website has the “support, approval or sponsorship of the Australian Bar Association”. In relation to this last point, and to ensure that there is no such confusion, I have had the following Disclaimer added to the front page of the website, to read (in bold print):

This website and the information it contains does not have “the support, affiliation, approval or sponsorship of the Australian Bar Association”.

Yours sincerely

Derek Minus

[original emphasis]

82    Mr Wayne Covell, a solicitor and trade mark attorney carrying on practice under the name “Worthy of the Name” sent a letter to Mr Minus dated 7 June 2013. In that letter, Mr Covell referred to the letter of 15 May 2013 from Mr Minus, the ABA’s letter in response of 23 May 2013 and the letter from Mr Minus in reply of 30 May 2013. Mr Covell said that his firm had been instructed to act on behalf of the Australian Bar Association in relation to the matters raised by the correspondence. The letter sets out information in relation to the ABA. It addresses the contended conduct of Chambers and Mr Minus. The letter seeks undertakings that the domain name ˂austbar.com.au˃ located at the URL ˂www.austbar.com.au˃ be transferred to the Australian Bar Association; that Chambers and Mr Minus cease using AUSTBAR (or any substantially identical or deceptively similar name); and that Chambers and Mr Minus cease linking any website under their control to the ABA website and cease using the ABA logo or any logo substantially identical with or deceptively similar to the ABA logo.

83    The letter, across 10 pages, sets out the relevant matters of complaint. The letter also seeks to address the particular point of distinction made at point 2 by Mr Minus in his letter dated 30 May 2013 to the effect that the website address for Chambers ˂www.austbar.com.au˃ “is located in a totally different gTLD from that of your Association, namely, ‘.com’”. The reference “gTLD” is an acronym for the phrase “generic top level domain”. Mr Covell contended that although one domain name adopts use of “.com.au” and another adopts “asn.au”, both domain names contain the “au” suffix and both websites are aimed at, and concern, the Australian legal profession. The letter concluded by saying that in the absence of the undertakings being given, Mr Covell held instructions to commence proceedings against Chambers and Mr Minus.

84    Mr Minus responded to that letter on 11 June 2013. He asked Mr Covell to advise him of the “legal status” of “The Australian Bar Association”; whether it was a registered company; whether it was an incorporated association; and, if an unincorporated association, the names of the individuals who had authorised the threatened action to be taken in the absence of undertakings. He also asked:

Is it an entity of some form, operating under a Registered Business Name? If so, in which State was the name first registered, the Date of that registration and the National Business Names Registration number?

[emphasis added]

85    Mr Minus also asked whether the name “Australian Bar Association” was a registered trade mark and, if so, what was the date of registration and the registered number of the trade mark.

86    As to the “ABA logo device”, Mr Minus asked Mr Covell to identify the legal or beneficial owner of the device, when and where it was first used, whether it was a registered trade mark and, if so, the registered number and the applicant for registration. Mr Covell responded on 12 June 2013 and advised Mr Minus that the ABA is an unincorporated association governed by a Council which had approved the actions foreshadowed in the letter of 7 June 2013. Mr Covell otherwise responded to the letter from Mr Minus.

87    Mr Minus responded on 12 June 2013 and requested Mr Covell to please provide him with a copy of the written minute of the Council confirming the passing of a motion to instruct Mr Covell to issue demands upon Mr Minus of Chambers and a request for undertakings.

88    Mr Minus also asked to be told such things as the date and time of the meeting, where it was held, the members of Council present, the identity of each person present and their role, the proposer of the motion, the seconder and who voted for and against the motion.

89    On 14 June 2013, Chambers registered the business name Australian Bar Association under the provisions of the BNR Act.

90    At that date, Mr Minus was the sole director of Chambers.

91    Mr Covell sent a further letter to Mr Minus dated 26 June 2013.

92    In that letter, Mr Covell referred to “previous correspondence concerning the above matter” and observed that “[o]ur client notes that following our 7 June 2013 letter”, Chambers had applied to the Australian Securities and Investments Commission (“ASIC”) on 14 June 2013 to register the business name Australian Bar Association. Mr Covell observed, among other things, that it appeared to be the case that the step of registering the business name was undertaken either because Mr Minus and/or Chambers intended to carry on a business under that name or Mr Minus and Chambers intended to “block [the ABA’s] registration” of the business name Australian Bar Association, or both. Mr Covell asserted that the ABA would seek urgent relief about that matter but in the interests of resolving the dispute, the ABA would participate in a mediation with Mr Minus.

93    Mr Minus responded to that letter by letter dated 3 July 2013.

94    In that letter, his first point was that Mr Covell, in the 26 June 2013 letter, had made a reference to “our client” but had “failed to identify” to whom he was referring. In the sequence of correspondence, of course, Mr Covell had made it plain from 7 June 2013 that he was acting for the Australian Bar Association and by the letter of 12 June 2013 he had made it plain that that body was an unincorporated association. Mr Minus could not have been in any serious doubt about the party for whom Mr Covell was acting in this sequence of correspondence.

95    The second point made by Mr Minus was that the “unincorporated entity trading as the Australian Bar Association” did “not have the legal capacity to instruct [Mr Covell]”. Mr Minus then responded to a range of matters set out in Mr Covell’s letter of 7 June 2013 on behalf of the Australian Bar Association. In the letter, Mr Minus develops 16 points in answer to Mr Covell’s letter of 7 June 2013. One aspect, of note, about the letter from Mr Minus of 3 July 2013 is that he is entirely silent about the complaint made in the letter of 26 June 2013 concerning the registration by Chambers (by reason of decisions made by Mr Minus) of the business name, Australian Bar Association. The letter from Mr Minus of 3 July 2013 seeks to comprehensively respond, across four pages, to the matters of complaint made by Mr Covell on behalf of the ABA in the letter of 7 June 2013. It is odd that Mr Minus did not take the opportunity to say something about the registration of the business name Australian Bar Association in the name of Chambers on 14 June 2013.

96    As earlier mentioned, Chambers renewed the registration of that business name on 14 June 2015 and ultimately abandoned it on 1 November 2015.

97    The registration of the business name Australian Bar Association by Chambers by reason of the conduct of Mr Minus in electing to do so is inherently odd. Plainly enough, neither Mr Minus nor Chambers nor any entity controlled by Mr Minus enjoyed any standing whatsoever to register the business name Australian Bar Association for the purpose of carrying on a business or providing services under that name or for any other purpose.

98    In the course of a case management hearing on 18 December 2015, I sought to explore with Mr Minus the position in relation to the registration of that business name. Mr Minus accepted that the business name Australian Bar Association had been registered by Chambers and had been abandoned by it in November 2015. Mr Minus observed that “there is no evidence it was ever used apart from being registered”: T, p 23, ln 21. The Court asked Mr Minus: “Why was it registered? What was the point of registration of it?”: T, p 23, ln 23. Mr Minus said that Chambers had received a letter of demand from the Australian Bar Association in May 2013 requiring it to “divest itself”, “sign undertakings”, pass over its intellectual property to the ABA and to “take down” the website. That was undoubtedly a reference to Mr Colbran QC’s letter of 23 May 2013 seeking confirmation within seven days that Mr Minus would discontinue using the contended misleading logo, cancel the domain name ˂www.austbar.com.au˃ and refrain from making representations that suggested that he had the support, affiliation, approval or sponsorship of the ABA. Mr Minus said this at T, p 23, lns 30-34:

On examination of the register held by ASIC, the respondents were unable to identify what type of entity the ABA actually was, and what type of status it had, because we’re not able to find any instance of Australian Bar Association that was registered as a business name or had any existence.

99    In response, the Court said this, relevantly, at T, p 23, lns 36-41:

But that entity, Australasian Barrister Chambers Pty Limited, must, – one imagines it must have realised that there was a term, Australian Bar Association, used in the relevant markets over a long period of time, which would have been, presumably, a name associated with someone. … What was the point of it, registering Australian Bar Association when it did so?

100    Mr Minus responded at T, p 23, ln 43:

To protect the interests of Australian barristers.

101    The following exchange occurred at T, p 24, lns 1-47:

Mr Minus:    Here was an entity claiming to be an incorporated entity and threatening to undertake legal action when, in fact, it was no such thing.

It’s committee were barristers, senior barristers, senior counsel, from every [S]tate in Australia who apparently had instructed a firm of lawyers, who send a letter threatening that the ABA would undertake litigation when it was an unincorporated [body] who had no right to undertake such litigation, was unregistered and unincorporated.

The Court:    Well, putting to one side for the moment the proposition that there may have been some apprehension about what was the status of the applicant asserting rights about that topic, your point is that Australasian – so the first respondent secured registration of the business name on the footing that it was acting protectively of Australian barristers.

Mr Minus:    Most certainly, your Honour … This was an organisation owned by barristers who were seeking to support barristers in Australia by providing them with other opportunities for promoting themselves, particularly on a national basis.

The Court:    But what was the basis upon which the first respondent sought to propound the proposition that it could carry on a business, which is the nature of a business name – carry on a business under the name of Australian Bar Association?

Mr Minus:    It never proposed to carry on a business under that basis, your Honour … and has never carried on a business on that basis.

The Court:    Yes. But its registration was just protective.

Mr Minus:    Most certainly.

The Court:    And so in November, I think of 2015 it … relinquished that business name?

Mr Minus:    Well, didn’t renew it.

[emphasis added]

102    As to the trade marks, Mr Minus observed that the respondents collectively had never challenged the Australian Bar Association as to its rights to register the trade marks and no opposition had been made to those trade marks, that is to say, the registered trade marks. This exchange occurred at T, p 31, lns 28-42:

Mr Minus:    It [the respondents] recognised the long history of the ABA using its symbol and the letters stamped on it and also the name Australian Bar Association.

The Court:    Now, you’re talking about the unincorporated body now?

Mr Minus:    Yes.

The Court:    Yes.

Mr Minus:    It [Chambers] has never sought to use that name. And although it registered it for the protection of that name, it has never, ever propounded that it was the ABA or thought to be the ABA and never opposed the registration of those trade marks. …

[emphasis added]

103    Mr Minus made an enquiry of Mr Covell on 11 June 2013 expressly on the question of whether the Australian Bar Association was operating under a registered business name and by 14 June 2013, Mr Minus had caused Chambers to register the business name Australian Bar Association. Apart from the oddity that Mr Minus had no standing to register such a business name, he took no step to volunteer the transfer of the registered business name to such person or persons as the Australian Bar Association, by its AB Council, might direct. Nor did he cause it to be transferred consequent upon demands made upon him by the solicitors appointed by the ABA to address that very question. Moreover, the questions asked of Mr Covell by Mr Minus described at [88] and [94] of these reasons seem to be matters of obfuscation rather than legitimate forensic inquiries by a person the subject of the letters of Mr Covell in question.

104    Mr Minus was asked some questions about these things in cross-examination.

105    In his affidavit sworn 16 October 2015, Mr Minus says at para 9 that he is aware that under the BNR Act “an organisation that operates under a business name that is not its corporate registered name is required to register the business name under which it operates”. Mr Minus understood that if Chambers proposed to operate under a different name, such as Australian Bar Association, it would need to register that business name: T, p 186, lns 29-33. Mr Minus accepted that he had secured the registration of the business name Australian Bar Association for Chambers: T, p 185, lns 45-46. He said that he secured it “on behalf of all barristers in Australia”: T, p 186, lns 1-2. He did not accept that by making the application he had represented that Chambers was proposing to carry on business under that name (T, p 186, lns 38-40) because “it was not the intention of the company to operate under that name”: T, p 186, lns 42-44.

106    When he was asked which company was going to operate under the business name, he said: “My assumption was that barristers of Australia who had some incorporated entity would want to use that name”: T, p 187, lns 1-3. The time at which Mr Minus apparently held that assumption was 14 June 2013: T, p 187, ln 3. Mr Minus said that the registration on that date was “directly referable to” the “string of correspondence” earlier described (that is, Mr Covell’s letter of 7 June 2013; the response of 11 June 2013 by Mr Minus; and Mr Covell’s letter in reply of 12 June 2013): T, p 187, lns 5-7; lns 21-36.

107    Mr Minus said that once he understood that the ABA was an unincorporated association (by reason of Mr Covell’s letter of 12 June 2013), he also understood that the Australian Bar Association was “an unregistered association, and that the registration should be secured” and “I therefore secured the registration of that name on 14 June, two days later”: T, p 187, lns 39-41.

108    Mr Minus was then taken to Regulatory Guide 235: Registering your business name (which is a document at Tab 8 to the affidavit of Mr Minus sworn 16 October 2015). That document says this at p 9:

When must your business name be registered?

Key points

If you wish to carry on a business under a business name, you must register your business name with us, unless one of the exemptions in the Business Names Registration Act applies (e.g. if your business name is exactly the same name as your registered company name).

109    Thus, Mr Macaw QC, for the applicants, put to Mr Minus that he therefore understood that by registering the business name he was “signifying to the Registrar that [the entity Chambers] was proposing to carry on business under the name Australian Bar Association”: T, p 188, lns 6-9. He said, in response, “no” and added that he understood that one company might register a name and a later company might use it: T, p 188, lns 14-15.

110    When then asked who Mr Minus had in mind as the entity that would use the business name Australian Bar Association he said: “Well, after doing the research it seemed to me that the barristers of Australia were entitled to that name” (T, p 188, lns 17-19) and because the ABA had no members who were barristers and was simply a collection of unincorporated Bar Associations, the “Australian barristers” ought to have the name: T, p 188, lns 23-24. Notwithstanding that premise, Mr Minus had earlier put to Mr Selth in cross-examination of him that ABAU had approximately 5,600 members although that proposition seems to have been put to Mr Selth for the purpose of establishing the contended numbers of members (actually 6,000 members) “not their status”: T, p 188, lns 28-30.

111    Mr Minus accepted that he did not “explain on the form lodged with the Registrar that [Chambers] was not itself proposing to carry on business under that name, but instead [Mr Minus] expected that barristers Australia-wide would be doing so”: T, p 188, lns 45-46; T, p 189, lns 1-2; lns 15-16.

112    This exchange then occurred at T, p 189, lns 26-35; T, p 190, lns 2-10:

Mr Macaw:    Yes?

Mr Minus:    So the name being registered was a name that would be available to Australian Barristers to utilise?

Mr Macaw:    Why on earth, was my question, would an Australian Barrister want to utilise the name Australian Bar Association? An individual Barrister is not an association?

Mr Minus:    No, because there should be an association of Australian Barristers. There should be an association. My view was that the ABA purported to be an association of Australian Barristers but, in fact, was not. The name that was being utilised by the ABA was unregistered and should have been available to Australian Barristers for an association.

…

… You’re asking me why would a Barrister want to carry on business? But an association of Barristers would, I believe, need to have a registered name. And to register the name you have to fill out this form.

Mr Macaw:    Yes.

Mr Minus:    It should have a registered name.

Mr Macaw:    You accept by that answer that an individual Australian Barrister would not want to operate under the name Australian Bar Association. But an association of such Barristers might?

Mr Minus:    Yes.

[emphasis added]

113    This exchange then followed at T, p 190, lns 12-45; T p 191, lns 1-17:

Mr Macaw:    Thank you. Well, what was the association that you had in mind you were protecting?

Mr Minus:    The association of all Barristers in Australia who were – who believed they were members of the ABA and whom the ABA purported to include as their members but didn’t.

Mr Macaw:    So may we take it that you immediately wrote off to the ABA and said: “I’ve discovered that you don’t exist. I’m concerned about the protection of your members and the name Australian Bar Association. So here is what I’ve done for their protection”?

Mr Minus:    I didn’t, no.

Mr Macaw:    Why not?

Mr Minus:    Well, at that point they were suing me and, as Mr Selth explained in his evidence, he didn’t feel that it was necessary to phone or contact me. And I understood that they wished to proceed to the resolution through various means which did not involve discussions. And the point we were at at that stage was that they were threatening litigation.

Mr Macaw:    This is 14 June 2013?

Mr Minus:    Yes.

Mr Macaw:    You weren’t being sued. There were threats, weren’t there, that unless you made certain concessions and removed certain references they would sue you?

Mr Minus:    That’s correct.

Mr Macaw:    Yes. Well I don’t understand, Mr Minus, and perhaps you could explain, why, if your true purpose was to protect the association of Barristers in Australia, which you say the Australian Bar Association did not adequately protect, you would not tell that association of what you had done?

Mr Minus:    Because it was the council of that association who had determined that they would take litigation against me. And as there was no channel of communication in the sense of an opportunity to discuss my view about their actions, I didn’t see there was any point. … It was certainly something that I would have liked to have discussed with Australian Barristers.

Mr Macaw:    You had been writing letters, Mr Minus. Why was that not an available channel of communication at this point?

Mr Minus:    … There was no – I believe no opportunity to engage in a discussion, meaningful discussion, with them at that time.

Mr Macaw:    Did you communicate with anybody else that you had registered this name in effect for the protection of the association of Australian Barristers for which the Australian Bar Association did not provide adequate protection?

Mr Minus:    I don’t believe so, no.

Mr Macaw:    Why not?

Mr Minus:    I wasn’t involved in discussions at that time with anyone that I would be advising of that.

Mr Macaw:    Mr Minus, I suggest that you’ve just made this up. You had no such protective purpose at all?

Mr Minus:    I disagree with that. I did.

Mr Macaw:    If you had such a purpose, why on earth would you not communicate it first to the Registrar and second to the Australian Bar Association, and perhaps third to Australian Barristers whose protection was not assured by the Australian Bar Association?

Mr Minus:    In turn, (1) I’m not certain but I don’t believe the electronic form provides that sort of mechanism. (2) The ABA engaged solicitors who had written to me in terms of specifically, all communication is to be with us and you are not to deal directly with the Bar Association. None of the people at the Bar Association council, despite the fact of my membership both of the New South Wales Bar and of the Australian Bar Association for over 20 years, were interested apparently in having a discussion with me. … Thirdly, your third point is why didn’t I communicate it to other barristers? I have, I believe, done so at a later time. I did not have the wherewithal at that time to communicate with 6,000 Barristers and I was, at that time, dealing with proposed litigation by the Australian Bar Association.

[emphasis added]

114    Mr Minus was then taken to the exchange between the Court and Mr Minus on 18 December 2015 already described in these reasons at [98] to [102]. This exchange then occurred at T, p 193, lns 18-47; T, p 194, lns 1-24:

Mr Macaw:    Now, Mr Minus, do you accept that this was the first time this proposition was put that those [circumstances described in the exchange with the Court on 18 December 2015] were the circumstances in which the registration was obtained and that was the purpose for which it was obtained? That’s to say, it had not been disclosed in correspondence and it had not been disclosed in any of your affidavits.

Mr Minus:    Yes.

Mr Macaw:    Why was it not disclosed in the affidavit?

Mr Minus:    I didn’t think it was relevant because it has never been used.

Mr Macaw:    Mr Minus, you realised, didn’t you, that the proposition was being put that the registration signified a proposal to use the name “Australian Bar Association” and on that basis there was at least a threat to infringe the registered trade mark and to carry on activities in contravention of the Australian [C]onsumer [L]aw?

Mr Minus:    There was no registered mark at the time.

Mr Macaw:    Mr Minus, at the time you made your affidavits, you knew there was a registered mark, didn’t you?

Mr Minus:    Yes.

Mr Macaw:    And so your affidavits were directed, weren’t they, amongst other things to deal with the allegation that you or your company which you controlled had signified a proposal to carry on business under the name “Australian Bar Association”? Why, in those circumstances, did you not deal with what you now say is the true purpose of the application?

Mr Minus:    I believe, in making those affidavits, it was sufficient to simply point out that over a period of two years, those names have never been used. If they had been used [in some manner], [then] I think an explanation would have been called for how it came about that these were registered and what was the intent of that use. But I didn’t think it was even necessary to deal with that. The fact is from the date of registration, the – neither myself nor the company that registered them had any intention to utilise that name whatsoever except to pass it on to an entity that – of barristers who may come together to be the real Australian Bar Association of barristers.

Mr Macaw:    And how did you envisage that association might be formed and that transfer might be achieved?

Mr Minus:    At – which time? At the time I registered it?

Mr Macaw:    Yes.

Mr Minus:    Vaguely.

Mr Macaw:    Well at that time, as I apprehend your evidence, this was your purpose was it not?

Mr Minus:    It was but you asked me how I envisaged it and it was vaguely. I could see that there was a need for barristers to be represented by a national organisation. I could see from looking at the ABA as it existed that that was not the organisation. It is a secretive organisation that collects money from barristers, doesn’t disclose how it spends it, is not guided by the – the membership generally although the Constitution of the ABA states that its members are those barristers. I thought it was a fraud.

Mr Macaw:    Do you mean by that answer, that you had in mind to put together a competing association which would truly protect Australian barristers – [w]hich the Australian Bar Association did not?

Mr Minus:    I don’t believe it would be competing because I don’t believe there was an organisation of Australian barristers other than one … that the ABA define[s] for themselves. I don’t believe that organisation actually exists.

[emphasis added]

115    Mr Minus was then taken to that part of the Transcript of the exchange between the Court and Mr Minus on 18 December 2012 in which Mr Minus says that no objection was taken to the registration of the trade marks comprising the ABA logo device and the word mark Australian Bar Association. This exchange then occurred at T, p 194, lns 44-46:

Mr Macaw:    So what you’re signifying here, as I understand it, is that you didn’t oppose the registration of the name “Australian Bar Association” or the ABA logo because you recognised the long history of use of each of them?

Mr Minus:    Yes.

Mr Macaw:    What you were trying to do, I suggest, by registering the name “Australian Bar Association” as a business name was to provide the ability later to take the benefit of that long usage by which people recognised the particular association of barristers?

Mr Minus:    To what end?

Mr Macaw:    Well, Mr Minus, did you propose to – in order to remedy the fraud which you say was constituted by the workings of the Australian Bar Association, to set up an alternative bar association?

Mr Minus:    I would certainly have supported the establishment of an Australian Bar Association which represented barristers. The extent for which I had the capacity and the connections to do so is another matter.

[emphasis added]

116    Mr Minus was then taken to an answer he gave to the Court on 18 December 2015 in response to this question from the Court:

The Court:    … so the first respondent [Chambers] secured registration of the business name [Australian Bar Association] on the footing that it was acting protectively of Australian barristers.

Mr Minus:    Most certainly, your Honour. Your Honour, the situation is not a competitor from another field seeking to enter the legal market, as is, say, happening [in] England where transport companies are now, and insurance companies are now establishing law firms and then competing in the marketplace. This was an organisation owned by barristers who were seeking to support barristers in Australia by providing them with other opportunities for promoting themselves, particularly on a national basis.

[emphasis added]

117    In the light of that answer and the explanation given of it, Mr Minus accepted that the reference to “This” was a reference to the entity Chambers: T, p 195, lns 25-26. This exchange then occurred at T, p 195, lns 28-42:

Mr Macaw:    Now, what you were saying was that, unlike the position, for example in England where one might see competition [Chambers], being an organisation owned by barristers, which was seeking to support barristers in Australia, was entitled to register the business name Australian Bar Association?

Mr Minus:    Well, any entity can register a business name, so you don’t need an entitlement to do so, as it was an unregistered name. You would need an entitlement to carry on trading under that name where an existing organisation had already been doing so.

Mr Macaw:    However, the organisation referred to in that answer was Australasian Barrister Chambers Proprietary Limited?

Mr Minus:    Yes.

Mr Macaw:    And did you have in mind that that organisation might serve, in effect, to supply an association for barristers which you thought the Australian Bar Association failed to supply adequately?

Mr Minus:    I can categorically say that was never part of my intention.

[emphasis added]

118    As to the renewal of the business name and then its lapsing, this exchange occurred at T, p 195, lns 44-46; T, p 196, lns 1-4; lns 36-47; T, p 197, lns 1-7; lns 12-36:

Mr Macaw:    Now, the name was cancelled on 1 November 2015 wasn’t it?

Mr Minus:    Correct.

Mr Macaw:    And that was because you allowed it to lapse?

Mr Minus:    Correct.

Mr Macaw:    Had you renewed it after the first registration in June 2013?

Mr Minus:    Correct.

Mr Macaw:    And what was the purpose of renewing it?

Mr Minus:    For exactly the same reason that I originally registered it.

…

Mr Macaw:    When you came to renew it, was your purpose the same?

Mr Minus:    Yes.

Mr Macaw:    At that time did you notify anybody of the registration or your renewal of it?

Mr Minus:    No.

Mr Macaw:    The business name was cancelled on 1 November 2015. Could you describe the circumstances in which that occurred?

Mr Minus:    I was sent an invoice for the renewal. I didn’t pay it.

Mr Macaw:    And why was that?

Mr Minus:    Because I didn’t wish to renew it.

Mr Macaw:    But did the interests of Australian barristers not still need protection?

Mr Minus:    No, because by then there was an incorporated body and if you read the constitution of that incorporated body, deficient though it is in terms of protecting some of the interests of Australian barristers, it now states that it will provide [some protections]. … My issue was always, as has always been, representation; that a body of Australian barristers should be one in which Australian barristers can play a role. The incorporation of the entity required barristers to be informed of the activities of that entity and, therefore, have a voice.

Mr Macaw:    Perhaps I’ve misunderstood your evidence, Mr Minus. I thought that you complained about the incorporation of the Australian Bar because you said, for example, that the interests of members of the unincorporated association had been diluted by the inclusion as members of the incorporated association of the various state and territory bar associations themselves?

Mr Minus:    Absolutely correct.

Mr Macaw:    Yes. Well, why did you accept that that incorporation provided protection of the kind that you thought previously had been necessary by registration of the business name?

Mr Minus:    The incorporation was a fait accompli, and information is everything. … Although I don’t accept that the incorporated entity is the proper structure for a barristers association, given that the barristers have no right to vote, and the control rests with the bar association who were not members of the original unincorporated body, at least it provides a requirement for information to be disclosed about how much is collected, and how it’s spent, and that gives barristers the opportunity to make their voices known, if they choose to, about the situation.

…

Mr Macaw:    Do you accept that you renewed this registration on 14 June 2014?

Mr Minus:    Yes. I think that would be right.

Mr Macaw:    And it came up for renewal again on 14 June 2015?

Mr Minus:    Yes.

Mr Macaw:    Well, let me ask you, first, about the renewal in 2014. You still thought that a protective purpose was appropriate did you?

Mr Minus:    Yes.

Mr Macaw:    But then in 2015 you thought it wasn’t, because?

Mr Minus:    Because it was an incorporated entity.

[emphasis added]

119    Mr Minus was then taken to an article which appeared in Lawyers Weekly (Ex 14). Mr Minus was taken to the paragraph at p 3 which is in these terms:

Last Friday (14 June) Minus, through Australasian Barrister Chambers, registered the business name “Australian Bar Association” because, he told Lawyers Weekly, he was thinking of setting up an incorporated and registered Bar association of all barristers in the country.

120    The article is dated 19 June 2013 and the quoted passage refers to an exchange between Mr Minus and Lawyers Weekly the preceding 14 June 2013. Mr Minus denied that he had told the reporter all of those things. The following exchange then occurred at T, p 201, lns 6-15:

Mr Macaw:    Do you say you said some such thing but only in relation to the business name Australian Barristers Association?

Mr Minus:    No. I said the last part of it, not the first part. I believe the first part is their report, namely their reporting that they found out that last Friday, this company registered Australasian [Australian] Bar Association. And I was asked by Lawyers Weekly what are your intentions? And I said I’m thinking of setting up an incorporated and registered Bar association. And that was why I subsequently registered the name Australian Barristers Association. But my intention always with the name Australian Bar Association was a protective one. I have never, ever, intended to use that name for a business operation but for a role or an association for Australian Barristers.

[emphasis added]

121    The proposition was put to Mr Minus that he could not “seriously” be suggesting that the information that five days before the publication occurred on 19 June 2013 the name Australian Bar Association had been registered, came from sources other than Mr Minus. Mr Macaw suggested that such a notion was “unbelievable”: T, p 201, lns 17-27. This exchange occurred at T, p 201, lns 27-40:

Mr Macaw:    Mr Minus. You went to them, didn’t you? You were in the habit, weren’t you, of consulting with journalists from Lawyers Weekly?

Mr Minus:    I had contacted them around that time, yes.

Mr Macaw:    Yes. You had contacted them because you wanted to have published information about what you saw as inappropriate behaviour by the Australian Bar Association, including the threats to sue you?

Mr Minus:    Yes.

Mr Macaw:    And it was in that context of your approaching them that you disclosed that on 14 June 2013 you had registered the business name Australian Bar Association?

Mr Minus:    I don’t believe I did, no.

Mr Macaw:    I suggest to you that it was in the context of that information that you made the statement that you accept having made at the end of that paragraph [“he was thinking of setting up an incorporated and registered Bar association of all barristers in the country”].

Mr Minus:    Yes.

[emphasis added]

122    Mr Minus denied that there was any link between his desire to take the step of setting up an incorporated and registered Bar association and the registration of the name Australian Bar Association. In explanation of that notion, Mr Minus said this at T, p 201, ln 46 and T, p 202, lns 1-2: “If that was my intention, I would not have subsequently registered another business name called Australian Barristers Association. There would have been no need” [emphasis added].

123    This exchange then followed at T, p 202, lns 4-15:

Mr Macaw:    Well, we will come to that. But you’re seriously suggesting to his Honour, are you, that you were not the source of the information about the registration on 14 June?

Mr Minus:    I can’t categorically say that I never said it because this is sometime back and it would have been a telephone conversation. But I believe that that was a question asked of me, not me providing that information.

Mr Macaw:    It was just fortuitous, was it, that somebody at Lawyers Weekly with whom you were speaking had done a search and realised that five days earlier, you had registered the name?

Mr Minus:    At that time there were a number of articles published and they were interviewing other solicitors and lawyers about that. It wasn’t simply me reporting it. There were other people who were making comments to Lawyers Weekly and I was being asked about their comments.

[emphasis added]

124    As to the business name Australian Barristers Association, Mr Minus accepted that he was responsible for the registration of the business name by Chambers on 9 May 2014. This exchange then occurred at T, p 203, lns 29-47; T, p 204, lns 1-24:

Mr Macaw:    Do you accept Mr Minus that it is a name that’s colourably similar to Australian Bar Association?

Mr Minus:    Yes.

Mr Macaw:    And what was your purpose in adopting it, was it?

Mr Minus:    My view was at that time that I had reserved the name which applied to Australian barristers who would be members of the Australian Bar Association. I was still thinking it would be a very good idea if there was another association of – of Australian barristers, and I registered that name as a name that could be applicable and utilised without, hopefully, much conflict.

Mr Macaw:    However, this is May 2014?

Mr Minus:    Yes.

Mr Macaw:    So you plainly weren’t talking about this registration to the Lawyers Weekly journalist on 19 June 2013, were you?

Mr Minus:    No.

Mr Macaw:    Well, was this also a registration which was designed to have a protective purpose?

Mr Minus:    No.

Mr Macaw:    What was the purpose of this registration?

Mr Minus:    It was contemplated that there could actually be formed a new association of Australian barristers, given that it would be unlikely at that stage that the existing barristers could form under the name that had been registered for them.

Mr Macaw:    Australian Bar Association?

Mr Minus:    Yes.

Mr Macaw:    I put to you, and you accepted, that Australian Barristers Association was colourably similar to Australian Bar Association. You accepted that it was. Do you understand that when I put “colourably similar”, what I am putting in substance is that you chose it with a name as close as possible to Australian Bar Association?

Mr Minus:    Well, I was trying to choose it as far enough away while still being related to, because it was my thinking that the people who would be wanted to – who could be a member of it would be the same people, the very same barristers.

Mr Macaw:    You understand, don’t you, what the expression “colourably similar” means?

Mr Minus:    Well, you’re indicating that the negative consequence that it wasn’t far enough away as to be confused with [Australian Bar Association] but my understanding, or my feeling was [that] it was actually the same people that would be in both associations – (1) in the Australian Bar Association nominally, but not really; and possibly, (2) in a real association called the Australian Barristers Association, an association of Australian barristers as opposed to an association of Australian bars.

Mr Macaw:    Yes. Do I correctly understand that answer to mean that you thought it was appropriate to choose a name which was colourably similar to Australian Bar Association because the same barristers would form it?

Mr Minus:    Yes.

[emphasis added]

125    Mr Minus said that although it was a bit “naïve” on his part, his thinking was that most Australian barristers had no idea about what the ABA does and his own distinct impression was that the ABA “did very little” and thus his thinking was that if there could be an association that was representative of Australian barristers, “there would need to be a name for it, so let’s start with a name and see where it goes from there”: T, p 204, lns 29-39. The notion was naïve in the sense that barristers “are not known for wanting to step out”: T, p 204, lns 42-43. Mr Minus accepted that the name “Australian Barristers Association” is still on the Register: T, p 204, ln 46. This exchange then occurred at T, p 205, lns 1-13:

Mr Macaw:    And does that signify that you propose still to pursue that objective?

Mr Minus:    Propose? Well, I think it’s still a very worthwhile objective. I still think that there should be an association of Australian barristers, and that association would need a name. Yes. Am I actively trying to do it? I wish I could do. But a lot of my time has been taken up in this matter.

Mr Macaw:    Did you notify the Australian Bar Association of this registration of business name?

Mr Minus:    No, I did not.

Mr Macaw:    Did you notify Australian barristers of this registration, and of your proposal?

Mr Minus:    Not yet. I have at various times sent some emails to all 6,000 barristers in Australia to deal with aspects of this matter, and positive aspects of what should occur. My attempts to do that have been limited, but they have been heartfelt.

126    Mr Minus accepted that the ABA had made use of the name AustBar and although he was not aware of when the website name ˂austbar.asn.au˃ had been originally registered by the ABA, he “knew that they had used that website”: T, p 205, lns 22-23. Mr Minus said that he did not seriously question the number of unique visitors to the ABA website: T, p 205, lns 33-34, and he did not dispute the numbers referred to in the ABA’s material for the years 2010, 2011, 2012, 2013 and 2014: T, p 206, lns 1-5. Mr Minus said that he was aware that the ABA had such a website because in 2011 he visited the ABA AustBar website to find out information about the national profession as a national body. He said that because he could not find information about those matters on the website he did not visit it any further. He said he had no knowledge of when it was established: T, p 206, lns 7-19. Mr Minus accepted that he had put to Mr Selth a proposition to the effect that an unincorporated association cannot enter into a contract (that is, a contract with a domain name Register) and accordingly an unincorporated association could not own a domain name: T, p 206, lns 21-24. Mr Minus was then asked this question: “Is that the reason why you say that you and your entities are entitled to use the name ‘AustBar’ notwithstanding the use which has been made since 2001 of it by [the] Australian Bar Association?” He answered, “No”: T, p 206, lns 26-28. Mr Minus explained the point he was trying to make to Mr Selth in this way at T, p 206, lns 30-44; T, p 207, lns 5-7:

Mr Minus:    What I was trying to put to Mr Selth was that the only basis that I was able to discover post this litigation beginning as to the use of the term “AustBar” by the ABA was as a domain name or an email address associated with the domain name, ergo the only basis on which they could make a claim for having a right to use the term “AustBar” was because of the domain name. However, the domain name could not be the property of the ABA because they had no right to register it. … The only way the ABA was able to secure the registration was by reporting that they were an incorporated body. If the ABA could not have obtained the registration as an incorporated body, it could not have the benefit or claim the benefit of the proprietorial interest in that name because it could never have held that name. That was the point of my asking because that was the only basis that I could see that the ABA could claim any use of the term “AustBar”.

Mr Macaw:    Is it your position that you acted upon the basis that a domain name registration is irrelevant to a question of misleading conduct, for example, unless that registration is valid?

Mr Minus:    Yes. A claim by that entity.

127    Mr Minus said that it had never been conceived by him that an entity that he had always understood to be called the ABA had ever been known of or thought of as “AustBar”. In relation to the domain name, he said that the point he was making was that the only way he could see that the ABA could claim “any sort of property interests in the term ‘AustBar’ was if its registration of a domain name was a valid registration”: T, p 207, lns 19-24.

128    As already mentioned, Austbar PL was incorporated on 9 September 2015 with Mr Minus as its sole director and Aplus its sole shareholder. As to the role of Austbar PL, Mr Minus said this in a letter to Mr Christopher dated 12 October 2015:

As you are aware:

•    Australasian Barrister Chambers Pty Ltd was incorporated on 15 October 2008 …

•    on 7 July 2011, it registered the domain name ˂austbar.com.au˃ and has promoted itself as “AUSTBAR” since that time,

•    on 3 January 2014 it registered and since that time has operated under the business name, “AUSTBAR Chambers”,

•    on 29 May 2014 it registered and since that time has operated under the business name, “AUSTBAR”.

It has long been the intention to consolidate the holding of the various domain names and trade mark opposition in relation to these business operations under a family trust.

Therefore on 9 September 2015, APLUS Pty Limited as corporate trustee on behalf of the APLUS Family Trust incorporated the company “AUSTBAR Pty Ltd” ACN 608 133 768. AUSTBAR Pty Ltd has since that time acquired by assignment the trade mark oppositions previously held by [Chambers] to the trade mark registrations of:

•    the word “AUSTBAR” applications number 1560119 and,

•    the word “AUST BAR” application number 1650033

AUSTBAR Pty Ltd is in the process of acquiring the business operation of the “AUSTBAR website” and the domain name, ˂austbar.com.au˃.

On 26 September 2015, AUSTBAR Pty Ltd lodged an application no. 01724279 for registration as a trade mark, the words “AUSTBAR ADR” …

Your client Australian Bar Association (unincorporated) has been aware since at least 13 May 2013 that we have been conducting a business of providing virtual chambers services to Australian barristers under the name “AUSTBAR”.

In conjunction with the newly registered entity, ABA Australian Bar Association Ltd, the combined attempts of your clients to frustrate our legitimate business operations through the use of our registered business names is a source of continuing concern.

Yours sincerely

Derek Minus

129    In that letter, Mr Minus also said in response to Mr Christopher’s contention set out in a letter dated 24 September 2015 (to the effect that the ABA had used the name “AUSTBAR” as part of its website address ˂www.austbar.asn.au˃ and the email address ˂mail@austbar.asn.au˃ since 2001), that such use failed to comply with the “auDA policy 2012 – 05 Guidelines on the Interpretation of Policy Rules for Open 2LDs” and that as a result, Austbar PL had lodged a complaint about that matter with the relevant body.

130    Thus, according to the letter of 12 October 2015, the role of Austbar PL was to acquire the “business operations” of the “AUSTBAR website” from Chambers and the domain name ˂austbar.com.au˃ registered by Chambers by which “it had promoted itself as AUSTBAR” since 7 July 2011. It also, by assignment from Chambers, took over the opposition proceedings to the ABA’s trade mark applications for registration of AUSTBAR and AUST BAR as trade marks under the TM Act. All of this was put in place by Aplus as trustee of the Aplus Family Trust. As already mentioned, nine of the 10 issued shares in Aplus are held beneficially by Mr Minus. Mr Minus, Ms Minasian and Sathenik Minus are the directors of Aplus. In the letter, Mr Minus made it plain that the domain names and trade mark oppositions were “business operations” to be brought under the family trust.

131    As mentioned, Austbar PL on 26 September 2015 lodged an application for registration of the word trade mark AUSTBAR ADR (Application 01724279; “App 279”).

132    On 8 October 2015, Mr Christopher caused a solicitor employed by Mr Christopher’s firm, Webb Henderson, Mr Bridges, to search and review the website ˂www.austbar.com.au˃. The printout of the various webpages is contained at AJC-5, Tab 3. The elements of the website relevant for present purposes are these:

(1)    At the top left hand side of the page 1 of the printout (webpage 1; “wp 1”) is the following device and name (in black and white):

(2)    At the top of wp 1 next to the device and name is an image of the entrance area to the High Court of Australia under which the following words appear:

A National Practice

FOR AUSTRALIAN BARRISTERS

(3)    Webpage 1 then says, relevantly:

The uniform legal market in NSW & Victoria has begun 1 July 2015

Now barristers in NSW and Victoria can establish their own “virtual chambers” with their personal local phone number, messaging, personal answering, remote access and cloud based services.

…

Organise your listing on AUSTBAR Chambers to promote your practice nationally and choose the services to build your own “virtual” chambers. …

*    Join AUSTBAR and organise your national listing        …

…

Virtual Chambers Services                    Join AUSTBAR Chambers

(4)    Webpage 1 then says things about AUSTBAR Chambers in these terms:

About AUSTBAR Chambers

AUSTBAR CHAMBERS is Australia’s first independent chambers established for barristers who want to promote their services outside of the confines of their home state and develop a National Asian practice.

As a national chambers for Australian Barristers, AUSTBAR Chambers is delivering innovative techniques and technologies to assist you to promote, connect and expand your practice. We call this service, “Virtual Chambers”.

(5)    Then, a disclaimer follows that text in these terms:

NOTICE & DISCLAIMER AUSTBAR CHAMBERS is the registered business name of AUSTBAR Pty Ltd, a private company established by barristers providing services to barristers. AUSTBAR Chambers is not associated with, nor approved, endorsed or sponsored by any Australian Bar association. See AUSTBAR and ABA.

(6)    On the left hand side of wp 1 carrying over to wp 2 and wp 3 in a column starting under the device and name as shown at (1) above, these words appear:

AUSTBAR MEMBERS

VIRTUAL CHAMBERS

ROLE of Barristers

AUSTBAR ADR

Accredited Dispute Resolvers

Dispute Resolution Associates

NEWS

Materials

Partner Links

Contact us

National

New South Wales

Victoria

Queensland

South Australia

Western Australia

Tasmania

Australian Capital Territory

Northern Territory

All Barristers

New South Wales Bar

Victorian Bar

Queensland Bar

South Australian Bar

Western Australian Bar

Tasmanian Bar

Australian Capital Territory Bar

Northern Territory Bar

ADR

Public/Administrative Law

Transport

Admiralty/Maritime/Aviation

Appellate General

Commercial & Contract Law

Constitutional Law

Contract Law

Environment and Planning

Equity & Trusts

Family & Defacto

Industrial/Employment

Intellectual Property

Common Law

Personal Injury

Appellate/Procedure

Property

Taxation & Superannuation

Telecommunications/IT

6th Floor 67 Castlereagh Street

Sydney 2000 Australia

[contact numbers]

˂clerk@austbar.com.au˃

(7)    At the bottom of wp 3, adjacent to the column, appears the words:

Copyright © 2013 AUSTBAR Pty Ltd ACN 608 133 768

(8)    It seems that the copyright endorsement described at (7) was added to the website sometime between 9 September 2015 and 8 October 2015 as searches on 9 September 2015 did not reveal that endorsement.

(9)    Immediately after the Disclaimer on wp 1, the website goes on to explain what a barrister is and does, in this way:

Find a NATIONAL Barrister

A Barrister is an Australian lawyer who

practises as a specialist advocate in courts

and as an adviser in the law.

Each barrister practises as an individual

who is not in partnership with any other

lawyers nor an employee or an employer of

other legal practitioners.

(10)    The apparent need to explain on wp 1 in the way set out above to a person visiting or interrogating the website just what a barrister is and does, suggests an expectation that people essentially unfamiliar with the notion of the role of a barrister will be drawn to the website.

(11)    Webpage 1 then addresses barristers in this way with text immediately to the right of the text “Find a NATIONAL Barrister” as set out at (9) above:

Joint AUSTBAR Chambers

Barristers with a current practising certificate who have

an interest in promoting their practice outside of their

home State or Territory can now join.

MEMBERSHIP BENEFITS

As well as providing each Member with a webpage listing

the areas in which they can practice, we supply a range of

Cloud based services to take your practice into the

Internet age. Read about our range of services here:

Services

(12)    At wp 2, these entries appear:

FIND barristers who have a National practice:

AUSTBAR MEMBERS

FIND barristers by their chosen areas of practice:

PRACTICE AREAS

FIND barristers who are listed on our ROLL of Barristers

National ROLL

FIND barristers who are accredited dispute resolvers:

AUSTBAR ADR

(13)    Webpage 2 then sets out, in column form, a list of “Practice Areas” interspersed with references to the laws of particular jurisdictions: Australian Capital Territory, Northern Territory, Tasmania and Western Australia. Webpage 2 also contains this entry in the format set out below:

Subject Areas

Asia law AUSTBAR Australian

Bar Association Australian Legal

organisations Bar Association

Corporate Counsel | Direct briefing

Federal Government Globalisation Government

International | Law Society of NSW

Legal Profession National

Practice …

133    The applicants emphasise that a person examining the website ˂www.austbar.com.au˃ will see that it provides a search facility to “Find” barristers who are “Members” of “AUSTBAR Chambers”; barristers who have particular areas of practice; barristers who are “Listed” on a “ROLL of Barristers” and barristers who are “Accredited Dispute Resolvers”. It seems objectively clear enough that the website is configured so as to address and serve the purpose of speaking to persons who are barristers and who may wish to become a member of electronic virtual chambers and thus seek out the services of the service provider standing behind the website. However, it also speaks to persons who are considering engaging a barrister and who want to seek out some form of authoritative information about the background and information concerning particular individual barristers and the range of experience of barristers practising in particular areas of professional practice. Plainly enough, the website contemplates that that group includes non-lawyers, that is to say, members of the public who might find themselves in need of a barrister to represent them in a controversy by drawing to their attention the explanation that a barrister is “an Australian lawyer who practises as a specialist advocate in courts and as an adviser in the law” and that each barrister practises as “an individual” who is not in partnership with other lawyers nor an employee or, apparently, an employer of other legal practitioners.

134    The website is not just directed to barristers, solicitors, general counsel or lawyers more generally who might be thought to bring a discerning eye to the website astute to a distinction between the Australian Bar Association and its ABA website ˂www.austbar.asn.au˃ operated by the ABA from 2001 and another austbar website ˂www.austbar.com.au˃ operated by Chambers under the name “AUSTBAR” from 7 July 2011 and then “AUSTBAR Chambers” from 3 January 2014 and then by Austbar PL pursuant to the arrangements put in place by Aplus and described in the Austbar PL letter of 12 October 2015 signed by Mr Minus as described earlier.

135    Mr Minus accepted in oral evidence that although the website was primarily directed to promoting the desirability of direct access being available to barristers, the website contemplated an expectation that members of the public would have access to the site and thus the site was designed to promote the message of the desirability of direct public access to the work of barristers including ADR work: T, p 152, lns 1-44. Plainly enough, the website, objectively viewed, conveys that impression.

136    As already mentioned, Austbar PL was incorporated on 9 September 2015 and Mr Minus in his letter of 12 October 2015 set out the role of Austbar PL. The features of the website ˂www.austbar.com.au˃ described at [132] of these reasons are those features apparent on a search conducted on 8 October 2015 after the intervention of Austbar PL according to the business plan identified by Mr Minus. However, the website ˂www.austbar.com.au˃ when conducted by Chambers exhibited many of the features identified at [132] of these reasons when searched on 20 April 2015 including all of the matters set out at [132](6). The device at the top left hand side of wp 1 as at 20 April 2015 displayed the scales of justice with the name Australasian Barrister Chambers rather than AUSTBAR Chambers. At the top of wp 1 appears a particular image reminiscent of the virtues of a touchscreen. Immediately under that image the following text appears:

137    It seems this earlier version expressly recognised that the site was also addressed “to consumers of legal services both in Australia and Asia”.

138    As to this version of the disclaimer, the following exchange occurred between Mr Selth and Mr Minus during his cross-examination of Mr Selth at T, p 84, lns 37-47 and T, p 85, lns 1-28:

Mr Minus:    That disclaimer is prominent on the webpage? It’s on the homepage and it’s at the very top of that page?

Mr Selth:    Yes.

Mr Minus:    There couldn’t be any more prominent position on a website than the top left-hand corner column and the right-hand column of the homepage, could there?

Mr Selth:    I accept it’s prominent.

Mr Minus:    Yes. And it’s in bold, as I identified in my letter to Mr Colbran?

Mr Selth:    Yes.

Mr Minus:    I asked that – and although you can’t see it in the black and white – but I did take you to the colour version – it’s also in colour?

Mr Selth:    Yes.

Mr Minus:    So in response to Mr Colbran’s concern identified in his letter about people being misled, a disclaimer was immediately added to the website in the most prominent position in bold and in red and across two columns, is that correct?

Mr Selth:    Yes.

Mr Minus:    And I’m not going to read it to you again but I just note the right-hand column says: “AustBar Chambers is not the ABA”. Addressing you personally, Mr Selth, is it possible for you to consider that this website, after reading that disclaimer, is a website that is published or promoted by the ABA?

Mr Selth:    The domain name is the problem.

Mr Minus:    Well, we will come to that. But I’m asking you this. Somebody who goes to a website doesn’t read, usually, domain names. I’m asking you this. If you were to arrive at this website by having clicked on a link and you started to read the article at the very top page, an article that says: “About Australasian Barrister Chambers not being endorsed by any Australian bar association” – and a bold heading that says: “AustBar Chambers is not the ABA” – and then goes on to explain that the ABA is suing this organisation, Australian Barrister Chambers [although Mr Minus means Australasian Barrister Chambers], AustBar Chambers, in the Federal Court, is there any way that you personally could possibly consider that this is a website sponsored or owned or published by the Australian Bar Association?

Mr Selth:    I personally could not.

139    Apart from the website, Chambers (and then Austbar PL as the acquirer of the business of Chambers) operated a “twitter page”, as earlier described. Mr Christopher annexes at AJC-1, Tab 16, a copy of a screenshot of the Austbar twitter page referenced under the “twitter handle ˂@AustBar˃”. The page depicts prominently a large image of the scales of justice under which the following words appear:

Australian Barrister

@AustBar

The website for Australian barristers with

a national practice.

Australia

austbar.asn.au

Joined July 2011

140    The propositions for which the applicants contend are these:

(1)    An essential element of the registration by Chambers of the business names Australian Bar Association (even though the name was deregistered on 1 November 2015) and Australian Barristers Association was an intention to carry on business under those names having regard to s 23(1) of the BNR Act.

(2)    The explanation given by Mr Minus of no intention at the date of application (and at the date of renewal as well) to carry on business under the name Australian Bar Association and his evidence that he registered the business name as merely a protective step for Australian Barristers ought to be rejected as “implausible”.

(3)    Although Chambers is in liquidation, an inference ought to be drawn that Mr Minus, if left free to do so, might use either business name in connection with his “virtual chambers”.

(4)    Moreover, it should be recalled that Mr Minus gave evidence that he still retained an intention to use the name Australian Barristers Association which he accepted is a name “colourably similar” to Australian Bar Association.

(5)    It may also be accepted that Mr Minus would use those names to indicate a connection in the course of trade between the user of the names and the services provided in connection with the name.

(6)    Chambers has used the names Australasian Barrister Chambers; AustBar Chambers; and Australian Barrister on and in connection with the AustBar website, the AustBarADR website and the AustBar Twitter page of the respondents at ˂www.austbar.com.au ˃, ˂www.austbaradr.com.au˃, and ˂@AustBar˃, respectively and in each case it has done so by using those names in conjunction with, or in close proximity to, an image of the scales of justice: see [78] and [132](1) of these reasons. In each such case, Chambers has used the names to indicate a connection in the course of trade between it and the services of a “virtual chambers” it provides through the various electronic platforms.

(7)    The business name Australian Bar Association is identical to the word mark TM 902 and thus “substantially identical with” TM 902 for the purposes of s 120(1) of the TM Act. Further, because the device mark uses the words Australian Bar Association (with the addition of the scales of justice) the business name is nevertheless also “substantially identical with” TM 252 because precisely the same words are used.

(8)    The business name Australian Barristers Association is substantially identical with TM 902. The substitution of the word “Barristers” for the word “Bar” does not deny substantial identity between the registered mark and the name. The same result is said to be true of the side by side comparison between the business name and TM 252.

(9)    The business names Australian Bar Association and Australian Barristers Association are also said to be, for the purposes of s 120(1) of the TM Act, “deceptively similar to” each of TM 902 and TM 252 because each business name so nearly resembles each trade mark that use of either business name is likely to deceive or cause confusion.

(10)    Again, use by Chambers of the names described at (6) at the sites described at (6) is use of names deceptively similar to TM 902 and TM 252 because consumers of the services of Chambers may be “caused to wonder” whether the services “come from, or bear the approval of the ABA”. Seven reasons are said to identify why that is so. First, as to Australasian Barristers Chambers, the word “Australasian” is said to be very similar to “Australian” and has the capacity to suggest, in conjunction with “Barristers Chambers” a “quasi-official or recognised national status” which might be thought to derive from the ABA or “some kind of association with the ABA”.

Second, as to AustBar, the ABA is commonly referred to by the abbreviation “AustBar” and thus, AustBar has acquired a “secondary meaning” signifying a connection with the ABA, having regard to the website use ˂www.austbar.asn.au˃ since 2001; the number of unique visitors to that site (and the other uncontested statistics at [54] of these reasons); use of austbar as part of the ABA’s email address ˂@austbar.asn.au˃; the Twitter identifier ˂@AustBarAssoc˃; journal references Aust Bar Rev and Aust Bar Gaz; and media references. Thus, the use of “Aust Bar” as an identifying mark of virtual chambers provided through the website of the respondents is “naturally apt to cause consumers to be confused and to wonder whether those services are being provided by the ABA or have some sort of connection with the ABA”.

Third, as to the term “Australian Barrister”, use of that identifying name on the Austbar Twitter page of the respondents coupled with the “handle” ˂@AustBar˃ suggest that, or has the capacity to suggest that, the services promoted through the Twitter page have a quasi-official or recognised national status deriving from, or associated with, the ABA, especially having regard to access by consumers and non-lawyers.

Fourth, conjoining Australasian Barrister Chambers, AustBar Chambers and Australian Barrister with, or locating those names in proximity to, a logo of the scales of justice is apt to exacerbate confusion caused by use of those names because a prominent feature of the ABA’s logo mark (device) is an image of the scales of justice and whilst the images are not identical they are “sufficiently similar” to “add” to the confusion or misleading impression otherwise created that the services associated with those names derive from or have an association with the ABA. The impression said to be carried away from engagement with the ABA logo mark device is one of “institutional involvement in the administration of justice” and the use by Chambers or any of the respondents could wrongly “foster the same impression”.

Fifth, because deceptive similarity is a function of the “general impressions” made on customers or potential customers as a result of “notional normal fair use” taking into account imperfect recollection and ideas conveyed by the use of the impugned mark, rather than a question of recollection of the precise details of the mark as though assessing photographic recollection of the whole, the use of the names together with the scales of justice as earlier described gives rise to a general impression of a connection or association with the ABA.

Sixth, an inference is open and ought to be drawn that Mr Minus, for the respondents, held a “deliberate intention” to appropriate the reputation of the ABA by registering the business name Australian Bar Association and by adopting austbar as the dominant part of the electronic address for the relevant respondents at the relevant points in time. Such an inference enables a conclusion to be drawn, more readily, that the respondents’ use of Australasian Barrister Chambers, AustBar Chambers and Australian Barrister either on their own or in conjunction with the scales of justice are “deceptively similar to” the word mark TM 902 and the logo mark TM 252.

Seventh, the propensity for confusion in the use of the name Australasian Barrister Chambers can be seen, it is said, in the mis-descriptions adopted by Mr Minus himself. The applicants rely upon an example in the form of a reference in the course of cross-examination of Mr Selth by Mr Minus about Mr Colbran’s letter dated 23 May 2013 (see [79] of these reasons) which Mr Minus described as “the letter from the Australasian Bar Association”: T, p 114, lns 20-22. Another example is said to be that in the course of submissions, Mr Minus put the notion that “AustBar” is merely a descriptive term used by many participants in the Australian legal market. Mr Minus contended that “it is not simply a term descriptive of the Australian Bar Association” and then said this at T, p 144, lns 26-32:

Mr Minus:    The term “AustBar” is a descriptive term that can be used by many participants in the Australia legal market. It is not simply a term descriptive of the Australian Bar Association. AustBar, or Australasian Bar – I withdraw that – Australasian Barrister Chambers has been using that name, and, since the date of registration of the domain name, has also been using the abbreviated name, “AustBar” to denote the practice – business of the chambers, and the name “AustBar Chambers” – and both of those names, “AustBar” and “AustBar Chambers”, were subsequently registered.

Thus, an inference is said to be open that if a person as familiar with the names as Mr Minus mixes them up in this way, less knowledgeable people are likely to confuse the names Australasian Barrister Chambers, AustBar Chambers and Australian Barrister, with the ABA.

(1)    As to use of the names in connection with goods or services for which TM 902 and TM 252 are registered, the applicants say that the provision of virtual services and promotional and listing services for Australian barristers by Chambers falls within these classes:

•    Class 16 (directories);

•    Class 35 (association services being the promotion of the interests of members, including compilation and provision of online directories, sponsorship);

•    Class 41 (association services, including provision of on-line information and news); and

•    Class 45 (association services, compilation of legal information, information services in relation to legal matters, legal advocacy services, providing information including online about legal services, barrister services, alternative dispute resolution services, mediation, lobbying services relating to legislation and regulation).

(2)    Thus, the applicants contend that Chambers has infringed TM 902 and TM 252.

(3)    The applicants rely upon the same conduct (although informed by other contextual matters) as giving rise to contraventions of s 18(1) and ss 29(1)(g) and 29(1)(h) of the ACL.

(4)    As to the disclaimer, the applicants say that the form of the disclaimer set out at [132](5) of these reasons on webpage 1 of the Chambers website ˂www.austbar.com.au˃ as at 8 October 2015 (and appearing thereafter) was adopted following complaint by the ABA (Mr Colbran’s letter of 23 May 2013). They say that the form of the disclaimer at [136] of these reasons has not appeared on the website since 8 October 2015. The applicants say that the need to adopt a disclaimer suggests that an ordinary reasonable person would believe or assume that there is an affiliation or association between the website and the ABA. They say the disclaimer adopted from 8 October 2015 is in small type (see [132](5) of these reasons) and positioned two-thirds of the way down webpage 1. They say the disclaimer is only reached once a user is already engaging with the website content. The applicants contend that the disclaimer is insufficient to overcome the confusion caused by the conduct of the respondents.

(5)    As to Austbar PL, the applicants say that the company name adopted “Austbar” and since September 2015 it has taken over the business of the “AustBar Chambers” website and has continued to carry on all of the conduct complained about. Thus, it has engaged in making the identified representations and has engaged in contraventions of ss 18, 29(1)(g) and 29(1)(h) of the ACL.

(6)    As to accessorial liability, the applicants say that Mr Minus has been the guiding mind of Chambers; in substance, Chambers has been his alter ego; and the virtual chambers business is, in substance, his business.

141    Mr Minus contests every one of these contentions. Essentially, everything is in issue. He says that he has never used the business name Australian Bar Association during the period he caused it to be registered, or otherwise. He says that “AustBar” is not a term associated solely with the ABA whether in the form of ABAU or ABA Ltd. He says, summarising his position, that, in effect, the use of the scales of justice is use of, put simply, a well understood image of the balancing process involved in the dispensation of justice according to law. He says he has not engaged, either by himself or by any entity upon which he influences decision-making, in any conduct constituting an infringement of either registered trade mark and his conduct does not constitute a contravention of ss 18, 29(1)(g) or 29(1)(h) of the ACL. As to the disclaimer, he says that to the extent that anyone might have thought or have been caused to wonder whether there might be an association between the ABA and the service provider, Chambers, and later Austbar PL, offering the services promoted on and through the respondents’ AustBar website, the disclaimer would have had the effect of dispelling any such wonderment or confusion.

142    As earlier mentioned, Mr Minus contends that the ABA, in the form of ABAU, had no individual members and could not hold property as the ABAU. To the extent that persons hold trade marks as trustees for the members from time to time, he says that there were no individual barrister members at any relevant moment in time. He says title could not have been held on trust for them and it could not be passed to Mr Selth and then to ABA Ltd.

143    Mr Minus addresses aspects of these matters in his affidavit material. In his affidavit of 16 October 2015 he explains that Australasian Barrister Chambers Pty Ltd was incorporated on 15 October 2008. Thereafter in his affidavit he proceeds to describe the various chronological events by reference to the shorthand description for that company of “AustBar Ltd”. It should be remembered, of course, that that shorthand description is not to be confused with “Austbar PL” which was not incorporated until 9 September 2015 and disclosed in the letter of 12 October 2015: see [128] of these reasons. Also, although incorporated in 2008, the company, Chambers, registered the domain name ˂www.austbar.com.au˃ on 7 July 2011. This terminology is apt to be misleading.

144    Mr Minus says that in securing the domain name registration Chambers satisfied the “Eligibility criteria” for that purpose and the dominant part of the domain name austbar derives from “Aust” drawn from Australasian and “Bar” drawn from Barrister. Registration was recorded in the name of DRA because it paid the registration invoice. Since then, Chambers has used the domain name and associated email address ˂admin@austbar.com.au˃. Mr Minus says that Chambers has used the name “AUSTBAR” and “AUSTBAR Chambers” to “refer to itself” and “as trade marks to promote its ‘virtual services’ to Australian Barristers”: paras 7 and 8, affidavit Mr Minus, 16 October 2015.

145    Mr Minus says that because he was conscious of an obligation arising under the BNR Act to register a business name if a company intended to operate under it rather than use its own corporate name, he caused Chambers to register “AUSTBAR Chambers” on 3 January 2014 and “AUSTBAR” on 29 May 2015.

146    As to the use of the ABA logo over many years to promote the services of the ABA, Mr Minus says that Chambers did not oppose registration of TM 252 and notes that the device prominently adopts the letters “ABA” and not “AUSTBAR”. Mr Minus says that, in his experience, ABAU is universally known as “the ABA” and not “AUSTBAR”. As to “Aust Bar Gaz”, that reference, he says, is simply akin to citing the All England Reports as “All ER”. Mr Minus says that on 8 June 2013, he conducted a search of the ABA website and located ˂www.austbar.asn.au˃. Mr Minus says that he could only find two references to the word “AUSTBAR” on the site and both references concerned the email address. The word was not otherwise used on the site. Mr Minus contends that the ABA has never used and does not use “AUSTBAR” as a trade mark. In late 2013, Chambers registered the Twitter hashtag “@AustBar” for “Australian Barrister” and has, mostly, law firm followers.

147    As to the business name registrations Australian Bar Association and Australian Barristers Association, Mr Minus says that apart from causing Chambers to register each business name, Chambers has not “conducted any business under or by reference to” those business names.

148    As to the development and adoption of a logo, Mr Minus says that the artwork was created by an art designer based in London, Ms Jane Brown. Ms Brown has designed artworks, logos and the look and feel of at least six websites associated with Mr Minus. As to the logo used by Chambers, the “draft design” was “prepared” by Mr Minus shortly after the registration of the domain name ˂www.austbar.com.au˃, around August 2011. Mr Minus says this:

One of my motivating forces for the development of an Australian-Asian “chambers” was to identify the abilities of Australian barristers and arbitrators who were interested and qualified to conduct international arbitration work in Asia. I was then aware of “logos” of many international arbitration bodies.

149    Mr Minus says that he modelled the logo adopted for Chambers on the logo of the American Arbitration Association (the “AAA logo”) which has no presence in Australia. It consisted of three words making up the name with enlarged first letters in each word and an image of the scales of justice as set out below:

150    Mr Minus prepared a draft logo using the three words reflecting the company name Australasian Barrister Chambers with emphasis given to “A”, “B” and “C” which were also intended to resonate with the terms “Accredited Mediator”, “Barrister-at-Law” and “Chartered Arbitrator”. Mr Minus copied the red colour scheme of the AAA logo and used a “stock” image of the scales of justice. The draft logo he created is set out below:

151    Ms Brown then produced the following images based on the draft changing the colour from red to burgundy:

152    Mr Minus observes that the figure of a woman holding “a balance” representing the scales of justice derives from antiquity based on an interpretation of papyrus from the “Book of Anhai” found in Thebes, Egypt, dated at approximately 1,050 BC in which the Goddess Maat, personifying justice, truth and balance, weighs, in the balance of the scales, the juxtaposed material. Mr Minus identifies other examples of the use of the scales of justice (by the Chartered Institute of Arbitrators (“CIArb”) and the Institute of Arbitrators and Mediators Australia (“IAMA”)), set out below:

153    No doubt there are many other examples. Of these examples, the scales of justice adopted in the AAA logo and by IAMA are particularly stylised images. The CIArb logo has the scales balanced on the arms of a sword. None of the images has the Goddess Maat or later Hellenic Goddesses, Themis or her daughter, Dike, holding the scales. Mr Minus identifies fourteen differences between the logo he adopted for Chambers and the ABA logo. There certainly are differences between the two images of the scales of justice although it seems to me that the differences are, by and large, relatively slight.

154    Mr Minus says that ˂www.austbar.com.au˃ is not and could not be deceptively similar to ˂www.austbar.asn.au˃ in the eyes of a person visiting or interrogating these websites because the domain space occupied by each is unique and determined by the country code top-level domain (“ccTLDs” such as “.au”) and the generic top-level domain (“gTLDs” such as “.asn”; “.au”; “.gov”; and “.com”). Mr Minus says that notwithstanding that position, he adopted the disclaimer at [136] of these reasons in response to Mr Colbran’s letter.

155    As to the logo work adopting the scales of justice, Mr Minus relies upon the coloured images set out at Schedule “C”.

156    For the sake of completeness, it should be noted that a document consisting of an email dated 28 June 2012 (4:05am) under the subject heading “Virtual Chambers services for Barristers” sent by Mr Minus from ˂clerk@austbar.com.au˃ to New South Wales barristers (two pages) attaching a three page “Virtual Chambers services” brochure was admitted as Ex 1. Another email dated 22 December 2010 under the name “Dispute Resolvers” (5:11pm) from Mr Minus to Dr John Keogh on the “subject” of “website” was admitted as Ex 2A in the NSWA proceeding.

conclusions in relation to the aba proceedings

157    I find as facts those matters of fact described at [4] – [8], [38] – [41], [43] – [68], [77] – [96], [98] – [103], [128], [130] – [137] and [139]. I simply note the historical material mentioned at [42]. At [105] to [127], I note matters of evidence given by Mr Minus. At [138], I note matters of evidence given by Mr Selth. I accept the evidence of Mr Selth and the evidence of Mr Christopher which, in the main, goes to matters of searches and the state of public registers and websites.

158    As to the evidence of Mr Minus, the applicants contend that I should find his explanations for the step of causing Chambers to register the business name Australian Bar Association as “implausible”. Against the background of the exchanges at [105] to [127] of these reasons, Mr Macaw put to Mr Minus that he was simply making up the notion that he caused the business name to be registered as a protective measure. Mr Minus contends that on 14 June 2013, he registered the business name as a protective measure to secure, what was an unregistered business name, for the benefit of Australian barristers. He then renewed it on 14 June 2015 for the same reason. He let it lapse in November 2015 when he elected not to pay the further registration invoice. He had made an enquiry about whether the name was registered as a business name of Mr Covell in the letter of 11 June 2013 and about the trade mark status of the name Australian Bar Association. Mr Covell told Mr Minus on 12 June 2013 that the ABA was an unincorporated body and also confirmed that he held instructions to take legal proceedings against Mr Minus and relevant entities associated with him based on a resolution of the AB Council of 7 June 2013. Mr Minus did not tell the ABA or Mr Covell of the registration of the business name Australian Bar Association. Nor did Mr Minus offer to transfer the business name to the ABA (to its nominee as trustee for the members) having “secured it”, in this pastoral way, for the benefit of Australian barristers.

159    Mr Minus was, at this time, under the pressure of threatened proceedings. Moreover, no mention is made by Mr Minus in his affidavits of this protective role he had elected to perform. The first occasion on which this pastoral endeavour emerged was on 18 December 2015 in the course of the proceedings. Mr Minus says that the registration of the business name is not a signification to the Registrar of an intention to carry on business under the name because Chambers never intended to do so. This explanation of the registration of the business name is not set out in any of the letters of Mr Minus to Mr Covell or the ABA or anyone else. Mr Minus, of course, is a lawyer. He says that he had been a member of the NSWBA for about 20 years. He was well familiar with the provisions of the BNR Act, as he says. Plainly enough, no individual Australian barrister would have an interest in or reason to carry on practice under that business name and no new association of individual barristers which might be formed and promoted could, rationally, expect to call itself the Australian Bar Association having regard to the pre-existing body engaged in the field of activities since 1963 described by Mr Selth. Such a notion makes no sense if one is acting or intending to act in conformity with the rule of law.

160    Having considered all of the evidence of Mr Minus, both affidavit and oral, in the context of the letters and the chronology of events, I suspect that Mr Minus has simply become very confused about this issue and has come to believe or convince himself that he acted on 14 June 2013 and then again on 14 June 2015 out of a desire to secure the business name Australian Bar Association in order to protect the interests of Australian barristers having regard to his own views about the ABA generally (a fraudulent body, he says) and its legal status in particular. I will address that matter later in these reasons.

161    However, plainly, that is not the actual position. A much more likely than not explanation is that having discovered that no business name had been registered for the name Australian Bar Association, Mr Minus registered it in the name of Chambers two days after Mr Covell’s letter. He did so, put anecdotally, in the “heat of battle”, to secure a measure of protection for himself in his likely litigious dealings with the ABA, under the pressure of those events. Registration of the business name is entirely consistent with a present and enduring threat to use the name at some point in connection with his endeavours. No answer was ever given to Mr Covell about this aspect of the matter in response, by Mr Minus, to the letter of 26 June 2013 by which Mr Covell agitated the issue for the ABA, unsurprisingly enough. The step taken by Mr Minus of causing Chambers to register the name of the Australian Bar Association (a body that by 26 June 2013 had been in existence doing all of the things Mr Selth gave evidence of for 50 years), as a business name of Chambers was both provocative and consistent with a threatened attempt to appropriate the name and reputation of the ABA to Chambers. In deciding that these were much more likely to be the factors informing the conduct of Mr Minus, I am willing to accept that he has come to believe that he acted out of some sort of pastoral protective concern for Australian barristers by assuming that all of his own individual concerns about the conduct and status of the ABA were inherent truths and that barristers more generally needed a new organisation. I accept that Mr Minus would not stand before and sit in the witness box of Australia’s national superior trial court and propound deliberate untruths. Therefore, he must simply have become very confused about these matters due to the pressure of being the litigant, the subject of the claims, himself. Nevertheless, his belief, clearly enough, is not, and was not, well placed.

162    When Mr Minus caused Chambers to register the business name Australian Bar Association on 14 June 2013 (and then renew it on 14 June 2015), he necessarily made a representation to the Registrar that Chambers intended to carry on business under that name and not its own corporate name. The reason or policy principle for Parliaments over time adopting regimes for the registration of business names (and now the present regime under the BNR Act) is one of enabling a person who deals with a company, body or person which has adopted a “name” for itself, to search and seek out the true identity of the company, body or person with whom they are dealing in various transactions. Had any person on and after 14 June 2013 until 1 November 2015 searched the Business Names Register for the true owner of the business name Australian Bar Association, they would have found a claim by Chambers to be the owner of that name for the purpose of carrying on a business. The ABA, in order to protect its own name, Australian Bar Association, filed applications for registration of trade marks in 2013.

163    Each day and every day from 14 June 2013 to 1 November 2015, Chambers and Mr Minus for Chambers, “used” the name by persevering in the conduct of representing to the Registrar and the community, by force of the operation of the Register, an express present enduring intention to carry on a business, the subject of the registration, in the name Australian Bar Association. Ultimately, both Chambers and Mr Minus abandoned the registration. It was deregistered on 1 November 2015.

164    Mr Minus on 9 May 2014 also caused the business name Australian Barristers Association to be registered as a business name. He says he would not have registered this business name if he had any intention to use the business name Australian Bar Association. However, of course, Mr Minus renewed the business name, Australian Bar Association, on 14 June 2014 and one imagines he might have abandoned that name in favour of the business name Australian Barristers Association, registered on 9 May 2014. Mr Minus presumably registered the business name Australian Barristers Association in recognition of the actuality that neither he nor any company he controlled (or “influenced”, as he accepted) could carry on business in connection with any new grouping or association of barristers under the name Australian Bar Association.

165    The difficulty with the name Australian Barristers Association is that Mr Minus concedes that that name is colourably similar to Australian Bar Association. That concession was made, no doubt, because it is colourably similar to Australian Bar Association. Plainly enough, Mr Minus “thought it was appropriate to choose a name which was colourably similar to Australian Bar Association because the same barristers would form it”: see the final question and answer at [124] of these reasons. Whether the same barristers would or would not form it, many people might come to engage with Australian Barristers Association in one way or another and when they do so, they will be engaging with a company using a name colourably similar to Australian Bar Association, in carrying on its business under the name.

166    Mr Minus accepts that he retains a present intention to use that name for such an association once undistracted from his objectives and plans by reason of this litigation and the pressure, no doubt, of his other professional activities.

167    Obviously enough, use of (as I have described it, and any broader use in the course of trade in services for which the mark is registered), Australian Bar Association is use of a sign identical with TM 902 and thus, “substantially identical with” TM 902 for the purposes of s 120(1) of the TM Act.

168    I am satisfied that such use as I have described it (and threatened use) is use in the course of trade in services for which TM 902 is registered.

169    I am also satisfied that the conduct on the part of Mr Minus in causing Australian Barristers Association to be registered and persevering in the preservation of the registration and enduring utility of that name in connection with the plans and objectives of Mr Minus, is use of a sign which is substantially identical with TM 902 based on the orthodoxy of the side by side comparison in Shell Co of Australia Ltd v Esso Standard Oil (Australia) (1963) 109 CLR 407 at 414, Windeyer J. It is also use of a sign which is deceptively similar to TM 902 because it is, as well, a sign colourably similar to Australian Bar Association. That follows because the name or sign so nearly resembles Australian Bar Association that it is likely to deceive and cause confusion.

170    I am also satisfied that use as I have described it of either business name (but especially use of Australian Barristers Association in the course of trade in services for which TM 252 is registered) is use of a sign deceptively similar to TM 252 because use of the name Australian Barristers Association is use of a colourably similar sign to the words Australian Bar Association. Use of either of those signs is likely to deceive and cause confusion about the source or origin of the services provided by the user of those names and the source or origin of the services provided by the ABA by reference to TM 252.

171    As to Austbar and AUSTBAR, I am satisfied that over a reasonably long period of time the Australian Bar Association has come to be known and identified, to a material and significant degree, as Aust.Bar Association and Aust.Bar both in the press and, more broadly, amongst professional bodies such as bar associations, the Law Council of Australia, law societies, university law schools and departments of Crown Law. Perhaps more importantly, I am satisfied that in the modern electronic world of almost universal engagement between persons, companies, bodies and users and providers of services online, the use by the ABA of the electronic descriptor Austbar in its domain address of ˂www.austbar.asn.au˃ has reinforced and greatly extended the recognition and identity of the Australian Bar Association with the name, term or descriptor austbar or Austbar. Austbar is a signification of “Australian Bar” and the particular embodiment of that signification is an association between austbar and Austbar and AustBar and the Australian Bar Association. The number of unique visitors and the broader statistics at [54] of these reasons, which are uncontested, are compelling.

172    The ABA website ultimately attracting the level of traffic seen in the table at [54] of these reasons was active in 2001, 2002, 2003, 2004, 2005, 2006, 2007, 2008, 2009, 2010 and 2011 before Mr Minus registered the domain name ˂www.austbar.com.au˃ on 7 July 2011.

173    Mr Minus says he has a right to adopt austbar or AustBar or Aust Bar because, in his view, the term is not associated solely with the ABA but, more particularly, his use and registration complies with the “Eligibility criteria” and “Guidelines” for domain name registrations and, by reason of the “ccTLD” and “gTLD” each domain name occupies a unique domain space or address and thus one unique address cannot overlap with another.

174    Mr Minus says that therefore, there can be no confusion. He also says his version of AustBar or austbar derives from the name Australasian Barristers as earlier described.

175    The circumstance that a domain name registration might or might not meet the eligibility criteria for registration is no answer to the question of whether use of such a domain name is either confusing or misleading or constitutes infringement of a registered trade mark, in Australia. Prior to the introduction of the dispute resolution protocols governing domain name registrations, it had become something of an art form for registrants to register, as domain names, the names of traders who had developed a reputation for a name or mark within a jurisdiction and often internationally. Processes were adopted as a result of that practice to try and address that conduct. Whatever the perceived “validity” might be of the domain name registration ˂www.austbar.com.au˃ within the confines of that system and its protocols, austbar and AustBar are terms, names or indicia associated, particularly electronically, with the ABA.

176    I am satisfied that Chambers and Mr Minus sought to aggregate to themselves on 7 July 2011 the attractive force of the dominant part of the domain name identifier austbar for their own purposes when engaging with visitors to their site even though austbar since 2001 had begun to signify the ABA’s presence on the internet and from 2001 was ultimately the subject of a large number of visitations resulting in the statistics to be seen at [54] of these reasons.

177    In truth, this is conduct very much along the lines of the registration by Chambers and Mr Minus of the business names Australian Bar Association and Australian Barristers Association, although the names are different.

178    Mr Minus caused the term AustBar Chambers to be adopted on the AustBar website, the AustBarADR website and the Twitter page under the handle ˂@AustBar˃, under the name “Australian Barrister”.

179    I accept that use of the sign AustBar Chambers by Mr Minus or companies under his influence, is use of a sign deceptively similar to TM 902 because use of the sign engages, by cognitive cues, the creation of an incorrect belief or impression that the services for which the sign is used or to which the services are connected, come from the ABA or are associated with the ABA. Visitors to the “AustBar Chambers” are likely to be confused about whether that might not be the case: Coco-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [39]. I therefore accept that the use of AustBar or Aust Bar as a badge of identification of virtual chambers services provided by Mr Minus and the entity Chambers, even though followed by the word “Chambers” is likely to cause those persons visiting and interrogating the offering to be caused to wonder whether the services offered under that sign or mark are those of, or associated with, the ABA.

180    As to the use of the Twitter handle ˂@AustBar˃ together with “Australian Barrister”, I also accept that persons engaging communications by means of “tweets” under that handle linked to “Australian Barrister” are also likely to be caused to wonder by reason of the cognitive cues associated with the conjunction of ˂@AustBar˃ and “Australian Barrister” whether the services provided by the organisation operating the Twitter account are the services of the ABA or have an association with the ABA. I am satisfied that use of ˂@AustBar˃ in this way is use of a mark or sign deceptively similar to TM 902.

181    As to the use of the name Australasian Barrister Chambers, I do not regard the use of that name as being either substantially identical with or deceptively similar to either TM 902 or TM 252. However, traffic is directed to a website for and on behalf of that company (and later Austbar PL) by use of the domain name ˂www.austbar.com.au˃. Use of that domain name involves use of a mark or sign in the course of that company’s trade in services for which TM 902 is registered. I regard the use of austbar in this context as a use of a mark or sign deceptively similar to TM 902. Once a person engages with austbar as the conduit to the website operated by Australasian Barrister Chambers, the sense of confusion or wonderment about whether the person is engaging with the ABA or a provider connected with the ABA remains.

182    However, by itself, the name Australasian Barrister Chambers might be thought to suggest a set of chambers occupied by barristers “virtually” (and in this case only a virtual presence is relevant), engaged or seeking to be engaged, in work in the Australian and Asian markets for legal services, by seeking direct electronic access to those who engage barristers in that work. In this case, of course, the key electronic point of connection is a domain name using austbar. Barristers might seek greater direct access to the legal profession in this way but it is also important to remember that the website addresses clients and the community directly through the website. Mr Minus, entities controlled by him (or over which he has influence) and other barristers would be entitled, plainly enough, to engage in an undertaking of establishing an online virtual presence for barristers associated together in some way, shape or form. The difficulty is the use of sign, mark or signpost which directs traffic to the site under or by reference to the dominant domain name descriptor austbar associated with the Australian Bar Association. The use of austbar as a mark sign-posting the electronic route to the site operator is the vice and the infringing conduct.

183    The next question concerns complaint made about the conjunction of the use of Australasian Barrister Chambers; AustBar Chambers; and Australian Barrister, on the website ˂www.austbar.com.au˃ and ˂www.austbaradr.com.au˃ and the Twitter page under the Twitter handle ˂@AustBar˃, with the scales of justice.

184    Clearly, there are differences between the image of the scales of justice in TM 252 and the scales of justice depicted at [78] and [132](1) of these reasons. The differences in the image of the scales of justice in each case are, in my view, relatively minor although they are real and there are differences. Mr Minus was responsible for the draft version of the image although the arrangement of the image and the words was ultimately settled by Ms Brown. The first question is whether the image at [78] is deceptively similar to the device mark TM 252 and/or TM 902. Mr Minus says not. In determining “deceptive similarity”, unlike a question of “substantial identicality”, the two marks are not compared “side by side”. The side by side analysis is undertaken with a view to isolating the similarities and differences between the registered trade mark and the impugned mark so as to assess the importance of those similarities and differences in the context of the “essential features” of the registered mark with a view to distilling a “total impression” of the “resemblance” or “dissimilarity” emerging out of such a comparison. That method is inappropriate when the question is one of deceptive similarity and involves notions of imperfect recollection taken away by the consumer or user. As to the orthodoxy of the test for deceptive similarity, see Shell Co of Australia v Esso Standard Oil (Australia) 1963 109 CLR 407 at 415, Windeyer J.

185    The statutory question is whether the selected sign (logo work) so nearly resembles TM 252 that its use is likely to “deceive” or “cause confusion” in the sense of creating, by the use of cognitive cues in the logo work, an incorrect belief or impression in the minds of those persons engaging with it, as to the source or origin of the services, or confused in the sense of becoming “perplexed” or “mixed up” in the sense of thinking that the services, provided in connection with the ABA’s registered trade mark, come from some other source or such persons are confused in the sense of being caused to wonder whether that might not be the case.

186    It seems to me that if the question is whether the addition of the scales of justice to the name Australasian Barrister Chambers has the effect of creating a device or sign which, when engaged by users, is likely to give rise to an incorrect belief or incorrect mental impression that the website is, or is associated with, the ABA, the adoption of the scales of justice brings the words Australasian Barrister Chambers closer to an impression of TM 252 but not sufficiently so as to render the sign (taken as a sign made up of the image in conjunction with the words) one which is deceptively similar to TM 252.

187    That follows because the words Australasian Barrister Chambers are given particular emphasis and the scales of justice are a common associative cue to a connection between independent lawyers and the administration of justice not simply a cognitive cue to an association with the ABA. Thus, I am not satisfied that the use of the logo in conjunction with Australasian Barrister Chambers is deceptively similar to TM 252.

188    However, the difficulty, again, is that this logo or device is used as a sign in conjunction with a signpost to the site operated under that logo or device, by means of the sign or mark in austbar. There can be no doubt that Chambers, and later Austbar PL, seeks to attract traffic to itself by reference to the link mechanism of austbar, a sign or mark associated with the Australian Bar Association and one which is deceptively similar to TM 902.

189    However, I regard the logo work at [132](1) differently.

190    That image involves use of the words AUSTBAR Chambers together with the scales of justice. It seems to me that applying the orthodoxy of the tests to determine whether a mark or sign is deceptively similar to TM 252, AUSTBAR has become associated with the Australian Bar Association; the signpost to the site using that name uses austbar and the scales of justice are used in conjunction with the name. It seems to me that there is a real likelihood that those engaging with the services provided by the operator of the website under that name and image, that logo work, are likely to be misled and deceived into a false belief or cause to wonder whether the services with which they are engaging are services of or connected or associated with the ABA.

191    Section 18(1) of the ACL provides that a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. It can be accepted as orthodoxy that conduct which wrongly leads relevant members of the public to believe or assume that there is an association in trade or business between a person or a service and another person or service contravenes that prohibition.

192    As to the question of the determination of the cohort who might be misled, see Crescent Funds Management (Aust) Ltd v Crest Capital Partners Management Pty Limited [2017] FCAFC 2 at [101] to [110]. Where conduct consists of contended representations to the public at large or a section of it, the issue of the sufficiency of the nexus between the conduct and the misleading, or likely misleading, of persons acquiring the service or products is to be approached at a “level of abstraction”: Campomar v Nike International (2000) 202 CLR 45 (“Campomar”), the Court (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) at [101]. The level of abstraction finds expression in the entry into the enquiry of the ordinary or reasonable members of the cohort to which particular characteristics can be directly attributed having regard to all of the relevant surrounding circumstances: Campomar at [102], [99] and [100].

193    Thus, it is necessary to isolate, by some criterion, a representative member of the cohort and the enquiry is to be undertaken with respect to this hypothetical member so as to determine why the contended misconception has arisen: Campomar at [103]. The effect of the “heavy burden” imposed by the statutory norm reflected in s 18(1) of the ACL suggests that where the effect of the conduct on a cohort or class of persons is in issue, the statutory prohibition must be regarded as contemplating the effect of the conduct on “reasonable members of the class”: Campomar at [103]. In such an enquiry the Court is likely to give little weight to assumptions by persons whose reactions are extreme or fanciful.

194    Similarly, it can be accepted as orthodoxy that where a person’s conduct has the effect of falsely suggesting that that person, or its services, has the approval of, or an affiliation with, a professional body, a contravention of s 18(1) of the ACL will likely arise: Australian Society of Accountants v Federation of Australian Accountants (1987) 9 IPR 282; CPA Australia Limited v Dunn (2007) 74 IPR 495.

195    Similarly, the registration of a domain name which suggests an affiliation or association between the operator (owner) of the domain name and another person can be conduct which is misleading or deceptive or likely to mislead or deceive a reasonable member of the relevant cohort and thus involve a contravention of s 18(1) of the ACL.

196    In this case, Chambers established an online virtual presence in which it sought to attract visitors to the site for a number of purposes. One target audience is barristers who might wish to establish a virtual presence on the website so as to secure direct access to the group of persons or organisations who would be likely to engage a barrister in various classes of legal work. The site is also directed more widely than that. It is directed to consumers and any person who wishes to find out information about the role of a barrister, the skill sets of barristers, the class of work that individuals engage in and other related matters. The visitors to the site might be citizens (consumers) who are likely to be engaged in a legal matter and want to find out information. The site might attract visitors from university law schools, students, government law offices, corporations, overseas participants likely to be engaged in particular classes of legal controversy. Apart from these groups, the site might well attract both experienced solicitors familiar with litigation and solicitors from law firms across the spectrum of legal practice whether in the mainstream of litigation practice or on the periphery of it. Reasonable members of these various classes within the cohort are the members in respect of whom the test is applied.

197    In this case, the question of whether Chambers and/or Mr Minus (and Austbar PL) has contravened the prohibition in s 18(1) is to be determined having regard to the following conduct. First, the applicants say that the respondents use the domain name ˂www.austbar.com.au˃ in circumstances where the ABA’s website uses, as the dominant part of its name, austbar, in the form of ˂www.austbar.asn.au˃ and in circumstances where the ABA also uses the domain names ˂www.austbar.com˃ and ˂www.austbar.net.au˃ to direct traffic to its website. Apart from these things, the ABA also uses an email address linked to its austbar persona in the form of ˂@austbar.asn.au˃ as an email contact point for its officers and its employees with whom members of the public and the profession wish to engage by electronic communications.

198    Second, the respondents’ AustBar website ˂www.austbar.com.au˃ provides chambers in a “virtual” world and does so under the mark “AustBar Chambers”, in circumstances where “AustBar” is recognised in a material and significant way as a form of reference to the Australian Bar Association or at least a recognised material and significant abbreviation for the ABA.

199    Third, the respondents also operate another website called “AustBar ADR” ˂www.austbaradr.com.au˃.

200    Fourth, the respondents use a Twitter page marked “AustBar” in conjunction with the name or mark “Australian Barrister” under the Twitter handle ˂@AustBar˃. By the use of this method of communication, the respondents promote the offering of services of virtual chambers under the mark “AustBar Chambers” or at the website ˂www.austbaradr.com.au˃.

201    Fifth, in connection with both of the websites operated by the respondents, they use the image of the scales of justice in conjunction with Australasian Barrister Chambers, AustBar Chambers and Australian Barrister.

202    Apart from these considerations, the layout and configuration of the website described at [132](2) to (13) has a structure about it which suggests that it has a quasi-official character to it. It invites persons to engage with the operator under the email ˂clerk@austbar.com.au˃.

203    I am satisfied that a not insignificant number of ordinary reasonable members of the public using the website ˂www.austbar.com.au˃ and ˂www.austbaradr.com.au˃ are likely to be misled because, by interrogating the site, they may be led to believe or may be caused to assume, that the site they are examining is offering or promoting services provided by the operator of the site connected or associated with the national association understood as the Australian Bar Association. There are two cohorts within the relevant members of the public who might be likely to be misled or deceived by the respondents. The first cohort consists of “consumers”, that is to say, members of the public looking to retain (and encouraged by the site operator to retain), directly or in association with a solicitor (but by reason of enquiries made directly to the site by the consumer) the services of an accredited, recognised, credentialed barrister exhibiting those characteristics by reason of acceptance and entry upon a site which is either the ABA site or a site associated and affiliated with the ABA or authorised by the ABA. The second cohort consists of lawyers or related professionals who may not be necessarily sophisticated users of legal services in the context of litigation but who might wish to seek out an authoritative place to obtain information about barristers, much in the same way that the public might seek out that information, although in the case of this cohort, the relevant lawyers and related professionals may well have some understanding of the legal landscape within the limits of their areas of practice or professional engagement. There is, in my view, a likelihood that such persons will be misled by the use, by the respondents, of AustBar, austbar and austbaradr.

204    There is, of course, no such affiliation or association between either of the applicants and any of the respondents and nor is there any authority or consent conferred by either applicant upon any of the respondents to engage in the conduct about which complaint is made.

205    The applicants, in this context, also place emphasis upon the search results referred to by Mr Christopher at AJC-1, Tab 13, arising out of a Google search of austbar. The Google search results show as the first item, the ABA website ˂www.austbar.asn.au˃ (bearing the name Australian Bar Association above the listing). The next three entries are entries for the respondents sites all connected to the dominant identifier austbar. The sites are ˂www.austbar.com.au˃, ˂/twitter.com/austbar˃ and ˂www.austbaradr.com.au˃ with each entry bearing the respective headings Australasian Barrister Chambers, Australian Barrister (@AustBar)/Twitter; and AustBar ADR. Although I accept that a person interrogating a website would have regard to the title shown on a search listing, I am satisfied that the use of austbar in the further listings below the ABA listing would be likely to convey the impression that those other listings are in some way connected, associated or affiliated with the ABA because of the common presence of austbar and also the use of AustBar.

206    As already mentioned, I am satisfied that the conduct of adopting the descriptor austbar and AustBar and Aust Bar by the respondents is conduct very much along the lines of the attempt to take advantage of the reputation of the Australian Bar Association by registering the business names Australian Bar Association and Australian Barristers Association.

207    Subject to the question of the disclaimer, I am satisfied that Chambers and later Austbar PL engaged in contraventions of s 18(1) of the ACL. Sections 29(1)(g) and 29(1)(h) are in these terms:

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

…

(g)    make a false or misleading representation, relevantly, that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

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

208    Relevantly, the applicants contend that the conduct of the respondents amounts to a representation that the services of the respondents have the sponsorship, approval or affiliation of the ABA and that such a representation is false and misleading because it is not true. I accept that a representation that one person stands behind another person’s activity is sufficient to constitute the notion that one is sponsored by the other. I also accept that the notion of approval refers to a representation that a person, a good or a service is to be considered worthy of being regarded favourably.

209    The applicants contend that the conduct on the part of the respondents of adopting the website description ˂www.austbar.com.au˃, ˂www.austbaradr.com.au˃, the Twitter handle ˂@AustBar˃ and use of the names “AustBar Chambers” and “AustBarADR” conveys a representation to persons within the cohorts visiting the two websites and the Twitter account that the person standing behind the website is the ABA or that the persons operating the website or the activities in which they engage are considered by the ABA as worthy of being regarded favourably. They assert that the conduct contains within it a representation that the respondents have an affiliation with the ABA. The respondents say that this conclusion that the conduct contains within it a representation in the terms described is reinforced by the notion that Chambers, by adopting the “Austbar” and “AustBarADR” and “Australian Barrister” to describe and promote its activities, appropriated the names and reputation of the ABA. They say that ordinary persons would naturally conclude or assume, as a result of such appropriation, that the services provided by means of the websites are either sponsored by, or approved by, or affiliated with, the ABA. They also say that these conclusions are compounded by recognising that Chambers, through the conduct of Mr Minus, sought to appropriate the reputation associated with the name Australian Bar Association and sought to adopt and preserve a colourably similar name, Australian Barrister Association.

210    In answer to these contentions, Mr Minus asserts the matters previously relied upon to the effect that AustBar, in its various configurations, however it might be used, is not solely associated with the ABA and that, in any event, the registrant of the domain names has complied with the eligibility criteria. He asserts the things he previously asserted in relation to the use of the scales of justice.

211    I am satisfied that the conduct of Chambers (and the respondents) of adopting the two domain names incorporating austbar and the Twitter account engaging AustBar as it does related to Australian Barrister conveys a representation that each of those websites has an affiliation with the ABA or the approval of the ABA in the sense that it suggests that the services have the sponsorship and approval of the ABA and the operator of the site has the sponsorship, or approval of the ABA or an affiliation with the ABA. That representation is strengthened when one examines the structure, configuration and layout of the website which, I accept, conveys the “look and feel” of a quasi-official site as though the operator were an authoritative source of national “institutional” information about barristers which one might expect to find on a site operated by a nationally organised association of barristers and bar associations which has been in existence for a long period of time performing such a role.

212    Again, subject to the question of the disclaimer, I am satisfied that the conduct otherwise engages a contravention of s 29(1)(g) and (h) of the ACL.

213    There are five other matters to be addressed.

214    The first concerns the notion that the ABA, whether in the form of the ABAU or ABA Ltd, has no members and thus has no beneficiaries for which relevant assets might be held by relevant persons. The second is that the holding and purported ownership of the trade marks by individuals as trustee for the members of the ABAU is incompetent as a matter of law and that the sequence of assignments are invalid. The third is that the disclaimer appearing on the website as discussed at [132](5) and [136] of these reasons answers entirely any suggestion that there could be any conduct said to involve use of a mark or sign deceptively similar to either of the registered trade marks or conduct in contravention of ss 18(1), 29(1)(g) and 29(1)(h) of the ACL. The fourth is the position in relation to Austbar PL. The fifth is the claim of accessorial liability made against Mr Minus.

215    As to the first issue, the ABA was formed in 1963. It has therefore been in existence for 54 years. Its members consist of the various State and Territory Bar associations and also individual barristers as earlier described in these reasons. It may be that there are very few barristers who have filled out an application to become a member of the ABAU, over time. The lack of any such application is entirely explained because over a course of conduct over decades, Australian barristers who are and have been members of the State and Territory Bar associations have come to understand that their membership of their State and Territory Bar associations carries with it, with their approval, membership of the ABA. Barristers in practices, year in and year out, see the ABA appear in various forums for educational purposes and the many other purposes described by Mr Selth directed to the promotion of the interests of practising barristers. They see representatives of the Australian Bar Association appear in courts where members of the judiciary are welcomed in ceremonies and farewelled upon retirement. They know and understand that office-bearers from time to time (the President of the ABA or the President’s nominee) appear on behalf of the Australian Bar and the Australian Bar Association. The AB Council is constituted by, in the main, senior members of the Australian Bar. It has been ever thus. Are all of these senior members of the Australian Bar to be regarded as blind to the revelation that they have never been members of the Association over which they assert governance and management, notwithstanding that the ABAU Constitution contemplates that they will be members? Mr Selth says that the ABA understands the position to be that it has 6,000 members throughout Australia.

216    There is no substance in the notion that the ABAU has never had any individual members, as a matter of law, and nor is there any substance in the notion that ABA Ltd which, as a company limited by guarantee, has taken over the role of the ABAU, has no individual members.

217    As to the second issue, the assets of an unincorporated association might be held by each and every one of the members of that association. That, of course, is a very inefficient way for an unincorporated body to hold the legal title to assets, especially land (recognising that members may from time to time cease to be members and new members will be admitted). Typically, land is held by one or two members as registered proprietors for and on behalf of the members from time to time.

218    Two incentives for incorporating an unincorporated body as a company limited by guarantee are to achieve limited liability for the members and establish a legal entity capable of holding title to assets.

219    In this case, two classes of rights the ABA asserts were the right to apply for TM 902 and TM 252. The ABA, for the purposes of the TM Act, is the “owner” of each trade mark as first user. It is entitled to apply for registration of each mark under the TM Act. The ABA as user and owner needed to consider the mechanism by which it could apply for registration of its two marks. Obviously enough, the members of the AB Council at the date of application considered that the two then unregistered but long used trade marks were marks of the ABA, that is to say, marks used for and on behalf of the members of the ABAU as a badge of origin of the services of the ABA enterprise as embodied in its Constitution. The relevant members of the AB Council applied, under the TM Act, for registration of each trade mark.

220    The members described at [59] of these reasons constituting the AB Council applied on 21 May 2013 for registration of the device mark (TM 252). The same 12 members applied for registration of the word mark TM 902 on 25 October 2013. Each of the individuals, in each respective application, recited that they applied in a particular capacity, that is, “as trustee for the Australian Bar Association”, an unincorporated body comprised of its members from time to time. Because Mr Colbran QC, Mr Traves QC and Mr Walker had retired from membership of the AB Council, they assigned their interest in the applications to the incoming Council members, Mr Alstergren SC and Mr Davis SC who each took that interest as trustees for the ABA under the Deed of Assignment of 17 April 2014. Thereafter, on 10 September 2014, the members of the AB Council recited at [62] of these reasons assigned their interest in each trade mark (and also particular trade mark applications) to Mr Selth who took and held title to each trade mark (and applications) for and on behalf of the members of the ABA. As described at [67] of these reasons, Mr Selth entered into a Deed of Assignment of 27 July 2015 assigning all rights and interests held by him to ABA Ltd. Thus, from September 2014 until 27 July 2015, Mr Selth was recorded as the registered owner of each trade mark. From 27 July 2015, ABA Ltd has been recorded as the registered owner of TM 902 and TM 252. Those registrations are prima facie evidence of ownership: ss 210 and 211, TM Act.

221    No cross-claim for revocation has been filed by the respondents in these proceedings. Nevertheless, a defect in title impugns the standing of the applicants to obtain relief for contended infringement of the trade marks. Mr Minus contends for a defect in title on the footing that once all 12 AB Council members applied for registration of each trade mark, they all jointly owned and held title, in an indivisible way, of each application with the result that the only way they could pass title to the new AB Council members was for all of them to assign the entirety of their interest to the new cohort of AB Council members. Thus, on that view, it would have been necessary for all 12 applicants (the three retiring and nine remaining Council members) to assign their interest in each application to all 11 Council members (the continuing nine members plus the two new ones). Absent that, title could not pass, it is said, and title could not later be passed to Mr Selth and then to ABA Ltd.

222    I accept that as a matter of construction of the TM Act, a joint owner may assign his or her “share” or “interest” in the trade mark to another with or without an assignment by any other joint owner. Mr Colbran QC, Mr Traves SC and Mr Walker were joint owners (with the other nine AB Council members) and joint applicants as trustees for the ABA for each trade mark. When they assigned their interest in each trade mark, the incoming assignees took, between them, that aliquot share of the three assignors impressed with the same trust upon which that interest had been held by them. The interest of each of the remaining nine applicant owners as trustees remained entirely as it was.

223    There is no defect in title in the sequence of transfers as discussed.

224    The next matter is the question of the effect of the disclaimer.

225    Mr Minus says that as a result of Mr Colbran’s letter of 23 May 2013, he elected to place a disclaimer on the front page of the AustBar website operated by the entity Chambers, in the terms recited in his letter to Mr Colbran of 30 May 2013. In that letter, he said he would place the following statement on the website:

This website and the information it contains does not have the support, affiliation, approval or sponsorship of the Australian Bar Association.

226    However, the example of the disclaimer at DMM-1, Tab 18 is not quite in those terms. It actually says this:

AustBar Chambers is an independent chambers established by barristers for barristers and is not associated with, nor supported by any Australian Bar association.

227    This text is located as the third paragraph after two introductory paragraphs about “AustBar Chambers”. The three paragraphs are contained under the heading “AustBar Chambers”. The text constituting the disclaimer is not introduced by any independent heading such as: “NOTICE & DISCLAIMER”.

228    I do not accept that the content of the disclaimer would necessarily be readily apparent to a person or visitor interrogating the site. It is undifferentiated text with no heading drawing the visitor to a warning that this site is not the website of “the Australian Bar Association”. Moreover, the concluding phrase of the text is not a reference to “the Australian Bar Association” but a reference to “any Australian Bar association”. No doubt, a reference to “any Australian Bar association” includes the ABA but the text does not expressly disassociate the site from a site of the Australian Bar Association. The reader, as to this text, might easily pass over the text of the third paragraph located as it is under paragraphs describing “AustBar Chambers”.

229    However, that is not the end of the matter. I accept that the example at DMM-1, Tab 18 also shows, adjacent (and on the right hand side) to the three paragraphs of text which conclude with the paragraph quoted at [226] of these reasons, three further paragraphs of text in the same terms as those set out in the example at [136] of these reasons. Those three paragraphs begin with the heading: “AustBar Chambers is not the ABA”. Those paragraphs go on to say that barristers may have read in the press that the Australian Bar Association (ABA) has objected to the establishment of AustBar Chambers and threatened legal action. It also says that AustBar Chambers has been established to do the things the ABA does not do. It then identifies things that the operator of the site does in the provision of its services.

230    It is not clear when this version was added to the website. The version at [136] is different. It is a version which was present on the site as at 20 April 2015. In the version at [136], the disclaimer has been moved from the third paragraph to the first paragraph and the introductory heading is, “About Australasian Barrister Chambers”, rather than “AustBar Chambers”.

231    The version on the site on and from 8 October 2015 is the version at [132](5) of these reasons which for the sake of convenience I repeat here:

NOTICE & DISCLAIMER AUSTBAR CHAMBERS is the registered business name of AUSTBAR Pty Ltd, a private company established by barristers providing services to barristers. AUSTBAR Chambers is not associated with, nor approved, endorsed or sponsored by any Australian Bar association. See AUSTBAR and ABA.

232    The format and size of the text is faithfully reproduced at both [132](5) and [231] of these reasons.

233    By this time (8 October 2015), the disclaimer appeared in quite small print. It is located well down webpage 1 following upon the sequence of headings and text extolling aspects of the services offered and opportunities available as described at [132](1) to (4).

234    As to the version of the disclaimer at AJC-1, Tab 17, which is the version at [136] which Mr Minus put to Mr Selth in cross-examination (having regard to the reference by Mr Minus to the disclaimer being “at the very top of the page” and the reference to “about Australasian Barrister Chambers”), Mr Selth accepted that, personally, he would not consider the respondents’ website to be one “sponsored or owned or published by the Australian Bar Association”, having regard to those entries on the website.

235    The version of the disclaimer and its location on the website as it appeared on and after 8 October 2015 containing the statement quoted at [231] was not put to Mr Selth.

236    Mr Selth, of course, was speaking as a person intimately familiar with the activities of the ABA and the contended conduct of Mr Minus and the respondents.

237    Nevertheless, the critical matter in relation to the efficacy of the disclaimer is whether the respondents have discharged the onus of demonstrating that the disclaimer is likely to be seen and understood by all those reasonable fair-minded members of the various cohorts engaging with the website (leaving aside extreme and fanciful reactions and isolated exceptions), who would otherwise be misled. In order to be effective, the disclaimer must be such as to leave the fair-minded reasonable member of the class in no doubt about the source or origin of the services provided under and by reference to the website; in no doubt about whether the ABA is associated or affiliated with the site operator or the services offered by the operator; and in no doubt about whether the ABA is in some way, shape or form standing behind the website operated by the respondents.

238    The disclaimer in the form of the text and position on the webpage in the way described at [132] of these reasons does not achieve that result.

239    There are a number of important considerations.

240    First, by the time a person engages with the website, they have already been taken there by a sign, the use of which involves an infringement of TM 902 and taken there by reason of conduct in contravention of s 18(1), s 29(1)(g) and s 29(1)(h) of the ACL. The user is already drawn to the site. He or she is already attracted and engaged by the conduct. At that point, the disclaimer needs to operate in such a causative way that it cures an existing problem (if able to do so at all which is likely to be difficult and rare), by making it absolutely clear to the reader who is looking at the site electronically for particular information that this site is not a website operated by the ABA and nor are the services provided by the website the services of the ABA or services associated with or approved by the ABA. One imagines that the disclaimer would need to capture the eyes of the viewer with significant text with appropriate emphasis. Small text located two-thirds of the way down the page is never likely to be sufficient and in the facts of this case, it is not sufficient. It is a classic example of the message being “in the small print”.

241    Second, in the facts of this case, the truth of the matter is that the unlawful conduct was complete once the trade mark infringement had occurred and once the misleading conduct had taken the person to the site. At that point, the disclaimer had to be powerful enough to undo the harm.

242    Third, the cohorts engaging with the respondents’ website include consumers, that is to say, citizens across many walks of life whether sophisticated or unsophisticated, seeking out information directly about barristers who might be engaged to provide legal advice to that citizen, his or her business or a company in circumstances where those participants might well be looking to access the views and information of a national body about barristers and the nature of the legal work undertaken by members of such a body. It is reasonable to assume that many such persons would be likely to engage electronically with such a body by reference to the cues AustBar or Aust Bar or austbar, as the traffic flows to the ABA site suggest.

243    I am willing to accept that the respondents’ website contained a statement in the terms identified at [132](5) as at 20 April 2015. From 8 October 2015, the website contained the disclaimer in the form and located in the way described at [132](1) to (5). The respondents have not discharged the onus of demonstrating the precise state of the website throughout the period. I am not satisfied that the website in the form operative on and from 8 October 2015 is sufficient. I am not satisfied as to the state of the website in the period prior to 8 October 2015 other than its state on the particular day, namely, 20 April 2015.

244    Accordingly, I do not accept that the disclaimer operates to extinguish the legal consequences of the conduct of the respondents.

245    The next question concerns conduct on the part of Austbar PL. As to that entity, Mr Minus caused the company to be incorporated in a way which adopts “Austbar” within the very body of its name. According to the letter from Mr Minus dated 12 October 2015 (see [128] of these reasons), Mr Minus caused Aplus to cause Austbar Pty Ltd to be incorporated on or about 9 September 2015 and thereafter Austbar embarked upon the process of “acquiring the business operation of the ‘AUSTBAR website’ and the domain name, austbar.com.au”: [128] of these reasons. Austbar PL is thus standing in the shoes of Australasian Barrister Chambers in all classes of the conduct in issue in these proceedings. I accept that Austbar PL has not engaged in any conduct in relation to registering or seeking to preserve the business name Australian Bar Association.

246    As to all other matters, Austbar PL engages in the conduct formerly engaged in by Australasian Barrister Chambers.

247    As to the question of the liability of Mr Minus, it will be recalled that Mr Minus was the sole Director of Chambers until 1 October 2014. After that date and until the appointment of a liquidator to that company, the Director had been Ms Armine Minasian. Mr Minus had been and remained the Secretary of the company until the appointment of the liquidator. As to these matters, see [4] to [8] of these reasons and the reasons generally. Mr Minus was asked some questions about the extent of his role in decision-making on behalf of some of the entities. This exchange occurred at T, p 176, lns 1-46; T, p 177, lns 1-14.

Mr Macaw:    Now all of these companies [which having regard to T, p 174 and p 175 is a reference to Chambers, DRA and Austbar PL] you used interchangeably effectively as your vehicles did you not?

Mr Minus:    Each of the companies were registered at different times and used for different purposes.

Mr Macaw:    They were all effectively your alter ego, though, weren’t they?

Mr Minus:    No they weren’t.

Mr Macaw:    Well, who controlled them?

Mr Minus:    [DRA] was originally established by myself and two other barristers … in 1999 … for the purposes of what that website now does … [and] sometime between 1999 and 2010 I bought out those other parties.

Mr Macaw:    Well, just pausing there. And thereafter effectively controlled [DRA]?

Mr Minus:    I became the sole director, yes.

Mr Macaw:    Yes.

Mr Minus:    Australasian Barrister Chambers was established for the purposes of setting up an information – a website for barristers that would make their services – promote their services nationally and into Asia.

Mr Macaw:    Yes. And who controlled that until it went into liquidation?

Mr Minus:    For a time, I was a director. For a time, my wife was a director.

Mr Macaw:    You effectively controlled the operations of the company, didn’t you?

Mr Minus:    Well, control of a company is through the directors. I was certainly influential in determining what the company would do. But I was not the company.

Mr Macaw:    What did your wife do?

Mr Minus:    My wife was very insistent about the company making some money.

Mr Macaw:    Yes. But so far as the day-to-day operations of the company were concerned, you were the one that controlled them, were you not?

Mr Minus:    I was the one who advised and guided her about what the company was doing in line with her expectations about what it would achieve and the time that was being spent by various people in pursuit of those objective[s].

Mr Macaw:    For all practical purposes, Mr Minus, you controlled the operations of that company, didn’t you?

Mr Minus:    I directed – I was a director of some of them and I was not a director of others. And I was a principal strategist in how they should operate. But some decisions were not always made by me.

Mr Macaw:    Such as what?

Mr Minus:    In relation to Australasian Barrister Chambers, some things that I wished to do in terms of investing money and developing things didn’t happen. And that was because of – my wife had a role in it and she had a view in it. And she felt that a lot of time was being wasted on it, particularly as the Bar was opposing it.

Mr Macaw:    So far as the activities are concerned of which complaint is made in these proceedings, you were the one who effectively controlled the operation of the companies, were you not?

Mr Minus:    I can keep answering it the same way. The control of the company was by the directors. I was, for a time, a director of some of those companies and for a time I was joined by other people. And for some times, I wasn’t a director at all. I was instrumental in guiding what those companies should do. It was certainly my view that offering a service to barristers was a worthwhile opportunity. However, that required not only guidance but also financial commitment. And at the times that my wife was a director and I was not, there were decisions taken by her which I didn’t agree with. But they were decisions of someone else at the time.

[emphasis added]

248    As to Austbar PL, Mr Minus was asked these questions at T, p 177, lns 16-32:

Mr Macaw:    Now, so far as [Austbar PL] is concerned, you effectively controlled that organisation, didn’t you?

Mr Minus:    Austbar PL is owned by a family trust.

Mr Macaw:    Yes.

Mr Minus:    And the corporate trustee of that family trust is a company called Aplus which is jointly owned by myself and my wife.

Mr Macaw:    Yes. Again, it would be true, wouldn’t it, to say that for all practical purposes in connection with the activities of which complaint is made in these proceedings, you dictated what [Austbar PL] did?

Mr Minus:    I guided what it did and I recommended what it did but it is controlled by a corporate trustee. And that corporate trustee has two directors. And my wife, as I say, about some of the things that get done, mostly that involve money. And she has a right to have that say. The vehicle is actually the superannuation fund and it’s her money in that fund.

Mr Macaw:    Yes. You’re one of the two directors, however?

Mr Minus:    Yes.

[emphasis added]

249    Mr Minus describes himself as a person who was certainly influential in determining what the entity, Chambers, did. He guided and advised his wife about what the company was doing. He says he was a principal strategist in how the companies should operate even though he was a director of some of them and not a director of others. He accepts that he was influential in guiding what the companies did. There is no doubt that Mr Minus was the guiding mind and decision-maker in the election to register, renew and ultimately abandon the registration of the business name Australian Bar Association. He was the guiding mind and decision-maker in the registration of Australian Barristers Association. He was the decision-maker in relation to securing the austbar domain name and he was the guiding mind and decision-maker in electing to register BarADR two days after the launch of the NSWBA BarADR service by the Hon Chief Justice Spigelman AC. I am satisfied that so far as Australasian Barrister Chambers Pty Ltd, DRA and Austbar PL is concerned, Mr Minus was knowingly concerned in all aspects of the conduct the subject of these proceedings. Mr Minus is a lawyer and these activities are core business in the skill set of services that Mr Minus is seeking to promote. It is very difficult to accept that anyone other than Mr Minus played a meaningful role in the decision-making about the matters the subject of these proceedings. No doubt, Ms Minasian was rightly concerned about the controversy with the ABA and the NSWBA and rightly concerned about the financial implications of the conduct of Mr Minus in connection with the entities in which he was involved. However, the day-to-day decision-making about the structure, content, role and operations of the entities and Mr Minus’s plans and objectives for him and for them, was no doubt a matter dominated by Mr Minus’s thinking. I am satisfied that Mr Minus is a joint tortfeasor in the trade mark infringements as I have described and that Mr Minus, as the sole Director of Austbar PL from the outset, is a joint participant with that company in its conduct and is thus a joint tortfeasor with it.

250    I also accept that Mr Minus, by reason of the matters described at [247], is also to be regarded as a person “knowingly concerned” in the conduct of Chambers and Austbar PL in the contraventions of ss 18(1), 29(1)(g) and 29(1)(h), for the purposes of s 236 of the ACL.

251    As to DRA, it is the registrant of the respondents’ Austbar website and also the Austbar ADR website. It seems that DRA became the registrant because DRA chose to pay the invoice associated with securing registration of each domain name, that is to say, Mr Minus caused DRA to become the registrant of each domain name. As I set out at [6], Mr Minus has been a Director of DRA since 9 December 1999 and its sole Director since 19 July 2006. My remarks in relation to the role of Mr Minus, equally apply in relation to DRA and its activities.

252    As to the relief, I propose to make the declarations and injunctions and related orders sought by the applicants conditioned by the findings and observations in these reasons. I accept that neither Mr Minus nor any of the entities associated with him have exhibited any conduct since 1 November 2015 which suggests that there is a present threat to use the name Australian Bar Association. Mr Minus has not provided any undertaking not to use that name. That, no doubt, follows because he says that he has no intention to use it (and, of course, has asserted that he never had any intention to use it). I have made findings about that conduct. As to the future, I would ordinarily regard it as a proper exercise of the discretion to grant an injunction in respect of that name in circumstances where the evidence shows that Mr Minus had no standing to apply for the business name when he did and preserved in the retention of that business name for quite a long period of time (from 14 June 2013 to 1 November 2015). Should Mr Minus proffer an unconditional undertaking to the Court, unreservedly, not to use that business name, I would not exercise the discretion to make an injunctive order. Having regard to the conduct, I will exercise the discretion to make an injunctive order in the absence of such an undertaking.

253    I will direct the applicants to submit proposed orders to my Associate within 14 days.

254    I now turn to the facts and circumstances relating to the proceedings commenced by the New South Wales Bar Association.

THE NEW SOUTH WALES BAR ASSOCIATION PROCEEDINGS

255    As already mentioned, Mr Selth has been the Executive Director of the NSWBA since 10 November 1997.

256    He swore an affidavit in support of the NSWBA in these proceedings on 22 April 2015. In that affidavit, he says these things.

257    On 22 October 1936, the NSWBA was incorporated and the first meeting of the NSWBA Bar Council (the “Council”) took place. The NSWBA is now a public company limited by guarantee. Its members consist of persons whose names are entered on the Register kept by it as required by its Constitution and consist primarily of barristers holding a current Practising Certificate as a barrister issued under the New South Wales Legal Profession Act 2004 (NSW).

258    The governing body of the NSWBA is a Council consisting of 21 elected members.

259    The objects of the NSWBA in summary are these:

(a)    To promote the public good in relation to legal matters viewed in the broadest context;

(b)    Promote collegiality and mutual assistance amongst its members;

(c)    Represent the interests of its members to government, the media and the community;

(d)    Promote fair and honourable practice among barristers;

(e)    Maintain and impose standards of professional conduct and participate in the discipline of members when required.

260    In furtherance of these objects, the NSWBA undertakes a series of activities. Put simply, Mr Selth says they include these things. The NSWBA publishes media releases, submissions and other publications. It provides services to members including access to and use of the Bar Library; use of an independent professional counselling service; assistance with fee recovery of unpaid fees from solicitors; for members with approved professional indemnity insurance, it facilitates the benefit of The New South Wales Bar Association’s Professional Standards Scheme which has the effect of limiting liability for damages to $1.5 million. It provides access to and use of the “Barristers’ Classifieds” which is an online directory facilitating the purchase and sale of goods typically used by barristers. It provides services to the public, the New South Wales Parliament and various government agencies including access to and use of the “Find a Barrister” database; making submissions and distributing discussion papers and other publications on draft legislation and other issues relevant to the administration of justice; and the provision of the Duty Barrister Scheme and the Legal Assistance Referral Service.

261    Mr Selth says that the NSWBA is the owner of the domain name ˂www.nswbar.asn.au˃ (the “NSWBA website”) which is the access point for online service communications of the NSWBA. The NSWBA website “went live in around 1998”.

262    The NSWBA is funded through membership fees paid by practising barristers. The NSWBA also generates revenue, from time to time, through the conduct of conferences. Membership of the NSWBA by barristers is voluntary although in practice in the order of 99% of practising barristers in New South Wales are members of the NSWBA. The NSWBA maintains an electronic record of the details of all of its members. For approximately the last eight years, the NSWBA has distributed a daily electronic newsletter called “In Brief” to all members. Prior to then, the publication was sent by facsimile.

263    Mr Selth has caused a search of the membership records to be conducted. He says that Mr Minus was a member of the NSWBA for the period 9 April 1992 to 19 September 2013 (21 years and eight months).

264    Mr Selth says that in 1999, the NSWBA commenced promoting a service to the public and the legal profession that was initially known as the Barristers Dispute Resolution Service. By that service, the NSWBA provided, amongst other things, a directory of barristers being members of the NSWBA trained and accredited in the alternative dispute resolution processes of mediation, arbitration and expert determination. Mr Selth calls this the “DR service”. He says that the DR service was launched by Mr Ian Barker QC in 1999. As part of the DR service the NSWBA published and made available a brochure entitled Resolving Disputes – The Barristers’ Resolution Service. It also made available a kit entitled The NSW Bar Association Barristers’ Resolution Service which included a presentation folder with ADR/dispute resolution agreements. Mr Selth says that an email address ˂adr@nswbar.asn.au˃ was used to administer this service. The NSWBA designated an “ADR manager” for the purpose of receiving and acting on enquiries in relation to the DR service.

265    As part of the DR service, the NSWBA has, since 2000, published on the NSWBA website lists of barristers who are members of the NSWBA and approved by it as mediators and administrators.

266    Mr Selth says that from 2008, the NSWBA commenced to update and redesign the DR service. In January 2008, the National Mediators Accreditation System (“NMAS”) was implemented by the Mediator Standards Board. In May 2008, the NSWBA became a Recognised Mediator Accreditation Body under the NMAS and commenced to accredit mediators under the NMAS standards. Accreditations have taken place annually since 2008 and barristers are required to apply for re-accreditation every two years. Applicants are required to complete a detailed application form and to meet the standards required by the NMAS and some additional requirements imposed by the NSWBA. The applications are considered by experienced mediator members of the NSWBA’s ADR Committee and recommendations are made to the Council to approve those applicants who meet the requirements.

267    Mr Selth says that the NSWBA’s current system of approving barristers as arbitrators has been in place since 2010. Applicants are required to have a minimum of seven years’ experience in the field in which they hold themselves out as arbitrators. They are required to attend three, two hour workshops and to write a “mock award”. The awards and the applications are considered by members of the NSWBA ADR Committee with arbitration experience. Recommendations for approvals are made to the Council.

268    As part of the redesign of the DR service in or around 2008, the NSWBA commenced negotiations with Counsel’s Chambers Ltd (“CCL”), a company responsible for the management and operation of certain barristers chambers in New South Wales including Selborne and Wentworth Chambers, in relation to the recently refurbished National Disputes Centre (“NDC”) operated by CCL on Level 1 of Selborne Chambers, which provides, amongst other things, facilities to solicitors, barristers and their clients for the conduct of mediations and arbitrations. The NSWBA subsequently entered into an agreement with CCL which included a term that the NDC would operate under the name The New South Wales Bar Dispute Resolution Centre (the “Centre”). The Centre was launched by Attorney-General, the Hon Robert McClelland on 10 December 2008. Its current facilities include an Electronic Arbitration Room, a Mediation Room, six smaller conference rooms, party rooms, breakout rooms, training facilities and offices, a boardroom, telecommunications facilities, media and data facilities and kitchen and catering facilities.

269    The Centre is promoted online through the NSWBA website ˂www.nswbar.asn.au/briefing-barristers/dispute-resolution/centre˃ and promoted from time to time in the NSWBA’s daily electronic news and current events bulletin and in regular broadcast emails to NSWBA members who practice in ADR.

270    On 25 November 2010, the NSWBA announced that it would rename and re-launch its Barristers’ Dispute Resolution Service (the “announcement”). The NSWBA published the announcement in the NSWBA’s electronic news and current affairs bulletin, In Brief, which is emailed generally to all barrister members of the NSWBA. The announcement says that as part of the re-launch, the ADR Committee has been busy updating pro-forma agreements and particular barristers have been approved or accredited as expert determiners, mediators and arbitrators. It says that the re-launched service will have a dedicated section of the website and will use the name to promote barristers practising ADR, to solicitors in the wider community. The announcement says that the ADR Committee is looking for “a short, catchy name that encapsulates what the service is about”. It says that the name will be used to provide a portal for the provision of the ADR services by the NSWBA. Addressees were invited to submit entries, by 1 December 2010, for a proposed new name.

271    On 20 December 2010, the NSWBA made a further announcement regarding the re-launch of its Barristers’ Dispute Resolution Service (the “re-launched DR service”) and announced that the service would be re-launched in early 2011 under the name BarADR. The NSWBA also published the announcement in the In Brief bulletin emailed, generally, to all barrister members of the NSWBA.

272    In early March 2011, the NSWBA circulated invitations to barrister members to attend the official launch of the BarADR service on 16 March 2011 to be launched by the Hon Chief Justice Spigelman AC. The invitation was also sent to solicitors and in-house counsel. On 16 March 2011, the official launch of BarADR was held in the NSWBA Common Room by the Chief Justice. Approximately 80 people attended the launch. Mr Derek Minus also attended the launch. At the launch, a BarADR kit was provided to attendees in a folder displaying the mark BarADR. The folder contained information about the BarADR service, the scope of the offering, sample agreements for mediation, arbitration and expert determination and lists of accredited mediators and approved arbitrators and expert determiners. The BarADR kit was made available from that date at the NSW Bar Dispute Resolution Centre through the NSWBA and online at the ADR page at ˂www.nswbar.asn.au˃. The BarADR kit is Ex 5. The BarADR kit has these contents: What BarADR Offers; Mediation Agreement; Expert Determination Agreement; Arbitration Agreement; List of Accredited Mediators; List of Approved Expert Determiners; and List of Approved Arbitrators. It recites ˂www.nswbar.asn.au/BarADR˃. The front page has BarADR in large letters. It introduces the content of the BarADR kit in this way:

Barristers, in addition to their legal and court expertise, play an important role in ADR. They are skilled in representing clients in all types of ADR processes and negotiation, and some act as mediators, expert determiners, arbitrators, evaluators and conciliators. They have the expertise to assist you in resolving a wide range of problems from personal conflicts to complex business disputes.

BarADR is an initiative of the New South Wales Bar Association to provide solicitors, in-house counsel and members of the public with access to barristers trained in ADR and accredited or approved by the Bar Association in mediation, expert determination and arbitration, the most frequently used ADR processes.

BarADR provides quick and easy access to lists of these specially trained barristers with the expertise to assist with a wide range of problems, from personal conflicts to business disputes. In the BarADR kit in this folder, you will find the names and contact details of these barristers, together with examples of mediation, expert determination and arbitration agreements, which can be easily adapted to suit the needs of parties and the circumstances of individual disputes.

The BarADR kit is also online at nswbar.asn.au/BarADR

273    On 17 March 2011, the day after the launch of the BarADR kit, the NSWBA published an article about the BarADR launch in the In Brief publication. On 12 April 2011, the NSWBA registered the business name BARADR. On 21 June 2013, the NSWBA registered the following domain names: ˂www.baradr.com˃, ˂www.baradr.net˃ and ˂www.baradr.org˃.

274    Mr Selth says that in the period immediately subsequent to the launch of the BarADR service, the NSWBA promoted the BarADR service online through the NSWBA website. After the launch by Chief Justice Spigelman AC of BarADR on 16 March 2011, the NSWBA home page, under its coat of arms and under the heading BarADR, said this:

BarADR is an initiative of the New South Wales Bar Association to provide solicitors, in-house counsel and members of the public with access to barristers trained and accredited in the alternative dispute resolution (ADR) processes of mediation, arbitration and expert determination.

In the right hand column you will find the names and contact details of barristers accredited or approved by the Bar Association to provide services as mediators, arbitrators and expert determiners.

BarADR Kits are available in hard copy from the New South Wales Bar Association reception. However the sample agreements can be found in PDF or Word format below.

We wish you all the best in your endeavours to resolve your dispute.

FOR THE PUBLIC

Information about different forms of ADR to help you identify which is most suitable for your dispute.

FOR BARRISTERS

Accreditation & approval

Information for NSW barristers wishing to become accredited/approved arbitrators, mediators and expert determiners

NSW Bar Dispute Resolution Centre

Comfortable and modern facilities are available to conduct mediations, arbitrations, references and conferences.

Sample Agreements

BarADR also encourages you to download your sample arbitration, mediation and expert determination agreements. They may be freely used and customised to suit the needs of the parties and the circumstances of the dispute.

275    The right hand side of the home page sets out links to a list of accredited mediators, arbitrators and expert determiners and also other “useful links”.

276    Mr Selth says that since at least 16 March 2011, as part of the BarADR service, NSWBA has continually published on the NSWBA website, lists of accredited or approved mediators, arbitrators and expert determiners; information for the public and lawyers about the different forms of mediation and dispute resolution, accreditation and approval; BarADR kits, sample agreements, reports, conference papers and links to relevant legislation. The kits containing this material have been published in hard copy. Mr Selth annexes to his affidavit at PS-3, Tab 15, examples of those online distributions. Mr Selth says that the NSWBA’s BarADR service is also referred to in other flyers and promotional material published by the NSWBA including in relation to educational seminars such as the seminar on “Writing Arbitral Awards” held on 3 August 2011.

277    On 23 June 2013, the NSWBA lodged an application for registration of the trade mark BARADR in Classes 9, 16, 41, 42 and 45. The trade mark was registered on 23 January 2014 with effect from 23 June 2013. The relevant aspects of the classes of goods and services for which the trade mark is registered, relied upon by the NSWBA are these:

•    Class 9:     Electronic publications including those sole or distributed online;

•    Class 16: Directories;

•    Class 41: Electronic publications;

•    Class 42: Accreditation services, on-line indexes; and

•    Class 45: Legal mediation services.

278    The ownership and governance structures in relation to the entity Chambers and the relationship between Chambers and Mr Minus are set out at [4] and [5] of these reasons.

279    As mentioned, Mr Minus attended the BarADR launch function on 16 March 2011. On 18 March 2011, two days after the launch of BarADR by the NSWBA by the Hon Chief Justice Spigelman AC, Mr Minus registered the domain name ˂www.baradr.com.au˃ (the “respondents’ BarADR website”). Mr Selth says that he caused the solicitors for the NSWBA, Webb Henderson, to make a “domain creation enquiry” as to the date of registration of the respondents’ BarADR website. On 20 April 2015, Ms Chen of “.au Domain Administration Ltd” sent an email to Mr Bridges, a solicitor of Webb Henderson, confirming the creation of the respondents’ BarADR domain name on 18 March 2011. Mr Christopher says in his affidavit of 23 April 2015 that he caused a search to be made of ˂www.baradr.com.au˃ on 13 April 2015 which shows that the registrant of the domain name is Mr Minus. The “Eligibility name” is “Australian Dispute Resolvers”. The registered contact name and technical contact name is Mr Minus.

280    As to the status and content of the respondents’ BarADR website, Mr Christopher says in his affidavit sworn 23 April 2015 that his review of a sequence of screen captures of the respondents’ BarADR website reveals a number of things.

281    First, Mr Christopher reviewed a screen capture extracted on 23 June 2013 which shows “BarADR” in the top left hand corner although there is no content on the website.

282    Second, Mr Christopher reviewed a screen capture extracted on 1 November 2013 which again shows “BarADR Australia” in the top left hand corner and again there is no content on the website.

283    Third, Mr Christopher reviewed a screen capture extracted on 25 March 2014 which again shows “BarADR Australia” in the top left hand corner and again there is no content on the website.

284    Fourth, Mr Christopher reviewed a screen capture extracted on 25 September 2014 which shows, on this occasion, “AUSTBAR ADR” in the top left hand corner with the scales of justice image immediately to the left of the name. In this screen capture, the website is populated with information with a column under the heading “About AUSTBAR” and another column of information under the heading “About ADR”.

285    Fifth, Mr Christopher reviewed a screen capture extracted on 17 April 2015 which again shows the respondents’ BarADR website which again shows in the top left hand corner the words “AUSTBAR ADR” with the image of the scales of justice. The printouts in respect of the first five extracts show the domain name ˂www.baradr.com.au˃.

286    Mr Selth annexes to his affidavit a copy of a screen capture for the respondents’ BarADR website extracted at 22 April 2015 which also shows in the top left hand corner the words “AUSTBAR ADR” adjacent to the image of the scales of justice. On this occasion, the domain name shown on the printout is ˂www.austbaradr.com.au˃.

287    Mr Selth says that in or around June 2013 he became aware that Mr Minus was operating a website having the domain name ˂www.disputeresolution.com.au˃ which contained pages displaying the coat of arms of the NSWBA and above the coat of arms, a heading in these terms:

BarADR – NSW Barristers accredited as Mediators, Arbitrators and Expert Determiners

288    The website then sets out a list of barristers, organised by chambers and contact details, who have been accredited as dispute resolvers, mediators, arbitrators and expert determiners, which continues for six pages. The screen capture annexed to Mr Selth’s affidavit was extracted on 10 June 2013. Mr Selth says that the publication of the NSWBA coat of arms and the list of barristers relevantly accredited by the NSWBA, on the disputeresolution website, occurred without the consent or permission of the NSWBA. Mr Selth says that in or around June 2013, Mr Minus placed an advertisement in the Barristers’ Classifieds operated by the NSWBA, promoting the respondents’ BarADR website and the website ˂www.austbar.com.au˃ operated by the entity Chambers. In that entry, Mr Minus for Chambers said this:

Virtual Chambers – 67 Castlereagh Street

Sydney

…

Australasian Barrister Chambers is a virtual chambers being established to offer full support to the independent practitioner:

•    Shared use of facilities

•    Sydney CBD phone number provided

•    Computerised telephone answering

•    Instant message forwarding by email

•    Profile listing on chambers websites: 4 National barristers at ˂www.austbar.com.au˃ and for ADR practice at ˂www.baradr.com.au˃

…

Inclusive monthly fee: $500 (plus GST)

…

[emphasis added]

289    Mr Covell, the NSWBA’s then solicitor, sent a letter to Mr Minus dated 26 June 2013 in which Mr Covell took issue, for the NSWBA, with the use by Mr Minus of the NSWBA coat of arms and the use of the NSWBA’s list of accredited barristers practising in ADR. Mr Covell also took issue with the use by Mr Minus of the BarADR name and mark and the content of the respondents BarADR website.

290    In the list of NSWBA accredited barristers adopted on the disputeresolution website, Mr Minus placed his own name at the top of the list.

291    It will be recalled that on 20 December 2010, the NSWBA announced the new name for its re-launched ADR service as BarADR. On a website operated by Mr Minus under the name Dispute Resolvers under the website ˂www.disputeresolvers.com.au˃, Mr Minus published a notice bearing the heading:

NSW Bar Association establishes new

‘BarADR’ scheme

292    In the notice, Mr Minus said this:

The NSW Bar Association has announced that early in 2011 it will start promoting a new Barristers Dispute Resolution service under the name BarADR.

A number of Dispute Resolver members have already been accredited under the scheme.

For a full list of all NSW Barristers accredited as Mediators, Arbitrators and Expert Determiners, see here, NSW BarADR.

…

293    On 22 December 2010, Mr Minus sent an email under the address ˂admin@disputeresolvers.com.au˃ to Dr John Keogh under the “Category” “12 DRA, 11 Arbitrator” in which he said this:

I have uploaded your new pictures, changed the Property Dispute page and added a new BarADR category. See here: ˂www.disputeresolvers.com.au/category/baradr/˃

Send me your updates when you can.

Cheers,

Derek

294    Mr Minus sent an email dated 28 June 2012 under the subject heading “Virtual Chambers services for Barristers”, from ˂clerk@austbar.com.au˃ with reference to the “Conversation” “Virtual Chambers services for Barristers”. The email describes the virtual chambers in this way:

Virtual Chambers services have been established by barristers for barristers to provide the range of practice, workflow and communication services to support your practice in this new area, such as:

…

•    Profile listing on Australian barrister and BarADR website

…

295    The email attached a brochure headed “Virtual Chambers Services”. In that brochure, Mr Minus said this:

Virtual Chambers services have been established by barristers, for barristers, to provide a range of personal promotion and telecommunication services to support your practice. Now legal professionals can enjoy the benefits of technology to work smarter and free themselves from operating their practice in only one location.

We offer “virtual chambers” services to help you save time, save money and work smarter, from anywhere.

There are three key areas of service support that we provide to advance your ability to better communicate, promote and deliver your services.

1.    PROMOTE YOUR PRACTICE – NATIONALLY

Australian barrister website | BarADR | Social media

Promote your legal practice and dispute resolution skills both in Australia and into the growing Asian market for legal services.

Through the establishment of the AUSTbar website you will have the opportunity to communicate your services by practice area … Your resume and fee schedule in PDF format, will be available for solicitors to download or forward directly to your clients or corporate counsel.

A separate barADR website will promote the skills of barristers who are competent dispute resolution practitioners; mediators, arbitrators and expert determiners.

[emphasis added]

296    Page 3 sets out a summary of the virtual services offered on this austbar website. Relevant for present purposes are two entries in these terms:

•    Outline your experience in ADR and advertise your ability for appointment as a dispute resolver (mediator/arbitrator/expert determiner) on the specialist barADR website.

…

•    Personalised chambers email at the AustBar domain is available.

…

297    Mr Minus was asked a number of questions about these events and particularly his purpose in registering the domain name ˂www.baradr.com.au˃ only two days after the launch of the NSWBA BarADR service, supported by the distribution of hard copies and online copies of the NSWBA BarADR kits.

298    As mentioned earlier in these reasons, Mr Minus accepts that he is interested in promoting the desirability of “direct access” being available to barristers and promoting the benefits of alternative dispute resolution. Mr Minus also accepts that his websites incorporate an expectation that members of the public will have access to those sites and that the sites are designed to promote the message of direct access to barristers and, particularly, in respect of ADR work: T, p 152, lns 1-6, lns 38-44.

299    As to the BarADR sign, Mr Minus accepted that he was aware that the NSWBA had adopted, on 20 December 2010, the name BarADR for its dispute resolution service and that he knew of that matter before 22 December 2010: T, p 153, lns 5-9.

300    This exchange then occurred at T, p 153, lns 11-39:

Mr Macaw:    Yes. Because at least by 22 December you had done something to appropriate that name to yourself, had you not?

Mr Minus:    By 22 December I had adopted that name as a category for members of the [NSWBA] who were expert in ADR.

Mr Macaw:    Yes. Do you cavil at the suggestion that you appropriated that name to yourself?

Mr Minus:    If by that you infer that the [NSWBA] had an ownership of that name, yes. My understanding of the announcement of 20 December was that the name was the property of the barrister who had come up with it.

Mr Macaw:    And who was that?

Mr Minus:    I wasn’t aware that the Bar Association had at that stage done anything to appropriate the name to itself, other than suggest it was offering two free movie tickets, I believe.

Mr Macaw:    Mr Minus, it was apparent, wasn’t it, that this was the name the [NSWBA] proposed to be used henceforth in its dispute resolution service?

Mr Minus:    Yes.

Mr Macaw:    Do you say that you thought that the owner of the name for a dispute resolution service was the barrister who came up with the name?

Mr Minus:    At that time, yes.

Mr Macaw:    Did you consult with him to see if it was okay with him for you to appropriate the name?

Mr Minus:    No, I did not.

Mr Macaw:    Why not?

Mr Minus:    Because I assumed that the [NSWBA] would at some stage, having expressed the fact that it was going to use the name, that it would entail the name was appropriated, to use that term, to it. And at that stage myself, as a member of the [NSWBA] which is a membership body, would have the right to use it.

[emphasis added]

301    Mr Minus was taken to his email to Dr Keogh of 22 December 2010 by which he advised Dr Keogh that a “new category”, “BarADR” had been added to the disputeresolvers website. Mr Minus accepted that he had added a new category by that date and that the name disputeresolvers was a name owned by DRA: T, p 156, lns 12-16. Mr Minus accepted that DRA was in the business of promoting ADR services on behalf of barristers and other lawyers: T, p 156, lns 18-19.

302    This exchange then occurred at T, p 156, lns 21-37:

Mr Macaw:    Yes. So what this activity involved [the business of DRA promoting ADR services on behalf of barristers and other lawyers] was to put onto the website a sign “BarADR” which suggested that [DRA] would conduct its business of promoting ADR services under that name?

Mr Minus:    Where those people were barristers, and in this particular case barristers who were members of the [NSWBA] and accredited by them, that being the status of Dr John Keogh.

Mr Macaw:    Yes. Well, now, that was precisely the kind of service that you understood the [NSWBA] to be proposing to provide by reference to this new name, BarADR, wasn’t it?

Mr Minus:    Absolutely, yes.

Mr Macaw:    And why did you think that you were entitled to use the name which the [NSWBA] had announced it was proposing itself to use?

Mr Minus:    Because … I was at that time a member of the [NSWBA] accredited as a mediator, arbitrator and expert determiner. As a membership body, I don’t see there’s any distinction between services that it identifies for the use of barristers that are its members and the association itself.

[emphasis added]

303    Mr Minus contended in his opening submissions and otherwise that members of the NSWBA would have an “implied licence” to use the “expression” or “name” BarADR in the course of their individual activities as accredited mediators, arbitrators or expert determiners if accredited in those areas by the NSWBA. He affirmed that proposition at T, p 156, lns 39-42. In that context, Mr Minus did not accept that the adoption of the new category “BarADR” on 22 December 2015 on the DRA website, disputeresolvers, was the “general promotion” of BarADR: T, p 157, lns 1-5. Mr Minus regarded the new category as simply “bringing up” on that site particular members of the NSWBA accredited in the relevant areas.

304    This exchange then occurred at T, p 157, lns 18-29:

Mr Macaw:    Well, let me ask you again. Did you believe that you were entitled to use the sign “BarADR” to promote the services being supplied by [DRA]?

Mr Minus:    Yes, in relation, though, specifically to members of Dispute Resolution Associates who could be categorised as BarADR mediators, namely, that particular person.

Mr Macaw:    What do you mean by “BarADR mediators”? Do you mean those approved by and accredited by the [NSWBA]?

Mr Minus:    Yes.

Mr Macaw:    Why on earth could you think that, if the [NSWBA] was proposing to promote its services under that name, you would be entitled to do so under your name?

Mr Minus:    By my name, you’re referring to Dispute Resolvers?

Mr Macaw:    Yes.

[emphasis added]

305    The answer to the final question given by Mr Minus was that Dispute Resolvers operated as “simply a listing site”. Mr Minus said that that site provided an opportunity for barristers holding the relevant NSWBA accreditation to be found on that site “by that accreditation”. The utility of the site, as a site, however, with a “BarADR category” was put this way by Mr Minus at T, p 157, lns 40-45:

Mr Minus:    The information or the categorisation of this site by using a category of “BarADR” meant that a corporate counsel or an individual who was aware of the BarADR service and categorisation could search for that on the internet and find a properly accredited BarADR person on that site.

Mr Macaw:    By “on that site”, you mean the Dispute Resolvers site?

Mr Minus:    Yes.

[emphasis added]

306    Mr Minus accepted that he attended the NSWBA launch of BarADR on 16 March 2011; the BarADR kits were available for collection in hard copy and available online; and that he took away from the launch three hard copies of the kit. He accepts that two days later he registered the domain name ˂www.baradr.com.au˃: T, p 158, lns 1-21.

307    This exchange occurred at T, p 158, lns 23-29:

Mr Macaw:    And did you think that [registration of the domain name] conferred some legal rights on you or your company to the use of that name, to the exclusion of others?

Mr Minus:    No.

Mr Macaw:    What did you think it conferred?

Mr Minus:    It simply was the registration of an internet location, a unique internet location. There are other internet locations that could be registered, such as baradr.com, baradr.net, baradr dot whatever. I registered a single location.

[emphasis added]

308    Mr Minus was also taken to the Barristers’ Classifieds advertisement of 13 June 2013. Mr Minus accepted that the advertisement was designed to attract people to the idea of a virtual chambers at the sites ˂www.baradr.com.au˃ and ˂www.austbar.com.au˃ and that the address of 67 Castlereagh Street is the site of his chambers: T, p 159, lns 28-31. This exchange occurred at T, p 159, lns 37-39:

Mr Macaw:    You were inviting people, amongst other things, weren’t you, by reference to the offer of virtual chambers, to take the benefit of the service that you proposed to provide of ADR practice under the website ˂www.baradr.com.au˃?

Mr Minus:    Yes.

[emphasis added]

309    Mr Minus was taken to the contention set out in Mr Covell’s letter on behalf of the NSWBA to Mr Minus of 26 June 2013. That letter was written to Mr Minus in his capacity as Director and Secretary of the entity, Chambers, and also of DRA: PS-3, Tab 21. In that letter, Mr Covell asserts that the ˂www.disputeresolution.com.au˃ home page contains “banner advertisements” linked to the websites ˂www.disputeresolvers.com.au˃ and ˂www.austbar.com.au˃. Mr Minus accepted that such banner advertisements were published on the site with the relevant links: T, p 160, lns 24-39. Mr Minus also accepted that the home page for the site reproduced the NSWBA coat of arms. This exchange occurred at T, p 161, lns 1-13:

Mr Macaw:    Did you think you were entitled to use that coat of arms?

Mr Minus:    I did, but only in relation [to] specific information that had been obtained from the [NSWBA] website and on the basis that the image was not trademarked.

Mr Macaw:    Or copyrighted, is that right?

Mr Minus:    Well, I accept that. Yes.

Mr Macaw:    Well, I’m asking you, did you think you were entitled to use the coat of arms because there was no mark on the [NSWBA]’s coat of arms that suggested that it was either a registered trademark or the subject of copyright protection?

Mr Minus:    Yes. But only in relation to information that had been obtained from the [NSWBA]’s website. In other words, it was meant to be used as a mark to identify that this information was, in fact, the [NSWBA]’s information.

[emphasis added]

310    Mr Minus did not accept that his use of the coat of arms in relation to a list of NSWBA accredited barristers suggested that he had the “endorsement” or “approval” of the NSWBA to use the material in that way. He said this at T, p 161, lns 18-24:

Mr Minus:    I’m not suggesting that one never needs the endorsement or approval, however, my understanding was that the list of information could legally be represented – reproduced from the [NSWBA]’s website and reproduced in another form. My use of the logo of the [NSWBA] was simply meant to be illustrative that this information was their information, not my information. It was not a list I had compiled, but a list of information I got from that place.

311    In this context, Mr Minus was taken to the annexures to Mr Covell’s letter of 26 June 2013. Annexures A, B and C to the letter are lists drawn from the NSWBA’s BarADR website by Mr Covell. In the letter, Mr Covell describes these lists, extracted in that way, as the “genuine BarADR lists”. The first list has the coat of arms, the full name of the NSWBA, the heading “BarADR” and the list heading “Accredited Mediators as at November 2012”. The second list is in the same terms except that the list heading is “Approved Arbitrators as at March 2013”. The third list also has the coat of arms, the heading “BarADR”, a further title “Dispute Resolution Services” and then a list heading “Approved expert determiners as at March 2011”. After that, Mr Covell refers to Annexure D which is a full extract of the list, adopted by Mr Minus, and downloaded (six pages in all) from the disputeresolution website on 10 June 2013. Mr Minus accepted that Annexure D is such a document and that the material in his Annexure D had been reorganised as compared with Annexures A, B and C such that the names were no longer in alphabetical order: T, p 161, lns 42-47; T, p 162, lns 16-17. Mr Minus said that he sought to provide the information in a different combined format.

312    As to the order of names, Mr Minus said that he ended up on the top of the list because “it’s my website”: T, p 162, ln 34.

313    Mr Macaw suggested to Mr Minus that somebody who looked at the disputeresolution website would conclude that his list (Annexure D) was published with the authority of the NSWBA. Mr Minus thought not and explained why not by reference to an asterisk which appears at the end of the subject heading on page 1 of the website after the sub-heading, under the coat of arms, in the following way: “NSW Bar Association – List of Barristers who have been Accredited as Dispute Resolvers: Mediators, Arbitrators and Expert Determiners*”. The asterisk at the foot of the list of names on page 6 (in the printout) says this in small text:

* This table has been compiled from the lists of Accredited Mediators, Arbitrators and Experts published by the New South Wales Bar Association and available from its website.

314    At the end of the list of names below the text set out at [313], three other things are set out across the page. The first is in these terms (the first column):

Who we are

Dispute Resolution Associates was established in

2000 as a private provider of alternative Dispute

Resolution services. We are lawyers who have had

training and experience across the range of the

traditional to the latest conflict handling processes.

We work with organisations and individuals to assist

them to better manage and resolve their disputes.

315    Next to that is the following text (the centre column):

We can help

Whatever your dispute resolution query, we can

help you:

Understand the dispute resolution processes

available.

Learn about dispute resolution practice.

Find an accredited and experienced dispute

resolver.

Administer your dispute resolution process.

˂help@disputeresolution.com.au˃

316    Next to that is the following text (the right hand column):

Contact us

Dispute Resolution Associates Pty Ltd

ABN 50 090 594 451

6th Fl 67 Castlereagh Street

Sydney NSW 2000 Australia

[Contact numbers]

317    Mr Minus said that he understood that the services to be provided on the disputeresolution website were the services recited on the top line of the webpage: “Find a resolver – Read ADR news – Book a training course – Administer your dispute”. Mr Minus thought that the names in his six page list appeared under the “Find a resolver” tab: T, p 163, lns 29-36.

318    Mr Minus says that the reference to “we” in the section headed “Who we are” is a reference to 12 advertised and accredited dispute resolvers on a related website disputeresolvers, also owned by DRA, that is, the site known as ˂www.disputeresolvers.com.au˃, the site the subject of Ex 2A: T, p 164, lns 6-14. Mr Minus accepted that the reference to “we” and “us” in the text at [314] and [315] is a reference to DRA in both cases: T, p 164, lns 29-31. This exchange then occurred at T, p 164, lns 33-35:

Mr Macaw:    Yes. And “we can help” in the centre column identifies, doesn’t it, in those four paragraphs what it is that [DRA] can supply by way of services in connection with ADR work?

Mr Minus:    Yes.

[emphasis added]

319    The following exchange then followed at T, p 164, lns 37-40 and T, p 165, lns 34-38:

Mr Macaw:    Mr Minus, at the time you published this [the list and related information at [314], [315] and [316]] on the Dispute Resolution Associates website, did you believe that the [NSWBA] BarADR scheme, needed more extensive promotion and coverage than it was supplying or likely to supply?

Mr Minus:    Yes.

…

Mr Macaw:    Your purpose in publishing this material on the website was to promote the services that [DRA] was prepared to offer as if they were associated with the services which the [NSWBA] was prepared to offer under the name BarADR?

Mr Minus:    I disagree with that, actually.

[emphasis added]

320    Mr Minus explained that answer by observing that DRA, by the disputeresolution website, was doing no more than simply putting information in the public domain “albeit I would accept in a different listing – or different compilation than is provided by the publisher of the information”: T, p 166, lns 4-7.

321    This exchange then followed at T, p 166, lns 9-29:

Mr Macaw:    Well, can you explain why any person who read this material on the website and saw that it contained the [NSWBA] coat of arms would not think that the publication was authorised in some way by the [NSWBA]?

Mr Minus:    I accept that on being alerted by Mr Covell to that possibility that it was a live issue, I immediately removed the material. However, I would like to state that at the time I published it I was of the view that I was doing no more than listing the very people that were listed on the [NSWBA] site and simply denoting them with their logo. But I accept that having been alerted to the possibility that you have raised, that there was somehow some suggestion that the [NSWBA] had authorised this, I immediately removed this and any other similar list.

Mr Macaw:    I thought your evidence, Mr Minus, was that you thought you were entitled to use the coat of arms because there was no indication that it was the subject of a registered trademark or the subject of copyright?

Mr Minus:    That’s correct.

Mr Macaw:    Did you change your mind having had the complaint from the [NSWBA]?

Mr Minus:    Absolutely …

[emphasis added]

322    Mr Minus was taken to the three page attachment to the email of 28 June 2012 forming part of Ex 1 (under the name of the entity, Chambers) and to that part of it which says that a separate “barADR website will promote the skills of barristers who are competent dispute resolution practitioners; mediators, arbitrators and expert determiners” and to the reference that such a website “will provide social community communication”.

323    The proposition was put to Mr Minus that the proposal was for material of this kind to be available to the public so that members of the public could judge the degree of experience and suitability of the ADR people being supplied by Australasian Barrister Chambers. Mr Minus said that “this was meant to be a service for barristers nationally” so that a barrister, engaged in a certain class of work in one State, could seek and find somebody who was a barrister in another State “who had that part of – that practice and seek to share information with them”: T, p 169, lns 8-12.

324    Mr Minus was taken to the virtual services summary at page 3 of the document which says that the services include an opportunity to promote “your legal practice with a personal listing on the AUSTbar website” and an opportunity to “outline your experience in ADR and advertise your ability for appointment as a dispute resolver (mediator/arbitrator/expert determiner) on the specialist barADR website”: point 2 of the summary. Mr Minus accepted that this was a description of the content of the virtual services and that the services involved the promotion, that is, the ability of barristers to promote their legal practice, including as to their suitability for doing ADR work: T, p 169, lns 23-25.

325    Mr Minus explained that what he was trying to do was provide barristers engaged in ADR with “additional facilities on a national basis that they would not receive from their [B]ar [A]ssociations”: T, p 169, lns 27-29.

326    As to point 2 of the summary mentioned above, Mr Minus observed in the course of evidence that this element of the services had not come into existence at the time of the email of 28 June 2012 because even though the domain name ˂www.baradr.com.au˃ had been registered by Mr Minus on 18 March 2011 and the site was badged “BarADR” from the outset and thereafter until about March 2014, no content had been uploaded to it until then setting out any information about any services. By September 2014, the badging of the site had become “AUSTBAR ADR” although the physical printout of webpages from the site shows a domain address of ˂www.baradr.com.au˃. As to the website ˂www.austbaradr.com.au˃, Mr Minus was confident that the registrant of that site was the entity, Chambers.

327    Mr Minus accepted that the website ˂www.baradr.com.au˃ bearing the heading “BarADR” had no content uploaded to it in the period June 2013 to March 2014. Mr Minus agreed with the dates set out in the affidavit of Mr Andrew Christopher: T, p 177, lns 36-41.

328    In addition, Mr Minus accepted the proposition that his BarADR website redirected users to the “AUSTBAR ADR” website ˂www.austbaradr.com.au˃: T, p 178, lns 13-16.

329    Mr Minus was taken to the screen capture of the respondents’ BarADR website extracted on 25 September 2014, at AJC-2, Tab 15. The extract shows a reference to “AUSTBAR ADR” and a reference to ˂www.baradr.com.au˃. In the text under the heading “About AUSTBAR”, the text says: “The national website for Australian Barristers with ADR expertise”. It also says that “AUSTBAR ADR is the companion website to the national barrister chambers and Roll of barristers listing site: AUSTBAR CHAMBERS”. The website also says this:

Both websites provide extensive information about Australian Barristers; where to find them and how to locate barristers with the expertise you require.

Barristers are court advocates and legal advisors who play a significant role in the representation of parties in court and the presentation of their legal case. However, it is not always realised that barristers have always been involved in the settlement and resolution of legal disputes.

Previously this occurred in less formal ways. Now Bar association Rules provide for barristers to advise their clients of any alternatives to a fully contested adjudication of their case that are reasonably available to them.

…

AUSTBAR ADR provides the only single national list of all qualified barristers who have been accredited in ADR processes by their respective state Bar Associations.

[emphasis added]

330    Mr Minus accepted that these passages are directed to members of the public: T, p 179, lns 30-34.

331    Mr Minus accepted that the services in connection with which the AUSTBAR ADR name was used included the provisional list of qualified barristers, qualified as ADR practitioners: T, p 180, lns 5-8.

332    Mr Minus asserted that the AUSTBAR ADR website was established to provide “an information resource” and that it did not “seek to advertise services or people”. He says that the site did not offer any services and, as a site, it had no relationship with any of the Australian barristers with ADR expertise talked about on that site.

333    Mr Minus put it this way at T, p 180, lns 28-30:

Mr Minus:    All it did was provide a single national searchable website of barristers who had been qualified by their state associations as ADR practitioners.

Mr Macaw:    And whom members of the public or indeed legal professionals might find suitable for the provision of those services?

Mr Minus:    Yes.

[emphasis added]

334    Mr Minus accepted that the respondents’ AUSTBAR ADR website was in the form at 17 April 2015 as set out at AJC-2, Tab 16: T, p 181, ln 33.

335    As to engagement with the public, Mr Minus also accepted that the home page for the NSWBA AustBar ADR website was also directing information to, amongst others, members of the public: T, p 182, lns 7-9.

336    Mr Minus in his affidavit evidence asserted that “as a qualified barrister and ADR practitioner accredited as a BarADR practitioner by the [NSWBA]”, he “decided to assist those barristers who were also so qualified as ADR practitioners by undertaking that marketing myself”. He also said that he “decided to do those things and register the domain name ˂www.baradr.com.au˃ so that it could be used nationally by all barristers in Australia” and “in other words”, BarADR was “a generic term for barristers engaged in ADR”. Mr Minus had also given evidence that, at the time of the announcement of 20 December 2010, he assumed that he would be able to, as a mediator, arbitrator and expert determiner, accredited by the NSWBA, use the term “BarADR”, “in relation to my practice as a dispute resolver” (T, p 183, ln 1) just as, in his view, other barristers so accredited could use the term. This exchange then occurred at T, p 183, lns 4-36:

Mr Macaw:    Yes. They likewise, you thought, would be entitled to use that expression in connection with their provision of ADR services?

Mr Minus:    Yes.

Mr Macaw:    But you couldn’t possibly have thought, could you, that as a member of the [NSWBA] you would be entitled to use that name instead for the promotion of the business activities of a company like [DRA]?

[Mr Macaw then took Mr Minus to his affidavit evidence described earlier in this paragraph and in furtherance of the question put this.]

That’s what you were doing, wasn’t it? You weren’t proposing or you didn’t think that you were entitled to use the name BarADR as somebody accredited by the association in the provision of your ADR services. You instead or as well were proposing to use it by making a service such as that provided by the [NSWBA], correct?

Mr Minus:    I was by that process determined to provide a listing of barristers who were accredited by the [NSWBA] just for availability by members of the public and those people who would be looking for a barrister with those qualifications. Yes.

[emphasis added]

337    As to the question of the name or sign BarADR being a generic term, Mr Minus gave an explanation about the events and thinking that led to the registration on 18 March 2011 of the domain name by him. The following exchange occurred at T, p 184, lns 20-47; T, p 185, lns 1-43:

Mr Minus:    … 16 March … is when the [NSWBA] launched its service and I attended and spoke to Ms Brown and the 18th was when I was of the view that the [NSWBA] as usual was going to do very little to market the actual people as opposed to its service and as they had not registered any domain name, any business name, any trademark, that that was a term [BarADR] that when promoted by the [NSWBA] could also equally apply to mediators at the Victorian Bar and I was at that time an advanced mediator accredited by the Victorian Bar as well as a member of the Victorian Bar. And my view was that it would – it would assist all – all barristers because the term I felt was generic. It was simply a combination of “bar”, “barrister”, “ADR” but it was a neat description and it would fit in with what was happening.

Mr Macaw:    First, you suggest that what you’re saying [about BarADR being a generic term for barristers engaged in ADR], explains what you were thinking as at 18 March 2011?

Mr Minus:    Yes.

Mr Macaw:    So you thought as at 18 March 2011 that you had an extra justification for the adoption of the term “BarADR” than the entitlement you thought you had in December 2010?

Mr Minus:    Yes.

Mr Macaw:    Is that the first proposition?

Mr Minus:    Yes.

Mr Macaw:    Secondly, do you suggest that “BarADR” is a generic term for barristers engaged in ADR or that you thought so in March 2011?

Mr Minus:    Yes.

Mr Macaw:    How could you? How could it possibly be a generic term referring to barristers who engaged in ADR?

Mr Minus:    I believe it was.

Mr Macaw:    It’s a term, is it not, which signifies the service which the [NSWBA] proposed to provide in relation to ADR accredited barrister services?

Mr Minus:    It was a term that was proposed by a New South Wales barrister and adopted by the New South Wales Bar but I understood their adoption of it and by this stage there was – the use of it was somewhat limited in that it had only been announced and it had not been announced with any restrictions.

Mr Macaw:    Well, the third proposition perhaps is this: do you suggest you believed that the term was generic because the [NSWBA] hadn’t registered any domain name or trademark or signified any copyright entitlement?

Mr Minus:    I was of the view that it was generic because the term was simplistic firstly but, secondly, because this simplistic term had not been protected by any form of trademark or registration, as I understood it, at the time.

Mr Macaw:    And did you think that that supplied a foundation for a conclusion that the term was generic?

Mr Minus:    Yes.

Mr Macaw:    And the fourth strand, as I followed your answers, was that the use which the [NSWBA] had then already made of the expression was limited, did you mean by that that you saw the opportunity yourself to fill the gap which you apprehended might be left by the [NSWBA]’s promotion of services?

Mr Minus:    Fill the gap of promotion of people not services.

Mr Macaw:    Yes. In other words, in short, promotion of the provision of those services by those people?

Mr Minus:    “Promotion” would mean that I was standing in the marketplace to solicit work for those people – that was not the proposed role for the AustBar site nor is it the role of that site now. It is an information resource. … The site is not promoting people.

Mr Macaw:    It’s promoting, amongst other things, lists of people who will be able to supply ADR services and it’s promoting likewise the desirability of the provision of such services. Correct?

Mr Minus:    Yes.

Mr Macaw:    And in substance, what was said, was it not, on that page that I took you to in relation to AustBar ADR [[327] of these reasons]?

Mr Minus:    Yes.

[emphasis added]

CONCLUSIONS in relation to the nswba proceedings

338    The conclusions that arise out of all of these events are these.

339    I accept the evidence of Mr Selth and Mr Christopher. I find as facts those matters of fact described at [255] to [296]. At [297] to [328], I note matters of evidence given by Mr Minus in relation to all of the issues in controversy. I also find, as facts, those matters of fact which became uncontroversial as a result of the acceptance by Mr Minus of matters put to him in cross-examination.

340    Although Mr Minus has offered an explanation of his thinking on 20 December 2010 and the factors influencing his mind on 22 December 2010 when he added the new category “BarADR” to the Dispute Resolvers website and he has also offered an explanation of his thinking, later in time, when on 18 March 2011, two days after the NSWBA launch of its new “BarADR service” and its new “BarADR kit”, he registered the domain name, those explanations are ultimately not an answer to the central difficulty confronting use of the sign, name or mark “BarADR”.

341    It is, of course, true that when the name was announced as a result of the competition and when the launch of the new BarADR service and new BarADR kit occurred on 16 March 2011, no application had been made for any form of intellectual property protection for the name which had been chosen as the badge of origin for the new service of the NSWBA. It was the first user of that name, sign or mark as a badge of origin of its new service. The NSWBA made great moment of its new service and the new name for its new service and launched the new service, the new name and the new kits at a major public function attended by 80 people. The new service, the new name for the service and the new kits were launched by the Hon Chief Justice Spigelman AC, Chief Justice of the New South Wales Supreme Court. Nobody attending the function or reading the online messages of the NSWBA could have been in any doubt at all that the NSWBA was putting a stake in the ground and asserting a new name by which its new service would be promoted and would become, over time, known. The application for the registration of the trade mark BARADR was ultimately filed on 23 June 2013.

342    An individual barrister accredited by the NSWBA as a mediator, arbitrator or expert determiner (or all three) would undoubtedly wish to promote his or her accreditation with a view to attracting the engagement of those persons who would be likely to retain a barrister in the various ways that that is now done in those areas. An individual barrister carrying on practice in these areas of accreditation might describe themselves as a member of the ADR Bar or a member of the Bar practising in ADR. Such a barrister would have no reason to describe their individual services as “BarADR”.

343    In the case of Mr Minus, he chose to register a domain name within two days of the launch of the NSWBA’s new BarADR service. He says that he regarded himself as free to do that because the name, mark or sign had no claim to protection and no protection otherwise. He says that he thought he was free to use the term “BarADR” because he was a member of the NSWBA accredited to practice in the relevant areas. Nevertheless, there can be no doubt that he had no standing to appropriate or seek to appropriate to himself and companies he controlled and operated, the name “BarADR” or a domain name adopting the very name selected by the NSWBA for its own service. Mr Minus would have no reason to call his own individual services “BarADR”. Further, there was no proper basis upon which Mr Minus could commence using the sign “BarADR” as a badge of origin of “services” provided by entities controlled or influenced by him.

344    As to the question of “services offered or promoted” or those attributes which the various entities offered or promoted, it is clear that “services” or “offerings” were being “promoted” by means of Annexure D, by DRA, and by the email to Dr Keogh of 22 December 2010, also by DRA (in circumstances where Mr Minus knew that that was the kind of service the NSWBA was intending to provide by reference to its new “BarADR” name): see [302] and [303] of these reasons. See also the Barristers’ Classifieds advertisement by the entity Chambers and the evidence at [308]. Also, Mr Minus regarded the operation of ˂www.disputeresolution.com.au˃ website as proprietary and conferring proprietary entitlements because “it’s my website”: [312]. The evidence discussed at [311] to [318] makes it plain that services of the kind described were being provided. As to the website ˂www.baradr.com.au˃ registered by Mr Minus, that too was promoting, amongst other things, lists of people able to supply ADR services and promoting the desirability of the provision of such services: see [332]. “Virtual chambers” services were being provided by the entity Chambers as described in the document attached to the email of 28 June 2012. Services as described on the respondents’ “AUSTBAR ADR” website (at AJC-2, Tabs 15 and 16); [327] to [330]) were also being provided. As to these matters, I so find.

345    From 2015 the particular mark “BarADR” was used as an internet address for the purpose of directing users to the “AustBar ADR” website operated by the entity, Chambers, as a virtual chambers for barristers practising in ADR.

346    Clearly enough, Chambers has used the sign or mark “BarADR” as a trade mark or badge of origin to indicate a connection in the course of trade between Chambers and Mr Minus and the services supplied through the “BarADR” website of the respondents and, later in time, the ˂www.austbaradr.com.au˃ website.

347    Undertaking the orthodoxy of the side by side comparison required by Shell Co of Australia Ltd v Esso Standard Oil (Australia) (1963) 109 CLR 407 at 414, makes plain that “BarADR” is “substantially identical with” “BARADR” for the purposes of s 120(1) of the TM Act.

348    There is a slight difference between the two marks. The mark “BarADR” as used by the respondents is a mark which is also “deceptively similar to” the registered trade mark “BARADR”, for the purposes of s 120(1) of the TM Act, because the selected mark used by the respondents so nearly resembles the trade mark that it is likely to deceive or cause confusion. It is likely to do so because persons engaging with the selected mark and website services (that is, potential users of the services of the respondents and/or the services of the NSWBA including members of the public to whom the services of the NSWBA are, among others, directed by the use of the registered trade mark) are likely to be confused about the source of the services provided under the mark “BarADR” used by the respondents for their services which are also directed to members of the public on their “BarADR website”, or their “AustBar website”, by leading users to believe that the services are those of the NSWBA or services connected or associated with the NSWBA. The conduct of the respondents is also likely to cause confusion by leaving persons engaging with the “BarADR website” of the respondents in a positon where they are caused to wonder as to the source or origin of the services.

349    I am also satisfied that the use, by the respondents, is use of their mark in connection with services for which the trade mark is registered: electronic publications (Classes 9 and 41); directories (Class 16); indexes of online information (Class 42); legal mediation services (Class 45).

350    Apart from these considerations, the applicant contends that the respondents have engaged in conduct in contravention of ss 18, 29(1)(g) and 29(1)(h) of the ACL.

351    The central elements of the contended misleading and deceptive conduct are that two days after the launch of the NSWBA’s new BarADR service, its new name and its new BarADR kits, Mr Minus caused a domain name to be registered ˂www.baradr.com.au˃. The respondents did not populate the website for some time but nevertheless registered the domain name and preserved ownership of the website for later use. As to use of the website, the website was used by the respondents in the way already described in these reasons and the subject of the findings. Ultimately, the website and domain name ˂www.baradr.com.au˃ was used to direct traffic, from at least 17 April 2015, to another website ˂www.austbaradr.com.au˃, operated by the entity, Chambers.

352    These websites operated by the respondents were directed, amongst others, to members of the public. The observations I have made already about the relevant cohorts equally apply to an understanding of the cohorts engaging with these websites of the respondents. I am satisfied that ordinary, reasonable, fair-minded members of the class of consumers seeking to engage with the websites of the respondents to seek out information about barristers, their skills, experience and relevance to a controversy in which the citizen might be engaged which might call for ADR services, or potentially lawyers in particular areas of legal practice not used to engaging counsel for clients in mediations or arbitrations, or related professionals seeking out the possibility of acquiring the ADR services of a barrister, are likely to be led to believe that there is an association or affiliation between the respondents BarADR site, its AustBar ADR site, Chambers and the NSWBA

353    Alternatively, there is a likelihood that such users will be led to believe that the sites and Chambers have the licence, consent, approval or authority of the NSWBA.

354    There is, of course, no such licence, consent, approval or authority.

355    I am also satisfied that, for the purposes of s 29(1)(g) and s 29(1)(h), the same conduct suggests a representation that the “BarADR” site and the “AustBar ADR” site of the respondents, its operator Chambers, and the services promoted through those sites are : first, activities supported by the NSWBA; second, Chambers is an operator supported by the NSWBA; third, those sites are connected with, supported and sponsored by, the NSWBA as sites and activities which have the consent, approval or licence of the NSWBA.

356    There is very little doubt on the evidence that the step taken by Mr Minus to register and preserve, for himself and his entities’ use, the name “BarADR” through the vehicle of the website ˂www.baradr.com.au˃, coupled with use of the mark on the website, so quickly after the launch of the BarADR services under that name on 16 March 2011 was, in practical operation and effect, an appropriation by Mr Minus to his own use of “BarADR” recognising that that name or mark would be likely to grow in prominence and reputation as the NSWBA went about the activity of promoting its services under that name. This is not to say that I reject the evidence of Mr Minus that he also believed that the NSWBA had failed to “appropriate” the mark to itself, properly or at all, and it is not to say that I reject the evidence of Mr Minus that he believed as an ADR practitioner and a member of the NSWBA that he could use the term “BarADR” without the need for some form of formal authority from the NSWBA. Nevertheless, the effect of the conduct was, in its practical operation, an appropriation of the sign or mark for his own purposes which, plainly enough, was a sign or mark that the NSWBA had, after some real effort, selected for its new re-launched service.

357    For all the reasons indicated earlier, I am satisfied that Mr Minus was intimately knowledgeable of all of the facts and circumstances relevant to the conduct in issue and I am satisfied that he is a joint tortfeasor in the conduct and is knowingly concerned in all of the relevant conduct.

358    I propose to make declarations and other orders as sought by the NSWBA. I will direct the NSWBA to submit proposed draft orders.

359    As to the costs of each proceeding, the applicants in the ABA proceedings (without seeking to definitively restate the precise detail of the matters) have been successful but for an issue in relation to the name Australasian Barrister Chambers and the related issue of the scales of justice connected with that name. The applicants have been successful in their contentions in relation to use of the name Australian Bar Association, Australian Barristers Association, AustBar, electronic use of austbar and ausbaradr, among other issues. The NSWBA has been successful in its proceeding. In principle, the applicants in the ABA proceeding are entitled to their costs of and incidental to the proceeding and in principle, the NSWBA is entitled to the costs of and incidental to its proceeding. However, I will entertain submissions on the question of costs.