FEDERAL COURT OF AUSTRALIA

Jacksons Drawing Supplies Pty Ltd v Jackson's Art Supplies Ltd [2025] FCA 530

ORDERS

THE COURT ORDERS THAT:

1.    A case management hearing will be convened to make directions for the determination of the form of non-pecuniary relief.

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

Table of Contents

REASONS FOR JUDGMENT

JACKSON J:

1    The applicant, Jacksons Drawing Supplies Pty Ltd (JDS), sells art products from stores located in Western Australia and the Northern Territory, by means of the website www.jacksons.com.au (JDS Website), and also by means of orders placed by account customers.

2    The first respondent, Jackson's Art Supplies Ltd (JAS), is based in the United Kingdom. It sells art products in Australia and elsewhere by means of the website www.jacksonsart.com (JAS Website).

3    JDS trades under the names 'Jacksons' and 'Jacksons Drawing Supplies'. JAS trades under the names 'Jackson's', 'Jackson's Art' and 'Jackson's Art Supplies'. The parties are in dispute about their respective uses of these names, in conjunction with other conduct. No trade mark registered in Australia is involved.

4    JDS commenced this proceeding, alleging breaches of s 18 and s 29 of the Australian Consumer Law (ACL) (being Schedule 2 to the Competition and Consumer Act 2010 (Cth)) and liability for the tort of passing off. As well as JAS, the respondents to that claim are an Australian company called Jackson's Art Australia Pty Limited (JAA), which is indirectly majority owned by JAS, and the two immediate shareholders of that company, Jackson's Art Holdings Australia Pty Limited (JAH) and Pyrmont Capital Partners Pty Ltd (PCP). JAA is alleged to be liable as a principal wrongdoer and also as an accessory, that is, by reason of being knowingly involved in JAS's alleged breaches of the ACL and as a joint tortfeasor. JAS is likewise said to having accessory liability for JAA's conduct. JAH and PCP are said to be liable as accessories to JAA's conduct.

5    JAS has cross-claimed alleging contravening and tortious conduct against JDS. The Managing Director of JDS, Michael Boercamp, is also named as a respondent by reason of alleged accessory liability.

6    For the following reasons, JDS has established its claim for breaches of the ACL and passing off against JAS and JAA. But I am not prepared to grant injunctive relief in the terms JDS seeks, and further submissions on relief will be necessary after the parties have had an opportunity to consider these reasons. JDS's claim against JAH and PCP will be dismissed. So will JAS's cross-claim against JDS and Mr Boercamp.

I.    BACKGROUND

7    Some uncontentious facts can be set out by way of background.

JDS and JAA

8    JDS's business has a long history. From the 1930s to the 1950s, Harry Jackson and George Jordan operated 'Jordans and Jacksons Printers and Stationers' in Kalgoorlie, Western Australia. After Mr Jordan's premature death, and the intervention of the Second World War, Harry Jackson withdrew from the printing side of the business and started his first store in Perth in 1955, under the name 'Jacksons Drawing Supplies'. The business has been in continuous operation in the sale of art products since then. JDS was incorporated to carry on the business in 1969.

9    After Harry Jackson's retirement in 1977, control of the business passed to his son, Kevin Jackson. He expanded the retail business into the suburbs of Perth and to regional centres in Western Australia, as well as into the Northern Territory.

10    The second cross-respondent, Mr Boercamp began working for JDS in 1995 as the company accountant. On 30 June 2010 he bought Kevin Jackson out of the business. All the shares in JDS were acquired by Canmore Holdings Pty Ltd, a company of which Mr Boercamp and his wife Jennifer Boercamp are the shareholders and directors. Mr Boercamp has been JDS's Managing Director since then.

11    JDS trades under the names 'Jacksons' and 'Jacksons Drawing Supplies Pty Ltd'. It has used the following logos on its physical stores and website from time to time:

12    It will be noted that the second of the names mentioned above is the full company name, which also appears in full in at least two of the logos. However as will be seen, the names that JDS pleads in connection with its alleged reputation are 'Jacksons' and 'Jacksons Drawing Supplies' (JDS Names). Neither party raised any issue connected with the inclusion or omission of the 'Pty Ltd' in the trading name, which I will treat as being of no consequence.

13    When Canmore Holdings Pty Ltd acquired JDS in 2010, JDS had 15 physical stores. Nine of them were in the Perth metropolitan area. Four were in the Western Australian regional centres of Mandurah, Bunbury, Busselton and Geraldton. The others were in Darwin and Alice Springs.

14    Since then, four of the Perth stores have been closed, as has the Geraldton store. An additional store has opened in another Perth suburb. That leaves six stores in the Perth metropolitan area, three stores in Western Australian regional centres and two stores in the Northern Territory.

15    At no time has JDS had any physical stores outside Western Australia and the Northern Territory. While the geographical and other break up of its revenue was controversial, it was not in issue that its overall sales are significant, with average sales revenues of about $11.8 million per annum between 1994 and 2010, and about $9.7 million per annum between 2010 and 2023.

16    JDS registered the domain name for the JDS Website in 2002 and the website was operational and accessible to internet users in Australia (and elsewhere) from about 2006. In fact, JDS operated a website (from a different URL) from 1997.

JAS

17    JAS was incorporated in the United Kingdom in 2000. Both Gary Thompson and Michael Venus have been directors of JAS since its incorporation. Mr Thompson is Executive Director and manages JAS's operations. Mr Venus is not involved in day to day management.

18    Like JDS, JAS sells art products. It does so through retail stores in the United Kingdom and online.

19    JAS trades under the following names (JAS Names):

(a)    'Jackson's';

(b)    'Jackson's Art'; and

(c)    'Jackson's Art Supplies'.

20    It also trades using the following logo:

21    JAS registered the domain name for the JAS Website in 2000 and the website has been in operation since about 2001. It has been accessible to internet users in Australia since that time.

22    From around 2013 to July 2015, consumers were able to select different currencies in which to pay for goods, including Australian dollars (AUD). The default currency was pounds sterling (GBP). The ability to select other currencies was available when the user went to specific products on the JAS Website; it was not apparent on the landing page or home page. However from July 2015 to October 2018, the option of selecting currencies other than GBP, including AUD, became available on the home page.

23    From around October 2018 until mid-2023, internet users in Australia who accessed the JAS Website were presented with a pop-up window giving them the option to shop in either AUD or GBP (AU Pop Up). If they selected AUD, they were taken to a subdirectory (jacksonsart.com/en-au, the JAS AU Site) which presented an Australia-specific store front with Australian dollars as the default currency. It was 'Australia-specific' in the sense that the particular content and configuration of web pages found on the JAS AU Site was only presented to customers who were identified as accessing it from devices in Australia.

24    The second respondent, JAA was incorporated in April 2022. Its principal place of business is in Campbelltown, a suburb of Adelaide. The directors of JAA are Mr Thompson, Mr Venus and Mr Baumgartner. Mr Baumgartner is Executive Director of JAA and is involved in its day to day management. Its shareholders are the third respondent, JAH (as to 90%) and the fourth respondent, PCP (as to 10%).

25    JAH is controlled by Mr Thompson, Mr Venus and Michelle Varley (Mr Thompson's sister, who lives in Western Australia). Its sole shareholder (as at 13 December 2022) is a company called Jacksons Art Supplies Ltd (ACN 658 493 737) whose address is in London. PCP is controlled by Franz Baumgartner and his wife Magrifa Sadri, who are based in Adelaide. Its shareholders are Mr Baumgartner (50%) and Ms Sadri (50%) (as at 13 December 2022).

26    Since mid-2022, the JAS AU Site has referred to Adelaide at the bottom of each page, has provided an Australian phone number with Australian Central Standard Time opening hours, has referred to the dispatch of goods from an Australian warehouse, and has indicated that phone orders can be placed in Australia. Although JAA has operated that warehouse from mid-2022, at no time has JAS had any physical stores in Australia. The evidence about JAS and JAA's presence in Australia will be described in more detail in Section V below.

II.    THE ISSUES

The issues in detail - JDS's claim

27    The following issues arise on the pleadings, as modified by the parties' submissions and a statement of agreed facts between them. While that statement did not follow the formal requirements of s 191 of the Evidence Act 1995 (Cth), the parties treated it as having established the facts that are set out in it, and by analogy to s 191(2)(a) I will proceed on the basis that evidence is not required to establish those facts.

JDS's reputation and trading names

28    The first area of dispute concerns the extent to which JDS has marketed its goods under the names 'Jacksons' or 'Jacksons Drawing Supplies'. JDS pleads that since commencing operations, it has 'extensively advertised, marketed, promoted, offered, sold and supplied arts and crafts products' under those names (Second Further Amended Statement of Claim filed 25 June 2024 (SOC) para 8). The respondents deny this. They also deny JDS's allegation that it has enjoyed significant success and its sales have been and continue to be extensive. However it was clear from opening submissions that the respondents do not dispute that JDS has a substantial reputation connected with sales to customers in the stores based in Western Australia and Northern Territory (JDS's core markets). In issue are JDS's reputation outside those core markets, and its online presence.

29    Also in dispute is whether Australian consumers have referred to JDS as 'Jacksons Art' or 'Jacksons Art Supplies'. JDS pleads that this has been so since at least 2010. JAS denies it.

30    As a result, JAS denies JDS's plea that at all material times it has had and continues to have 'a substantial reputation and goodwill in Australia in each of "JACKSONS", "JACKSONS DRAWING SUPPLIES", "JACKSON'S ART" and "JACKSONS ART SUPPLIES" in relation to the supply and sale of arts and crafts products' (SOC para 12). However, consistently with what has just been said, it does not appear that JAS disputes that JDS has a substantial reputation and goodwill in its core markets in connection with the first two of those trading names.

31    In large part, JAS's resistance to JDS's pleas as to its reputation and goodwill is founded on four contentions:

(a)    JDS does not have any reputation in 'Jackson's Art' or 'Jackson's Art Supplies', being the names under which JAS has traded;

(b)    JDS's reputation in 'Jacksons' and 'Jacksons Drawing Supplies' is mostly connected to in-store sales and to direct order sales (for example by schools or government agencies) in its core markets;

(c)    JDS's online business is small; and

(d)    JDS has not established that it has any reputation outside its core markets.

JAS's website and Australia

32    The next area of dispute concerns the JAS Website and its connection to Australia. JAS pleads that it has sold art supplies to customers in Australia through that website since at least 2005 and 'has established a reputation in Australia trading in art supplies and affiliated products' under the names and logo set out at [19] above (Amended Third Defence filed 27 June 2025 (Defence) para 13.1).

33    While, on its face, that involves the offering and sale of the same kinds of products as JDS, JAS has adduced evidence that it offers 'fine art supplies'. It appears that while JAS accepts that both it and JDS sell art products, so that there is a substantial overlap in the kinds of products they respectively sell, JAS maintains that its character as a fine art supplier, and as a company that does not sell craft supplies, is one feature of its business that is likely to lead consumers to differentiate it from JDS. It will become apparent below that I do not accept that the distinction drawn by JAS is significant for the purposes of this case. The products that each of JAS and JDS offer for sale will be referred to as art supplies.

34    JDS joins issue with these matters, and denies similar allegations made in the cross-claim. It appears from objections to evidence that JDS made that it puts JAS to proof on these matters. However JDS made no concerted attempt at trial to contradict or disprove JAS's claims about its reputation.

The conduct of JAS that JDS impugns

35    JDS divides the conduct of JAS that it impugns into three categories. The respondents sought to hold JDS to a very specific case about the conduct it alleged was misleading or deceptive. I will need to examine that aspect of the pleadings in detail in Section VII below.

36    At present, it is enough to say that the conduct of JAS which JDS seeks to impugn is comprised of the offering, promotion and sale of art supplies on the JAS Website using the JAS Names, but only by reference to specific characteristics of the website that were introduced in October 2018 and further characteristics that were introduced in mid-2022. The first of these were, broadly, offering AUD as a choice of default currency for the JAS AU Site (from June 2023 AUD (with New Zealand dollars) was the only currency offered on that subdirectory) and references to Australia on the site. The characteristics introduced in mid-2022 were, broadly, references to JAA's operations in Australia. Those matters are alleged to have constituted misleading or deceptive conduct in conjunction with JAA's conduct in dispatching orders using the JAS Names and doing other things.

37    The respondents do not dispute these bare facts, although they do maintain that other characteristics of its website are relevant and must be taken into account, including what they say are frequent references to JAS's origins and character as a United Kingdom-based company. They deny that their conduct is misleading.

The alleged representations - JDS's claims

38    JDS pleads that three combinations of the conduct impugned in the SOC has resulted in certain Representations being made to Australian consumers. Each of those three combinations is said to have had this result in the context of JDS's substantial reputation and goodwill in connection with each of the JDS Names.

39    The Representations are:

(a)    JAS and/or JAA is JDS;

(b)    JAS and/or JAA is associated with or endorsed, approved, licensed or sponsored by JDS;

(c)    the JAS AU Site is a website of JDS;

(d)    the JAS AU Site is associated with or endorsed, approved, licensed or sponsored by JDS;

(e)    the telephone number shown on the JAS AU Site is JDS's telephone number;

(f)    that telephone number is associated with or endorsed, approved, licensed or sponsored by JDS;

(g)    the person or entity offering for sale and/or selling the products via the JAS AU Site is JDS;

(h)    the person or entity offering for sale and/or selling the products via the JAS AU Site is associated with or endorsed, approved, licensed or sponsored by JDS;

(i)    the person or entity offering for sale and/or selling the products via the Australian telephone number is JDS; and

(j)    the person or entity offering for sale and/or selling the products via that telephone number is a person or entity associated with or endorsed, approved, licensed or sponsored by JDS.

40    In the case of JAA, it is pleaded to have made the Representations, in the context of JDS's reputation and goodwill in the JDS Names, by reason of either:

(a)    a combination of the references to Australian operations on the JAS AU Site and the further alleged conduct of JAA in dispatching orders etc; and

(b)    further or alternatively, solely because of that further alleged conduct.

41    The reason it will be necessary to return to these pleas in more detail is because, as foreshadowed, the respondents seek to confine JDS's case to the specific conduct said to have commenced from October 2018, so that it is not a case that rests on JAS trading under the JAS Names where they are the same or similar to the JDS Names. For that trading was taking place in Australia for some 20 years before the proceeding was commenced.

42    In any event, the respondents deny that they have made the Representations. While they do not give particulars of those denials in the Defence, the respondents refer to the difference between JDS marketing itself as a Western Australian enterprise, as distinct from JAS's promotion of London/United Kingdom base and strong international focus. The respondents say that the reputation that JAS has built in Australia means that it is unlikely to be confused with JDS. The respondents rely on the different branding and store signage used by the two businesses. They also emphasise JAS's character as a predominantly web-based seller (it has two brick-and-mortar stores in the United Kingdom, but neither party made anything of that). In contrast, the respondents submit, JDS's web-based sales have always been small, as it mainly trades through its stores in its core markets and by means of direct orders placed by schools and other institutions by fax or email. The respondents also submit that the changes to JAS's online presence in Australia that were made in 2018 and in 2022 made no material difference.

43    The respondents accept that JDS has a substantial reputation in its core markets in respect of sales from the stores located in those places. But they say that JDS's reputation is geographically limited, while JAS's reputation is (relevantly) Australia-wide.

44    Insofar as there is overlap between the geographic extent of those reputations, the respondents' submission is that JAS has been carrying on business for some 20 years in an area that includes JDS's core markets, and it would not be appropriate to grant an injunction restraining it from continuing to do so.

45    The respondents say further that it is JDS's own conduct (the subject of the cross-claim) that may be leading consumers into error.

The Representations are pleaded to be false

46    To return to the SOC, JDS pleads matters that falsify each of the Representations; essentially, that JDS is not JAS and there is no affiliation between them. The respondents admit the truth of those matters, but deny having made the Representations. So the issue is not whether the Representations were false; it is whether they were made at all.

47    JDS submits that a large number of consumers have in fact been misled. It says that while this is not necessary to be proved in order to establish misleading or deceptive conduct or passing off, it does stand as evidence of those things.

Breaches of the ACL

48    JDS then pleads, in effect, that the Representations were misleading or deceptive conduct in breach of s 18 of the ACL. It also pleads breaches of prohibitions in s 29(1) of the ACL on making false or misleading representations that:

(a)    goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits (s 29(1)(g)); and

(b)    the person making the representation has a sponsorship, approval or affiliation (s 29(1)(h)).

Each of JAS and JAA are said to have contravened these provisions.

49    Again, all of that is denied.

50    It was made clear in opening submissions that the respondents do not dispute that if the Representations were made, they were made in trade or commerce. Nor do they take any point that the Representations were not made in Australia, or not made in the course of carrying on business in Australia. Finally, the respondents do not dispute that if the Representations as pleaded were made, they concerned, among other things, the subject matter covered by each of s 29(1)(g) and s 29(1)(h) of the ACL.

51    As a result, if JAS or JAA did make any of the Representations, and if they were misleading or deceptive or likely to mislead or deceive, then breaches of each of s 18, s 29(1)(g) or s 29(1)(h) would be established (noting that in this case, at least, there is no relevant difference between the prohibition on conduct that is misleading or deceptive or likely to mislead or deceive, and the prohibition on making false or misleading representations: see Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; (2020) 278 FCR 450 (TPG FCAFC) at [20]-[21]; Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; (2023) 277 CLR 186 at [84]; Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Limited [2014] FCA 634 at [40].

Accessory liability

52    JDS alleges that each of JAS and JAA has been involved in the contraventions of the other, by aiding, abetting, counselling or procuring it, by being directly or indirectly knowingly concerned in it, or by being party to it. These pleas are based on the pleas as to the shareholding relationship between JAS and JAA along with the pleaded role that each is said to have taken in operating the JAS AU Site and fulfilling orders and providing Australian customer service.

53    Further, each of JAH and PCP, the shareholders in JAA, are said to have been involved in JAA's contravening conduct. JDS pleads their involvement by reason of directors in common with JAA, being Mr Thompson and Mr Venus for JAH and Mr Baumgartner for PCP. JDS also relies on obligations which arise under a Shareholder Deed concerning JAA that was executed in April 2022 (SOC paras 4, 5).

54    The respondents deny all these pleas of involvement. They say that the allegations about JAH and PCP's liability should be struck out and the claims against those respondents dismissed.

Passing off

55    JDS effectively relies on the same alleged conduct in order to plead that each of JAS and JAA have engaged in the tort of passing off. JAA's alleged involvement in the making of the Representations is said to make it a joint tortfeasor with JAS. The various shareholding relationships, and the Australian information on the JAS AU Site, are said to mean that each of JAS and the third and fourth respondents are joint tortfeasors with JAA.

56    Again, all this is denied and, further, it is said that the claims against the third and fourth respondents should be dismissed.

Relief

57    JDS then pleads that the respondents will continue with their conduct if not restrained and that they have refused to give undertakings. It pleads that it has suffered and is likely to continue to suffer loss and damage, including misappropriation of its goodwill, damage to reputation of its business, lost sales, an (unspecified) lost licensing opportunity, and user damages. It is also pleads that the respondents have profited from the conduct. All this is denied. The respondents submit that JDS has adduced no evidence of actual loss.

58    It will not necessary to quantify either loss or damage or profits in these reasons. An order has been made that all issues of liability, including entitlement to (but not quantum of) damages, are to be heard and determined prior to the question of the quantum of any pecuniary relief to be awarded.

Delay

59    In addition to the denials already mentioned, the respondents plead some further defences, based on lapse of time. JDS joins issue with each of them.

60    The respondents plead a limitation defence in respect of both the ACL and the tort of passing off. They accept that in in the ACL context, however, this only affects the claim to damages (see s 236(2)), since there is no six year limit on the grant of injunctive relief (see s 232).

61    JDS's primary position on the limitation defence is that the conduct of which it complains only started in October 2018, so it is within the six year limitation period. It makes no claims for any damage suffered before that time.

62    The respondents also rely in a different way on what they say is JDS's delay in seeking relief. It is pleaded that JDS has been aware of JAS's business in Australia since about 2010, alternatively since 2015 or 2019 and (in effect) did not object to it or take action for redress against JAS until 2022.

63    The awareness in 2010 is said to have come about because Mr Thompson emailed Mr Boercamp in that year telling him that JAS was undertaking trade in Australia and Mr Boercamp acknowledged receipt. Alternatively, Mr Boercamp's knowledge of JAS's activities in Australia should be inferred from his activities in 2015 registering certain domain names containing the text strings 'jacksons' and 'art' and 'supplies. Alternatively, on Mr Boercamp's own evidence he became aware of those activities in 2019.

64    While the respondents pleaded estoppel or waiver as a result of this delay, they identified no change of position on its part in reliance on anything JDS did or omitted to do, and those claims were not pressed. The respondents rely on the alleged delay as a reason why the Court should decline relief as a matter of the exercise of its discretion.

65    JDS joins issue with JAS's allegations of delay. It submits that JAS's trading in Australia changed materially when the JAS AU Site was launched in October 2018, and further changed materially when JAA's business operations, and what JDS pleads as JAS's 'Australian physical presence', commenced in mid-2022. It made demand in June 2022 and commenced this proceeding in December 2022. So it says that there has been no delay.

66    As for JDS's knowledge of JAS's activities, it admits that Mr Boercamp knew from 2010 that there was an online business selling art supplies, but contends that he (and JDS) did not know that JAS was selling products to Australian consumers until 2019.

67    The respondents also rely on the matters raised in their cross-claim as a further discretionary consideration against granting relief. I will describe those shortly.

68    JDS raises in answer to any discretionary ground that it is not in the public interest to permit consumers to continue to be misled, and this would be contrary to the purposes of the ACL.

Relief claimed by JDS

69    JDS's amended originating application claims:

(a)    declarations of contravention;

(b)    a permanent injunction restraining each of the respondents from offering, promoting or selling in Australia (in effect) arts and craft products under the JAS Names:

whereby such conduct involves:

(i)    using an Australian sub-domain or a website with content specific to Australian users;

(ii)    operating a warehouse, distribution facility or other physical presence located in Australia;

(iii)    the operation of an Australian telephone number, or is otherwise targeted at Australian consumers;

or from being involved in or joint tortfeasors in such conduct;

(c)    a permanent injunction restraining the respondents from making the Representations in Australia (or involvement or being joint tortfeasors);

(d)    an order for a corrective notice;

(e)    an order that JAS geo-block access to the JAS AU Site by persons located in Australia;

(f)    delivery up (of what is unclear);

(g)    damages under s 236 of the ACL;

(h)    damages or an account of profits for passing off;

(i)    interest; and

(j)    costs.

70    The respondents deny that JDS is entitled to any relief.

71    As has been said, the trial did not concern the quantum of any pecuniary relief to be awarded.

The issues in detail - the cross-claim

JDS's various uses of the JAS Names

72    JAS cross-claims against JDS and Mr Boercamp. The cross-claim relies on many matters alleged in the pleadings for the principal claim, and here I will only describe the issues that have not already been joined as a result of those pleadings.

73    The cross-claim essentially arises out of what is said to have been JDS's use of the names 'Jacksons Art' and 'Jacksons Art Supplies' from about May 2022. JAS pleads that JDS did not use those names before that time. The cross-respondents deny this, relying on their contention that JDS has been known as 'Jacksons Art' and 'Jacksons Art Supplies' for many years.

74    It is common ground that on 23 May 2022, JDS applied for and obtained registration of the business name 'Jacksons Art'. JDS submits, however, that it is not misleading to register a business name and there is no evidence that JDS has actually used it.

75    JDS also submits that whether the conduct is misleading is to be assessed as at when it commenced, and that the evidence does not establish that in May 2022 consumers in Australia had sufficient awareness of the JAS Names to mean that any use of them by JDS was misleading. JDS says further that to the extent that JAS did develop a reputation in Australia, that ought to be disregarded for the purposes of the cross-claim, as it is the result of JAS's own wrong. These submissions apply, not only to the registration of the business name, but to the other kinds of misleading conduct pleaded in the cross-claim as are about to be described.

76    It is also common ground that from August 2022 to the present, the 'About Us' page of the JDS Website contained the following paragraph:

Whether you're a painter looking for the best brushes, an illustrator looking for coloured pencils or even someone who wants to get into pottery, Jacksons Drawing Supplies Pty Ltd, ('Jacksons' or also known as 'Jacksons Art Supplies') has all the art supplies you need …

77    JAS pleads that this is an ongoing representation that JAS and JDS were one and the same or that JDS was affiliated with JAS. The cross-respondents deny this and allege that it was in any event true that JDS was known as 'Jacksons Art Supplies'.

78    It is further common ground that on 22 May 2022 JDS registered the following domain names:

(a)    jacksonsart.com.au;

(b)    jacksonsartaustralia.com.au;

(c)    jacksonsartsupplies.com.au; and

(d)    jacksonsartsupplies.com;

and the following further domain names on 27 July 2022:

(e)    jacksonsart.au;

(f)    jacksonsartaustralia.au; and

(g)    jacksonsartsupplies.au.

(all together, Contested Domains). It is also common ground that all of the above domains redirect to the JDS Website.

79    The cross-respondents say that since May 2015, JDS has registered similar domain names and that the above registrations were part of that conduct, which commenced earlier. However the respondents are time barred from making a claim based on that earlier conduct.

80    The cross-respondents deny in any event that this was misleading or deceptive conduct. As well as their submissions as to JAS's Australian reputation or lack thereof, they submit that the Contested Domains do not show up in an internet search, and that consumers are not likely to enter them into a browser.

81    It is further common ground that on 8 August 2022, Mr Boercamp caused a company called Jacksons Art Supplies Pty Ltd to be incorporated in Australia, with him as its sole director and Canmore Holdings Pty Ltd its sole shareholder. JAS denies that the mere incorporation of a company can be misleading, and it is common ground that the company has never traded.

82    It is also common ground that at some time before July 2022, JDS updated the metadata keywords of the JDS Website to include 'Jacksons Art Supplies'. The particulars to this allegation say that '"metadata keywords" or "meta tags" are tags which provide search engines, such as Google, information about the content of the website to assist in search engine optimisation (i.e. high[sic] a particular website ranks in the results when a particular search term is used)': Statement of cross-claim filed on 24 June 2024 (SOCC) para 13.

83    The cross-respondents deny these allegations on the basis of their submissions about JAS's Australian reputation and also because it says that the particular metadata keywords had no impact on the results of a web search.

84    To be clear, while the bare elements of the above conduct are largely common ground, the knowledge with which the cross-respondents engaged in it is not. They essentially deny that they knew from 2010 that JAS was selling products to Australian customers using the JAS Names.

JDS and Mr Boercamp's liability

85    JAS pleads that all of the above conduct was conduct in trade or commerce that was misleading or deceptive or likely to mislead or deceive in breach of s 18 of the ACL, and also that it contravened s 29(1)(h) (misrepresentations regarding sponsorship, approval or affiliation).

86    The cross-respondents admit that their conduct was in trade or commerce, but deny that it was misleading or deceptive or involved misrepresentation.

87    JAS further pleads that JDS engaged in the conduct with the alleged knowledge, and intending to mislead consumers into believing that JAS and JDS were one and the same or affiliated, and that in purchasing products from JDS they were purchasing from JAS or a business associated with it, so as to wrongfully divert business away from JAS. The cross-respondents deny this. It appears that the knowledge with which the conduct occurred is said to be relevant to relief.

88    The conduct is also said to be passing off by JDS.

89    Mr Boercamp is pleaded to be liable under the ACL because of involvement in JDS's impugned conduct, or as a joint tortfeasor. While the cross-respondents deny this in their defence to the cross-claim, in opening their senior counsel properly accepted that if JDS is found to be liable for misleading or deceptive conduct or passing off, then Mr Boercamp would also be liable, as a person involved in the conduct for the purposes of s 2 of the ACL, or as a joint tortfeasor.

Loss or damage and relief

90    Whether the conduct of JDS and/or Mr Boercamp caused JAS to suffer loss and damage is also in issue.

91    The relief that JAS claims in the cross-claim is:

(a)    declarations that JDS and Mr Boercamp have contravened s 18(1) and s 29(1)(h) of the ACL;

(b)    mandatory and prohibitory injunctions of various kinds;

(c)    damages pursuant to s 236(1) of the ACL and at common law;

(d)    interest; and

(e)    costs.

The issues in overview

92    In overview, then, the Court needs to determine the following questions:

(1)    The extent to which JDS has a reputation in Australia under the names 'Jacksons' or 'Jacksons Drawing Supplies' and, also, the extent to which it has a reputation and goodwill as 'Jacksons Art' or 'Jacksons Art Supplies'. In particular, JDS's reputation as an online vendor of art supplies, and its reputation generally outside its core markets. It will be convenient when dealing with this issue to identify the class of persons who were aware of that reputation. The effect of JAS's alleged conduct on ordinary and reasonable members of that class will need to be assessed in order to determine whether the conduct is misleading or deceptive.

(2)    The extent to which JAS has traded in and acquired a reputation in Australia since 2005. It is part of JDS's case that JAS's activities in Australia were not substantial, or known to JDS, until after the introduction of the JAS AU Site in 2018. Mr Boercamp's evidence is that he did not become aware that JAS was 'targeting the Australian market' until May 2019. As described immediately below, the extent and nature of JAS's reputation in Australia is also relevant to JAS's case that Australian consumers have not been led to believe that JAS was or was associated with JDS. JAS's reputation is also relevant to its argument that, as a matter of discretion, the Court should not grant an injunction restraining it from trading under the JAS Names anywhere in Australia.

(3)    Whether, by the specific conduct alleged to have occurred since October 2018, JAS or JAA have made the Representations, which are broadly to the effect that they are, or are associated with, JDS, or that the products they offer are products of JDS. JAS maintains that the primary brand names used respectively by JDS and JAS are distinguishable. It contends that it had its own reputation attached to the JAS Names so that using those names is likely to lead consumers to correctly identify JAS as the company that is offering and selling its goods. JAS further seeks to distinguish its reputation from that of JDS by emphasising the entirely online nature of its business in Australia, combined with its promotion of itself as a United Kingdom based company. This is compared with what JAS says is JDS's largely brick-and-mortar presence, confined to its core markets. The respondents also characterise JAA as a mere 'fulfilment provider', and so not making any Representations itself.

(4)    Whether, if the Representations were made, they were misleading or deceptive, or constituted the tort of passing off. It is not really in issue that if JAS did indeed represent that it was or was associated with JDS, that was wrong, and therefore misleading. But it will be necessary at this point to consider voluminous evidence about confusion or error on the part of individuals.

(5)    Whether JAS and JAA were involved in each other's alleged contraventions, or were joint tortfeasors, and whether the third and fourth respondents were involved in JAA's alleged contraventions, or were joint tortfeasors.

(6)    Whether the conduct by JDS that is the subject of JAS's cross-claim - referring to itself as 'Jacksons Art Supplies' on the JDS Website, registering 'Jacksons Art Supplies' as a business name, registering the Contested Domains, incorporating Jacksons Art Supplies Pty Ltd and adding 'Jacksons Art Supplies' to the metadata of the JDS Website - misrepresented that JDS was JAS or affiliated with it, or that the products it was offering were products of JAS, or whether that conduct was passing off.

(7)    JDS's entitlement to relief if the contraventions of the ACL or the tort of passing off are established. Also, in particular, whether JDS's alleged delay in acting means that its claims are time barred, or whether it is a reason to refuse discretionary relief. More broadly, whether the injunctions sought are appropriate, including because of the effect they will have on what is said to be JAS's established trade in Australia. Further, whether the conduct alleged in the cross-claim is a reason to refuse discretionary relief.

(8)    JAS's entitlement to relief on the cross-claim, including whether it has suffered loss or damage.

93    After commenting briefly on the witnesses, these reasons will be structured by reference to the above list of the issues in overview.

III.    THE WITNESSES

94    It is only necessary to comment briefly on my general impression of each of the witnesses.

The lay witnesses

Michael Franciscus Boercamp

95    Mr Boercamp is the sole director and Managing Director of JDS and, with his wife Jennifer, the effective owner of the company. He has run the business and owned it with his wife since buying it from Kevin Jackson in 2010. For some 15 years before that, he worked in senior positions at JDS. He evidently has a dedication to the business and is proud of its long history.

96    Mr Boercamp's credibility did come under attack. I will address those attacks in more detail when I make findings of fact. For now, it is sufficient to say that I consider that he was an honest witness. He struck me as a careful person who was doing his best to give his evidence truthfully. He was notably prepared to make concessions about matters that harmed JDS's case including, as mentioned below, that JDS had presented no evidence of actual sales outside of its core markets. To the extent that attacks on his credibility pertained to the reliability of his memory rather than the honesty of his evidence, I do not consider that his memory was any more or less reliable than one would expect of a person in his position.

97    It is true that at times, Mr Boercamp displayed a level of wariness in responding to the cross-examiner that got in the way of giving straightforward answers to questions. But that is unremarkable on the part of a person who, I expect, had little experience in the witness box. Such a person is naturally going to be defensive when interacting with counsel representing his opponent.

98    It is also worth noting my impression that, during his time as Managing Director of JDS, Mr Boercamp has not been very focussed on the World Wide Web. According to his evidence, he was sufficiently acquainted with it to have developed JDS's early websites. But there is no suggestion that those websites were especially sophisticated or complex. His evidence concerning more recent years displayed an awareness of the web, but no great knowledge of how it and commerce on it work, nor any great interest in that matter.

99    This impression I formed cuts both ways for JDS. It tends to support its case that Mr Boercamp was unaware of JAS's activities in selling art products in Australia. But it also lends credence to the respondents' case that JDS's presence on the web was an insignificant part of its business.

100    There was a peripheral controversy about the fact that JDS's Marketing Manager and Mr Boercamp's daughter, Ashleigh Burstein, did not give evidence. I will deal with that below. Subject to that, there was no suggestion that Mr Boercamp delegated the web commerce side of JDS's business to anyone with more expertise in that area.

Gary Thompson

101    The other main protagonist in the litigation, Mr Thompson, also gave evidence. Mr Thompson is a director of JAS and, as Executive Director, is involved in the day to day operations and management of JAS's business. He is responsible for the technology and development, marketing, sales and general operations arms of the business.

102    Mr Thompson was relaxed in the witness box. He listened to the questions asked and answered them carefully without undue hesitation or qualifications. He readily made a number of concessions, mostly about the role of JAA and the company through which JAS controls it, the third respondent JAH. Mr Thompson did not argue with the cross-examiner. He presented as a sophisticated business person, as one would expect of someone who appears to have built a successful worldwide online art supply business.

103    Although there was no direct challenge to the honesty of Mr Thompson's evidence, he was challenged on the appropriateness of his conduct in connection with the alleged confusion (at least) that customers experienced between JDS and JAS. Mr Thompson was unperturbed by those challenges, and his answers in connection with them had the ring of truth. I will deal with JDS's criticisms of Mr Thompson's conduct to the extent necessary below; for now I only need record that in my view, Mr Thompson gave his evidence honestly.

Franz Christoph Baumgartner

104    Mr Baumgartner is one of three directors of JAA and, together with his wife Magrifa Sadri, is responsible for JAA's operation in Australia. He is also a director and shareholder (along with Ms Sadri) of PCP, the fourth respondent and 10% shareholder of JAA. Mr Baumgartner's evidence was not challenged. Essentially, he was cross-examined in order to adduce evidence about matters which, JDS says, support the primary and accessory liability of JAA and the accessory liability of PCP. His answers and demeanour in the witness box were straightforward and I accept that he gave his evidence truthfully.

Michael Venus

105    Along with Mr Thompson, Mr Venus is the other founding director of JAS. Mr Venus does not have an operational role. He gave his evidence by video link from England. His credibility was not challenged, although the reliability of his evidence about the alleged exchange of emails alleged to have taken place between Mr Thompson and Mr Boercamp in 2010 was. I will comment on that below; for now it is enough to say that, as with the other witnesses, I did not form the view that Mr Venus's memory was either more or less reliable than one would expect of a person in his position. I am satisfied that he gave his evidence honestly.

The expert witnesses

Ryan Jones

106    Mr Jones was the sole expert witness called by the respondents. By agreement, he gave his evidence before the evidence of JDS's sole expert witness, Michael Simonetti. That is because Mr Simonetti's evidence took the form of commentary on Mr Jones's.

107    Mr Jones is an expert in digital marketing with over twenty years' experience in the area. He has expertise in search engine optimisation (SEO) which his report describes as follows:

Search engine optimisation, or SEO, is the process of improving the quality and quantity of website traffic to websites or a specific web page from search engines. It is about making a website more visible and attractive to search engines, so that it ranks higher in search results and gets more organic (not-paid) traffic.

108    In broad terms, Mr Jones's evidence concerned the presence on the World Wide Web of each of JDS and JAS. He gave evidence about the 'organic' traffic to each site (meaning web users finding a site through search engine queries or other avenues that do not involve paid or sponsored/advertising links). He also gave evidence about the traffic to each site as revealed by Google's Analytics service - or not revealed, as the subject was controversial and will take up much space below. Another subject of Mr Jones's evidence was the relative ranking of each of the two websites when various keywords were used to conduct web searches. Finally, he gave some evidence about how the JAS Website has been configured.

109    Mr Jones's expertise to give evidence in each of these areas was not challenged and I accept that he was suitably qualified to give it. What was challenged (albeit not strongly) was Mr Jones's impartiality and independence. I did form the view that Mr Jones was minded to give evidence that favoured the respondents' case where possible. That was not because he was especially argumentative in the witness box. It was because, on the subject of the reliability of Google Analytics, he appeared to draw conclusions adverse to JDS from the evidence about the traffic on the JDS Website, and a different conclusion, favourable to the respondents, from the evidence about the traffic on the JAS Website, when the difference between the two pieces of evidence was not apparent on its face. Mr Jones gave no real explanation for why apparently similar evidence led to different conclusions. I will explain further when I come to consider the Google Analytics evidence in Section V below.

110    I also had a broader concern that Mr Jones did not adequately explain the course of reasoning behind his evidence, as an expert witness should do: see e.g. Makita (Australia) Pty Ltd v Sprowles [2001] NSWCA 305; (2001) 52 NSWLR 705 at [67]-[68]. There was no objection to the admissibility of Mr Jones's evidence on this basis, but it has affected the weight I give that evidence.

Michael Joseph Peter Simonetti

111    As has been indicated, Mr Simonetti was the expert called by JDS to respond to Mr Jones's report. Mr Simonetti is the founder of a digital marketing agency called AndMine Pty Ltd. He has over 25 years' experience in the fields of website development, software engineering and online media and marketing. He has computer science, software engineering and telecommunications qualifications. His experience includes providing SEO services, optimising client websites and analysing website visitor information through platforms such as Google Analytics.

112    Once again, no issue has been raised about Mr Simonetti's expertise to answer the questions asked of him in this proceeding. He presented as calm and impartial in the witness box. He answered confidently but without veering into advocacy. Despite a very thorough cross-examination, his evidence was largely unshaken. And as discussed below, that evidence was generally supported by reasoning albeit reasoning I have not accepted in every respect. I have generally been disposed to put weight on Mr Simonetti's evidence and, where it conflicts with that of Mr Jones, have been disposed to prefer the evidence of Mr Simonetti.

IV.    JDS'S TRADING AND REPUTATION IN AUSTRALIA

Principles

113    As already explained, in this proceeding there are issues as to the nature and extent of JDS's reputation. A question also arises about the time at which it is to be assessed.

114    Reputation is of the essence of the cause of action of passing off (Scandinavian Tobacco Group Eersel BV v Trojan Trading Co Pty Ltd [2015] FCA 1086 at [101] (Allsop CJ)), but it is not a necessary precondition to a claim under s 18 of the ACL: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70; (2007) 159 FCR 397 at [99]. Nevertheless, it will be common that the basis on which the use of a name is said to be misleading is that the trading name of the applicant has sufficient reputation among a relevant class of persons to mean that they associate the name with the applicant: see e.g. Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 3) [2017] FCA 865 at [91] (Mortimer J).

115    For this purpose, evidence of sales can suffice to establish reputation. In Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited [2007] FCA 200 at [58], Bennett J explained:

In McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335 at [81]-[88], Kenny J discussed the evidence necessary or sufficient to establish reputation in a trade mark. Her Honour pointed out that evidence of sales and advertising may be sufficient to establish reputation despite the absence of any direct evidence of consumer appreciation of the mark, as opposed to the product: 'public awareness of and regard for a mark tends to correlate with appreciation of the products with which the mark is associated, as evidenced by sales volume, among other things': McCormick at [86]. Such factors may also establish the reputation necessary to found a case for passing off and contravention of s 52 of the [Trade Practices] Act: for example, Pacific Publications Pty Ltd v Next Publishing Pty Ltd (2005) 222 ALR 127; 65 IPR 58; [2005] FCA 625 at [12]-[14].

116    Other matters that are typically relied on to establish reputation are the extent and nature of the advertising, marketing and promotional activities of the applicant and the length of time, and geographical area, in which these activities have taken place: Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82 at [238] (O'Bryan J).

117    Ultimately, the question of reputation is a question of fact that depends on the evidence in the particular case. In Knott Investments Pty Ltd v Winnebago Industries Inc [2013] FCAFC 59; (2013) 211 FCR 449 (Winnebago (No 1)) at [14], Allsop CJ summarised the position as follows:

What is required is proof of a substantial number of persons (whether residents or visitors) who were aware of the applicant's product and who were thus potential customers. Such persons represent, in a real sense, a commercial advantage available to be turned to account were the applicant to commence business: ConAgra at 346 (Lockhart J), at 372 (Gummow J) and at 377 (French J). The size and extent of the class of such potential customers may vary according to the circumstances of the case and will be measured by reference to the relevant group or section of the public likely to be potential customers. Here, such persons would be prospective buyers, hirers or users of recreational vehicles, being the class of persons who would be likely customers, whether direct or indirect. The relevance and importance of there being a substantial number flows from the need to show real damage by the deception caused by the respondent's conduct.

118    In my respectful view, the following passage from French J's judgment in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 380-381 sheds light on the meaning of 'a substantial number of persons' in this context:

The nature of the question to be asked about McCain's conduct for the purposes of s 52, Trade Practices Act is to be borne in mind in considering the correctness of the approach taken by his Honour. The question is one of characterisation of the conduct, not of the reactions of consumers or others to that conduct. So where some express representation is made and that representation is demonstrably false, it is not usually necessary to go beyond that finding in order to conclude that it is misleading or deceptive. The case of an obvious puff might be taken as an exception. Where conduct depends upon context or surrounding circumstances to convey a particular meaning, then those factors must be taken into account but only as a way of characterising the conduct. Where the name and get-up of a product are in issue, the question for the purposes of s 52 is whether they are misleading or deceptive in the circumstances. The fact that some members of the relevant public may be aware of a similar product in another country does not affect the characterisation of the conduct if that number is small. The word 'insignificant' was used by his Honour to identify the threshold of public awareness below which such conduct is not misleading for the purposes of the section. That word is normative but not for that reason inappropriate. Attention must be paid to the policy of the relevant provision which, as the heading to Pt V and many of its provisions indicate, is one of consumer protection. If the similarity complained of is commercially irrelevant having regard to the number of people who know of it, then it can be concluded that the use of the name and/or getup complained of is not misleading or deceptive. That is essentially the kind of evaluation which underpinned his Honour's finding in this case and on the primary facts that he found I am not persuaded that he erred in his approach.

119    As to the interaction between the formulations 'substantial number of persons' and 'not insignificant number of persons' see the analysis of Yates J in Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380 at [335]-[342]. I respectfully agree that the differences between the two phrases in the present context are differences of expression rather than substance.

120    The requirement in these authorities that there be a substantial (or not insignificant) number of persons aware of the applicant's reputation might be thought to be inconsistent with the subsequent clarification by Full Courts that, at least at the stage of assessing contravention, there is no need to show that the impugned conduct is likely to have misled or deceived any 'not insignificant number' of members of the class of persons in question: TPG FCAFC at [23]; and Trivago N.V. v Australian Competition and Consumer Commission [2020] FCAFC 185 at [192].

121    However that thought would not be correct. The requirement of a substantial number of persons concerns the extent of the applicant's reputation as a contextual element of a claim of misleading conduct which is important in cases like the present one. It is the existence of a sufficiently extensive reputation connected with a name, mark or get up that leads to people being misled, if the impugned conduct associates the respondent with that reputation. If a reputation of that kind is not established, then the alleged conduct may well be, in French J's words, 'commercially irrelevant' (ConAgra at 380-381). That is the effect of the analysis of this point which Beach J conducted, in the context of another misleading conduct claim analogous to passing off, in State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137 at [730]-[744].

122    The different principle confirmed in TPG FCAFC simply acknowledges that it is no part of the statutory prohibition now found in s 18 of the ACL that any minimum number of people are to be misled.

123    JDS submits that it is not necessary to establish that it had a reputation in connection with the JDS Names in order to succeed in its claim. But while that might be correct as an abstract statement of the content of the statutory prohibition on misleading conduct, for the reasons just explained, I do not consider that it takes matters very far in practice. As will be seen, the essence of the claim made by JDS is that by conduct involving the use of the trading names which are the same as or similar to the JDS Names, JAS conveyed to consumers of art products that it was or was associated with JDS. It is impossible to see how those consumers could have been led into such error if they did not already associate the JDS Names with JDS's business. And to say that a substantial (or not insignificant) number of consumers made that association is to say that JDS's business had a reputation that was associated with the JDS Names.

124    Consistently with that, as set out below JDS adduced evidence to establish that it had such a reputation. While the respondents did not contest that in respect of consumers located in Western Australia and the Northern Territory, the extent to which JDS had a reputation in Australia outside those jurisdictions was controversial. The respondents submit that the evidence only establishes a reputation for JDS within its core markets.

125    I will consider that evidence below. But before doing so it is necessary to discuss a matter on which JDS relies which is not evidence, namely the Full Court authority of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; (2017) 251 FCR 379. JDS submits this case means that to establish a substantial reputation in Western Australia is to establish a reputation in the rest of Australia. That is so at least in the context of a national industry and particularly so where the industry concerns specialised products or services. JDS relies on Pham heavily, and in relation to points of critical importance, so it is necessary to examine the case closely.

126    Pham involved disputes about registered trade marks but also claims of breach of s 18 and s 29 of the ACL and passing off. While most of the findings about to be described were made in the trade mark context, the Full Court said that its analysis of the factual substratum was relevant to the misleading or deceptive conduct and passing off issues as well: Pham at [58].

127    It was common ground that the mark of the respondent, Insight Clinical Imaging (ICI), had acquired a reputation in and around Perth before the relevant time, in respect of radiology services: Pham at [60]. The evidence also established that Insight Clinical Imaging 'had extended its marketing and advertising beyond the boundaries of its operations within Western Australia through its website and promotions at national conferences': Pham at [62]. That included evidence of Google Analytics data, another controversial topic that will be addressed below.

128    The primary judge had found that 'whilst some radiology providers may carry on business in a localised area, they operate in a national industry so that there is a potential for deception or confusion even if Insight Clinical Imaging's marks had not acquired a reputation beyond Western Australia': Pham at [65]. Her Honour found that the marks had not acquired a 'substantial reputation' outside that state: Pham at [65]. Her Honour found, however, that 'the likelihood of deception or confusion is not mitigated by the different geographical locations in which the parties have been conducting business because they operate in a national industry': Pham at [65] (emphasis added).

129    The Full Court (Greenwood, Jagot and Beach JJ) found that there was ample basis to support the finding just emphasised: Pham at [69]. At [71] the Full Court said:

The nature of the good or service in question which the mark is to distinguish necessarily informs the identification of the relevant class of persons who may be deceived or confused. It also informs an understanding of the characteristics of that class which will be relevant to the potential for deception and confusion. As a result it necessarily informs an evaluation of the sufficiency of the number of persons within the relevant class who are likely to be deceived or confused. Accordingly, an evaluation of the sufficiency of ICI's reputation across Australia necessarily called for consideration of the nature of the service which ICI's marks distinguished. The national nature of radiological services, as found by her Honour and not challenged in this appeal, was (and is) fundamental to the issue of the sufficiency of ICI's reputation across Australia.

130    Similarly, the fact that Insight Clinical Imaging was conducting a business in Australia in specialised field which operates at a national level was a 'fundamental point': Pham at [79].

131    The Full Court also held that it was neither necessary nor appropriate to lead 'specific evidence' that people participating in the industry (including patients) frequently moved around Australia. And at [79] their Honours said (paragraph references being to the primary judgment):

In particular, in the present case:

(1)    it was common ground that ICI had a substantial reputation in its mark in Western Australia;

(2)    the primary judge found that ICI's mark distinguished its services in the specialised field of radiological or clinical imaging service (at [88]), and there is no challenge to that finding;

(3)    the primary judge found that this specialised market operated on a national basis (at [89] and [146]), and there is no challenge to that finding; and

(4)    it is common knowledge and not reasonably open to question that people travel freely between the States and Territories in Australia and, as such, proof of that fact was unnecessary under s 144 of the Evidence Act 1995 (Cth).

132    After quoting from ConAgra, their Honours proceeded as follows (emphasis added):

[81]    ConAgra was decided 25 years ago. In 1992 the World Wide Web was in its infancy. There were no publicly available internet browsers. There was no Google, no Seek, no web browsing or the like. With the internet and travel both overseas and within Australia now ubiquitous in the lives of Australian people, the essential conceptual underpinning of IR's [the appellant's] case is unsound. IR accepted that, before IR conceived of the IR composite mark, ICI had acquired a substantial reputation in its marks in Western Australia. IR's case depended on the proposition that ICI's reputation in its marks did not extend outside Western Australia and IR would accept any condition or limitation not to use its marks in Western Australia. We accept that the Act permits a condition or limitation to this effect to be imposed (discussed below). But the reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation. Given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in Western Australia in this national industry constituted a sufficient reputation in and across Australia for s 60(b) [of the Trade Marks Act 1995 (Cth)] to be engaged. IR's attempts to subdivide the nation into its component States and Territories, in the present context at least, could not succeed. Its approach resonates with sentimental notions of pre or early Federation train track gauge differences.

[82]    With these matters in mind, we consider that the primary judge correctly concluded that ICI's reputation across Australia was sufficient to render IR's proposed disclaimer, condition or limitation irrelevant for the purpose of s 60. ICI's reputation within Western Australia, given the national market and its specialised nature, was itself a reputation in Australia because of which IR's composite mark would be likely to deceive or cause confusion amongst a sufficiently substantial number of the relevant class which, as we have said, must have included radiographers and radiologists, and was not confined to referrers and patients; further, her Honour correctly held that ICI's marks also had some reputation outside Western Australia.

133    The Full Court applied these conclusions to the ACL and passing off cases, without modification or further discussion: Pham at [95]-[96]; see also at [108].

134    It is important, of course, not to confuse the ratio of Pham, which if applicable is binding on me, with findings of fact based on the particular evidence before the Court in that case. The question of reputation is, after all, a question of fact: Urban Alley at [238]. In my respectful view, the statement that is not necessary to prove that people travel freely between the States and Territories in Australia is part of the ratio of Pham, and I will proceed on that basis. Other general observations about the impact of such freedom of movement and of the internet on the acquisition of a reputation also contain, with respect, much that is well known and common sense, and while the Full Court does not expressly say so, I consider that proof of those matters is not required either.

135    But I have emphasised other phrases in the quotes above to highlight how care must be taken before moving from judicial notice of those broad matters, to any general proposition that to establish a reputation in one state is to establish a reputation in them all. It was central to the Full Court's views that Insight Clinical Imaging was operating in a 'national industry' with particular characteristics such as national registration for radiographers, a national industry association, a national regulatory body, the exchange of radiology images for assessment and interstate recruitment: see Pham at [66]-[69]. I will return to the effect of Pham when considering the evidence of the extent of JDS's reputation below.

At what time to assess JDS's reputation (and JAS's conduct)?

136    It is necessary to identify a time at which the nature and extent of JDS's reputation is to be assessed. A company's reputation among consumers may fluctuate so the time that is identified may prove to be important.

137    JDS submits, and I accept, that the Court must assess the applicant's reputation, and the respondent's allegedly misleading conduct, at the time at which the conduct commenced: see Mortgage House of Australia Pty Ltd v Mortgage House International Pty Ltd [2004] FCA 1279 at [63] (Beaumont J); Optical 88 Limited at [328]-[334]; Los Carnales Pty Ltd; in the matter of Cartel Del Taco Pty Ltd [2022] FCA 1053 at [8]-[9] (Goodman J) and authorities cited there; Global Retail Brands Australia Pty Ltd v Bed Bath 'N' Table Pty Ltd [2024] FCAFC 139 (Bed Bath 'N' Table FC) at [67] (Nicholas, Katzmann and Downes JJ).

138    The way in which JDS has run its case here, however, begs the question: 'which conduct?'. JAS has used the JAS Names in selling art products to Australian consumers from at least 2005. But JDS does not impugn any conduct before October 2018. It submits that only then did JAS start to 'target Australian consumers'. Does its pleading mean that the latter date is the one at which reputation and conduct are to be assessed?

139    Many statements can be found in the authorities to the effect that the conduct in question is the conduct of which complaint is made: Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289 at 302 (Gummow J); Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618; (2000) 100 FCR 166 at [123] (Moore J); Mortgage House at [63]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2014] FCA 568 at [459]-[460] (Murphy J). In the last two of these cases, at least, there appears to have been a question as to when that conduct commenced.

140    In Telstra Corporation, Telstra had pleaded that the respondents' conduct from 2005 was misleading or deceptive, but at trial it also tried to rely on a reputation it said it had developed from 1996. Murphy J was disposed to hold Telstra to the date that it had pleaded, but in the end took a 'cautious approach' and considered Telstra's reputation as at both 1996 and 2005: see Telstra Corporation at [464]-[465].

141    In Mortgage House, Beaumont J looked to the originating application, and identified that the conduct complained of included the use of the name 'Mortgage House International' and any other name including the words 'Mortgage House'. His Honour entertained several alternatives that had been put by the parties as to when this conduct had in fact commenced. In the end he did not need to choose between those alternatives because whatever the choice, he found that the conduct complained of commenced before the applicant had established the necessary reputation to support an action in passing off or under the Trade Practices Act 1974 (Cth): see Mortgage House at [63]-[71].

142    In neither case did the Court find it necessary to identify a single relevant time. At a level of principle, though, I respectfully agree with the following observations of Goodman J in Los Carnales at [12]:

the question is one of substance rather than form, and cannot be defined by the extent of an applicant's knowledge of a respondent's conduct, or by the manner in which an applicant presents its case. As Professor Wadlow opines at [5-310] of Wadlow on the Law of Passing-Off (6th ed, Sweet & Maxwell, 2021): 'Needless to say, the conduct complained of must mean the whole course of the defendant's conduct and not just that of which the claimant was aware or chose to plead'.

143    It could be, then, that although JDS's pleaded case complains only of conduct that took place since around October 2018, in substance the conduct commenced in 2005 (or earlier), when JAS started selling products to Australian consumers using the JAS Names. Or it could have commenced in 2013 when, senior counsel for the respondents submitted, his client started offering products to Australian consumers in Australian dollars.

144    But it was not clear that senior counsel made this submission to support a contention that JDS's reputation should be assessed as at that date (or earlier) in connection with the question of whether its conduct contravened the ACL. In closing submissions, he said that a 'properly constructed cause of action', as distinct from 'an artificially constructed action' would disclose that JDS's real complaint was that JAS started selling in Australian dollars in 2013. But these points were explicitly made in the context of limitation of actions and other consequences of delay, that is, as going to remedies, not contravention.

145    In the end, despite the clear submission by JDS that October 2018 was the relevant point at which JAS's conduct was to be assessed for the purpose of determining whether it contravened the ACL, at no stage did the respondents submit to the contrary. I will therefore approach the question of timing on the basis that it is not in dispute that the question of whether JAS's conduct contravened the ACL is to be assessed as at October 2018.

146    I will take the same approach in respect of the tort of passing off, as the principles for fixing the date to assess reputation and misrepresentation are essentially the same as those that govern s 18 of the ACL: see e.g. Thai World at 302.

The evidence about JDS's reputation

JDS's history and trading

147    The evidence establishes that JDS has been offering specialist art products for sale to consumers for some seventy years. It has done so through physical stores located in Western Australia, and for part of that time, in the Northern Territory. It has made sales also through telephone and fax (particularly with account customers). And as the evidence below shows, since 1997 it has also had a presence on the web in the form of the JDS Website and its predecessor (although, it has not had online sales capability for all of the time since then).

148    The basic history of the business is set out in Section I above. Harry Jackson registered the name 'Jacksons Drawing Supplies' on his move to Perth in 1955. During his development of the business in the 1960s a warehouse and store was opened in Rokeby Road, Subiaco, which became the main headquarters. By 1971, Kevin Jackson was working in the business, concentrating on retailing and sales, while Harry Jackson concentrated on government business. A product label called 'Westart' was established in the 1970s and used on a variety of products including mediums, fixatives, brushes and crayons.

149    The business expanded its network of retail shops into the suburbs of Perth under Kevin Jackson, so that by the early 1990s, according to a history of the business published in the Artists Chronicle on its 50th anniversary, it had 'opened branches in Midland, Balcatta, Victoria Park, Applecross and Fremantle, together with country branches in Geraldton, Mandurah, Bunbury and Busselton'.

150    According to Mr Boercamp, other than the change in control, no significant changes to JDS's business structure were made when Kevin Jackson sold the company to Canmore Holdings Pty Ltd in 2010. By that time, the company had expanded its retail stores into the Northern Territory.

JDS's product range and customers

151    At all material times, JDS has sold art supplies. Mr Boercamp's evidence was ( affidavit dated 29 September 2023 (Boercamp I) para 5):

Since it began operating, the [JDS] Business has sold art products, including: paint products; adhesive products; canvas and 3D design; cutting instruments; [stationery] supplies; pottery supplies; drawing products; drafting supplies; screening and printmaking products; fabrics and materials; craft products; and paper and card products.

152    The art products have been supplied to professional artists, teachers, hobbyists and students. According to Mr Boercamp, fine art products have always formed a part of JDS's product range. In Mr Boercamp's affidavit dated 21 December 2023 (Boercamp III) (para 6.3) he said:

the [JDS] Business has supplied various fine art products including, for example, oil and acrylic paints, canvas, high quality brushes (in addition to other brushes), high quality papers (in addition to other kinds of papers) and dyes. [JDS] supplies these products because professional artists form a significant part of its customer base and, further, it is relatively common for other types of customers, such as teachers, students and hobbyists, to purchase fine art products.

153    During the period 1 July 2014 to 30 June 2016, JDS's accounts divided sales into retail, school and wholesale segments. There was substantial revenue in each of these categories, that is, none of them could be described as trivial or of no moment.

The names under which JDS has traded

154    Mr Boercamp's unchallenged evidence was that from 1955 until 1995 when he joined, JDS referred to its business as 'Jacksons' and 'Jacksons Drawing Supplies'. This continued from 1995 to date. He gave the following examples of the stylisation of the names that has generally been used throughout that time (noting some variations in the second of these, that are not material).

155    Nevertheless, it would be fair to say that, as a business, JDS has not observed rigorous consistency in its branding, at least at store level.

156    Two of the stores (Alfred Cove and Geraldton) have or had on their main signage 'JACKSONS DRAWING SUPPLIES'. In Balcatta, Bunbury, Mandurah and Victoria Park the signs say 'JACKSONS DRAWING SUPPLIES PTY LTD'.

157    In Busselton, Darwin and Midland the signage just says 'JACKSONS' (although in Darwin this has only been since 2022 - prior to that from 1995 the signage said 'JACKSONS DRAWING SUPPLIES PTY LTD'). The same is true of the main signage on the Fremantle Store, although from 2011 to 2015 'JACKSONS DRAWING SUPPLIES PTY LTD' also appeared four times on the windows.

158    In Cannington, since December 2014, the sign has said 'JACKSONS your art supplies store'.

159    In Alice Springs (from 2012) the store signage has said 'JACKSONS THE ART SHOP'. From 2007 to 2012 the signage in Alice Springs used the words 'JACKSONS DRAWING SUPPLIES PTY LTD', to cover over the word 'Lizard' in the former name of the store before JDS acquired it, which was 'Lizard Art Supplies'. As a result, during that period the sign read in full 'JACKSONS DRAWING SUPPLIES PTY LTD ART SUPPLIES' (with an illustration of a lizard atop it).

160    There were also photographs in evidence of a former store in Shafto Lane, Perth, and of an existing store in Subiaco, but both photographs are entirely indistinct, and I take nothing from them. A photograph of a store in Beaufort Street, Perth is also indistinct but it appears to show 'JACKSONS' painted vertically in large letters on the front wall.

161    That said, the respondents made no submission that all these variations were material and I do not find that they were. Throughout, the word JACKSONS is a consistent and strong element of the brand. The words DRAWING SUPPLIES less so, but still frequently, albeit both with and without the PTY LTD. I will have more to say about the use of YOUR ART SUPPLIES STORE, THE ART SHOP and ART SUPPLIES soon.

162    Since 2006 the word JACKSONS has also been used in the URL for the JDS Website (www.jacksons.com.au) and in email addresses for employees (which all end with '@jacksons.com.au'). The word was used in the URL for the predecessor site, www.jacksonsdrawingsupplies.com.au, from 1997. From June 2013 the telephone number for the head office which has appeared on the JDS Website has been 1300 JACKSONS (or 1300 5225 7667). A uniform consisting of a polo shirt with a logo similar to the first one that is depicted above at [154] has been worn regularly by staff since around 2012.

163    In short, there is ample evidence that the JDS Names have been used by JDS in connection with its business since 1955. That basic fact is not controversial. Before turning to the evidence about the general sales figures connected with those names (also uncontroversial), it is necessary to address a particular submission by JDS. It is that in addition to the JDS Names, and the name 'Jacksons'/'Jackson's' common to JDS and JAS, JDS has been known by the other JAS Names, specifically 'Jacksons Art'; and 'Jacksons Art Supplies'.

JDS as 'Jacksons Art' or 'Jacksons Art Supplies'

164    JDS submits that from at least the mid-1990s, the public has referred to it as 'Jacksons Art' and 'Jacksons Art Supplies' (as well as by the JDS Names, which is not in controversy). The evidence on which it relies in that regard can be summarised as follows:

(1)    According to Mr Boercamp's affidavit evidence, since he began working for JDS in 1995, the business has also been referred to by the public by various names including 'Jacksons', 'Jacksons Drawing Supplies', 'Jacksons Art Supplies' and 'Jacksons Art': Boercamp I para 24.

(2)    An article in the Kalgoorlie Miner newspaper in 2006 which refers to an unspecified store as 'Jacksons Art Supplies', in a caption to a photograph of Kevin Jackson at the store. The text of the article, however, only refers to the business as 'Jacksons Drawing Supplies' and 'Jacksons'.

(3)    Approximately 25 letters, emails and certificates of appreciation from artists, clubs, other non-profit organisations and schools for sponsorship, donations or other support. These are variously addressed to or otherwise refer to 'Jackson Art Supplies', 'Jackson's Art Supplies', 'Jackson's art supplies', 'Jacksons Art Supplies', 'Jacksons Art Suppliers' or 'Jacksons Drawing and Art Supplies'. They date from between 2010 and 2021, although some are undated.

(4)    Other miscellaneous communications (about 15 in number) that similarly refer variously to 'Jackson Art Supplies', 'Jackson's Art Supplies', 'Jacksons Art Supplies' or 'Jacksons art supplies'. The dates of these range from 2010 through to 2022. It is not necessary to describe each one of these documents; for example they include purchase orders, supplier invoices, art society newsletters and invitations.

(5)    An inquiry about positions vacant that appears to have been made through the JDS Website.

(6)    An undated YouTube video where an unidentified person refers to 'Jackson's Art Supplies'.

165    Having reviewed all of this evidence, it appears to me that the references to 'Jackson's Art Supplies' and similar are errors. There is no suggestion in the evidence that JDS has ever traded under that name or referred to itself using that name as a trading name (descriptive uses are addressed shortly). That includes Mr Boercamp's evidence as described immediately above. In contrast to his specific evidence about the use of the names 'Jacksons' and 'Jacksons Drawing Supplies' by JDS, there is no evidence that JDS ever referred to itself as 'Jacksons Art Supplies' in its promotional material or elsewhere (until the change to the JDS Website in August 2022 that forms part of JAS's cross-claim). So those who used the latter name must have been mistaken.

166    That inference is supported by the newspaper article just mentioned, in which the correct name is given in the text but an incorrect name in the caption. It is also finds particular support in a sponsorship/donation request form in the evidence, which was evidently supplied by JDS and features its correct name prominently, but where the person filling out the form has used the name 'Jacksons Art Supplies' in the covering email. Some of the examples simply reflect an inevitable lack of precision in communications written by people who are not paying attention to intellectual property rights; one, for example, is correctly addressed to 'Jacksons Drawing Supplies P/L' but in the text calls the company 'Jacksons Art Supplies'.

167    Further, while the examples given are reasonably numerous, they have arisen over long spans of time so they do not support any conclusion that the use of 'Jacksons Art Supplies' or 'Jacksons Art' was a frequent occurrence which gradually transformed from occasional error to common usage. Mr Boercamp's affidavit refers to these documents as examples, but it is not possible to know from his or any other evidence how isolated or representative of a larger number of instances they are.

168    In addition, as senior counsel for the respondents pointed out, the term 'Jacksons art supplies' may also fulfil a descriptive function, in the sense that JDS, as 'Jacksons', can be said to sell art supplies. And that is indeed the way in which the terms have been used by JDS from time to time: on the Cannington store (JACKSONS YOUR ART SUPPLIES STORE) and on the Alice Springs Store (JACKSONS DRAWING SUPPLIES PTY LTD ART SUPPLIES, the last two words being used as descriptive of the products offered by the business with the name 'Jacksons Drawing Supplies'). It may be that the use of the term JACKSONS THE ART SHOP on the Alice Springs store was as a trading name, but JDS did not seek to draw any support from this isolated instance for its submission about its use 'Jacksons Art Supplies' as a name.

169    Setting that aside, then, before changes to the text of its 'About Us' page on the JDS Website in August 2022, the only uses of 'Jacksons Art Supplies' and similar by the business itself that are in evidence have been descriptive. When used in that way, it does not signify use of the composite term as a trading name that is associated in that sense with JDS in the minds of members of the public.

170    I therefore do not find, on the basis of examples of errors by customers and others, and on the basis of Mr Boercamp's evidence, that JDS has established that it ever had any appreciable reputation for trading under the names 'Jacksons Art', 'Jacksons Art Supplies' or the like.

JDS's sales figures

171    As has been indicated, the general (as distinct from online) sales figures for JDS are not controversial, so they can be presented briefly. Mr Boercamp put into evidence records showing sales figures from 1994 onwards. They can be summarised as follows:

* There is an immaterial discrepancy here between the 'Total Sales' figure and the actual total of the cash and credit sales.

JDS's trading outside Western Australia and the Northern Territory

172    Mr Boercamp's evidence was that since he began working for JDS in 1995, the business has made sales to customers located in Australia outside Western Australia and the Northern Territory. Before sales came to be made over the JDS Website, interstate sales of that kind were made either through JDS's head office, or when the customers visited one of the Western Australian or Northern Territory stores. Mr Boercamp identifies 2011 as the year around which sales began to be made via the JDS Website. From that time, according to him, sales have continued to be made through the head office and at the stores as well as through the website. However, his evidence was that JDS does not have records that show the revenue from those 'interstate' sales.

173    There is no other evidence of sales outside JDS's core markets. As senior counsel for the respondents pointed out , JDS has not produced any specific evidence of a single sale outside those territories. In fact, there is no specific evidence of the location of any sales, but it may comfortably be concluded given JDS's store locations and histories that most of the sales occurred within JDS's core markets. For example, not a single invoice is produced addressed to a customer in one of the other states or territory. I will return to the significance of this below.

174    In cross-examination Mr Boercamp readily accepted that he had presented no evidence which shows any actual sales outside of JDS's core markets. It was not squarely put to him, however, that there were no such sales, that is, that his evidence on this point was wrong.

175    The respondents thus contend that JDS has not established any sales outside JDS's core markets. They point further to aspects of JDS's marketing and promotion that emphasise its Western Australian location. For example, its 2015 School Catalogue features a stylised map of Western Australia with the legend 'WESTERN AUSTRALIAN OWNED' and, beneath that, the words:

60 YEARS SERVICE TO

WESTERN AUSTRALIA

Jacksons Drawing Supplies -

now trading for 60 years.

We are a Western Australian owned business.

176    The 2019 School Catalogue says 'Did you know we have 12 stores' and lists them all with their addresses (of course, they are all in Western Australia and the Northern Territory). The 2023 School Catalogue has an updated version of the wording above, referring to 68 years' service to Western Australia, and saying 'We are a Western Australian family owned business'.

177    Mr Boercamp agreed in cross-examination that by doing that, he was intending to promote JDS to fellow Western Australians as being a locally owned and operated business. He accepted that JDS often in its marketing refers to the fact that it is Western Australian and proudly so, and that JDS is strongly promoted as a Western Australian-based business.

178    Mr Boercamp accepted a similar proposition in connection with a message on the JDS Website: 'As managing director of Jacksons Drawing Supplies, I welcome you to our website and thank you for supporting a 100% Western Australian company'. He was taken to numerous other references to Western Australia on the website. It is not necessary to list them all.

The evidence about JDS's online reputation

179    The extent to which JDS has traded online, and the extent to which it had a reputation as an online store were also controversial at trial. JDS's primary submission was that this did not matter; even a reputation built through trading in physical stores would be sufficient to establish its ACL and passing off cases. I will consider that below. But in any event, JDS led evidence seeking to establish that it had made significant sales online, and the respondents spent considerable effort to attack that evidence.

JDS's online presence

180    Mr Boercamp's evidence was that he established a website for JDS's business in around September 1997, because Kevin Jackson was not familiar with using computers. The URL was www.jacksonsdrawingsupplies.com.au. The domain name jacksons.com.au was not available at that time. The website at the former URL was the main website of JDS until 2006. The home page had a prominent heading 'Welcome to Jacksons Drawing Supplies', with the word 'Jacksons' most prominent of all.

181    In 2002 the domain name jacksons.com.au became available and Mr Boercamp registered it for JDS. He explained, and I accept, that he had observed at that point that:

(a)    many customers referred to [JDS's] Business as 'Jacksons' without also using the words 'Drawing Supplies';

(b)    much of [JDS's] promotional material either only referred to the [JDS] Business as 'Jacksons', or referred to it both as 'Jacksons' and 'Jacksons Drawing Supplies';

(c)    [JDS's] employees often just referred to [JDS's] business as 'Jacksons', without also using the words 'Drawing Supplies';

(d)    'Jacksons' was a shorter domain name and therefore easier for customers to type.

182    In 2006 the JDS Website became operational from the URL www.jacksons.com.au. Since that time, it has always been accessible to users in Australia (and elsewhere) using that URL. The new URL thus replaced www.jacksonsdrawingsupplies.com.au, and users were redirected to the JDS Website from that previous URL.

183    The JDS Website has changed over time. Screen shots of its home pages from time to time appear in Appendix 1 to these reasons.

184    Mr Boercamp's evidence is that the JDS Website had online ordering capability from 2006 to 2009. He does not describe how that ordering capability worked and there is no clear evidence, for example, as to whether the JDS Website had 'shopping cart' functionality during that period of the kind that is now familiar to online shoppers.

185    The JDS Website did not have any online ordering capability between 2009 to 2011 because that capability was being revamped at that time. There is no direct evidence about online shopping capability on the JDS Website after 2011, other than for institutional customers, but there are references to the capability immediately below and 'shopping cart' functionality appears on the screen shots in Appendix 1.

186    Various iterations of an 'About Jacksons' or 'About Us' page on the JDS Website are also in evidence. They featured the same banner with a prominent 'Jacksons Drawing Supplies Pty Ltd' (with the word 'Jacksons' by far the largest) as appears on the home pages. From 2009 to 2015 the text on that page was a brief history of JDS's business as well as the following text:

Due to our commitment to the general art community Jacksons Drawing Supplies enjoys a high profile, both nationally and with many suppliers world wide. We have achieved this status with the valuable assistance of our loyal and competent staff who now number over 90 …

As Managing Director/Owner of Jacksons Drawing Supplies Pty Ltd, I welcome you to our website and thank you for supporting a 100% Western Australia [sic] Company.

Michael Boercamp

187    Mr Boercamp's evidence is that the first sentence in the quote reflected his view at all times since 1995. Senior counsel for JDS submits that it is relevant as showing JDS's intention to trade nationally.

188    From 2015 to 2021 the 'About Us' page also prominently featured the telephone number '1300 JACKSONS'. The text on that page was reordered somewhat, compared to the earlier iterations, but was not materially different in meaning.

189    From 2021 to around August 2022, the text was changed significantly, to more fully describe and promote the goods JDS offered. It is not necessary to set it out, save to note that it said 'We've been providing art supplies to Australia for over 65 years now', that there were 12 stores throughout Western Australia, and 'if you know what you want, buy it online for convenience'.

190    Similar text appeared on the 'About Us' page from August 2022 to October 2023. But during that time the text on that page commenced with the text set out at [75] above which stated that JDS was 'also known as 'Jacksons Art Supplies''. Mr Boercamp's evidence was that this reflected the various ways in which customers refer to the JDS business (Boercamp II para 32). However, there was an agreed limitation that this evidence could only be used as evidence of Mr Boercamp's state of mind (trial transcript (ts) 88), so the evidence cannot take the position beyond that. I will address this text in more detail when I consider JAS's cross-claim in Section IX below.

191    The JDS Website received a significant graphic design overhaul from October 2023, but the text just set out still appeared on the 'About Us' page (albeit a couple of paragraphs after the start).

The online sales figures

192    Due to changes in JDS's accounting methods, online sales were only recorded separately for the financial years ending June 2010 to June 2016 (as a line item labelled 'Office Website'). Those figures are:

193    In the last two of those years, the sales are broken up into categories as follows:

194    According to Mr Boercamp, after the financial year ending 30 June 2016 online sales were included in a line item called 'Head Office'. A new computer inventory system used from that time meant that, unlike previous financial years, those sales were not broken down into sales that occurred through the JDS Website and those that occurred through other means, such as 'Office Phone'.

195    Mr Boercamp nevertheless gave what he called his 'best estimate' that, for each of the financial years, 25-40% of the sales denoted as 'Head Office' were made by way of the JDS Website. If that evidence is accepted, the range of online sales volumes that took place for each year was as follows:

196    Mr Boercamp did not explain how he arrived at that range of percentages. When cross-examined on specific figures for the year ending 30 June 2022, Mr Boercamp properly accepted that there was nothing verifiable to explain how he reached the 40%.

197    During that cross-examination, senior counsel for the respondents sought to undermine Mr Boercamp's estimated range of online sales. He pointed out to Mr Boercamp that the actual figures for 2016 (before estimation became necessary) showed online sales as 21% of total 'Head Office' sales, which was less than the lower end of Mr Boercamp's estimated range. It was also pointed out that in years where figures were available, online sales as a percentage of total sales had come to 4%. Applying that percentage to the figures for the year ending 30 June 2020 produced a percentage of 22% for online sales as a proportion of 'Head Office' sales.

198    In both cases, Mr Boercamp's answer was to the effect that the 21% or 22% figures would not take into account purchases that had taken place on the JDS Website, but were fulfilled from local stores. For example, an online purchase by a consumer in Darwin might contribute to the Darwin store's figures for the year, not 'Office Website'. However he also accepted that he had provided no evidence to support the idea that part of his 25-40% was comprised of such 'referred' sales that were completed from local stores.

Google Analytics and other evidence about traffic to the JDS Website

199    Evidence about 'organic traffic' to the JDS Website appears in Mr Jones's report as follows:

200    Organic traffic constitutes visits to websites via searches that users have entered on search engines, as distinguished from 'paid traffic', which is visits to websites that occur when users click links in paid online advertisements. As will be seen, Mr Jones's evidence is that by the beginning of 2020, the Australian organic traffic to the JAS Website exceeded that of the JDS Website.

201    JDS also produced Google Analytics data for the period 7 December 2014 to 18 September 2023 (JDS Google Analytics). It appears at annexure GN-1 to an affidavit of a solicitor, Gina Nofal. This purports to show (among other things) the number of 'Users' and 'New Users' visiting the JDS Website from places in Australia and overseas, as well as the number of 'Sessions' from each of those places.

202    Mr Jones's evidence was that in Google Analytics, 'Users' is the total number of visitors to the website, (including 'New Users'), and 'New Users' is either a visitor to the site for the first time or someone who is designated as such because they are accessing the website on a new device for the first time, for example using a mobile phone after using a desktop computer. Because of the specific way in which these terms were frequently used in the evidence on this subject, it will be convenient to refer to New Users and Users in connection with the Google Analytics data.

203    As for 'Sessions', Ms Nofal's unchallenged evidence was that a session is the period of time during which a user is actively engaged with the website.

204    A breakdown of the New User and session figures, year by year, appears as two tables in Appendix 3 to these reasons. The raw figures in annexure GN-1 were broken down by individual cities and towns; they have been amalgamated into states and territories for the purpose of this exercise. The reason for the absence of any table for Users will become apparent shortly.

205    The breakdown shows that the total number of New Users that visited the JDS Website from 2015 to 2018 from Western Australia and the Northern Territory was 321,181 (77.1% of the total from Australia as a whole) and the total number visiting from other States and the Australian Capital Territory was 92,509 (22.9%). It will soon be necessary to resolve a significant controversy over the reliability of the JDS Google Analytics data. Setting that aside for the moment, however, it is worth saying now that although the 2018 data is not capable of being divided up as from October (being the time for assessing JDS's reputation), the relative stability of the numbers over time until 2020 when the COVID-19 pandemic occurred means I am satisfied that the figures I have just given are reasonably close to the numbers up to October 2018.

The experts' opinions on JDS's Google Analytics data

206    The respondents made a broad attack on the reliability of the JDS Google Analytics. Ms Nofal's affidavit was admitted into evidence on the agreed basis that nothing in it addresses or explains how Google Analytics prepared or compiled the data that is exhibited to the affidavit. So the evidence given in the body of her affidavit was not relied on as any kind of support for the accuracy of the data. Much time was, rather, spent on exploring that topic with the experts.

207    Mr Jones analysed the JDS Google Analytics data and expressed the following opinion (Trial Book (TB) 301 p 3030):

I note that there are clear inconsistencies in the data that suggest to me that the data is inaccurate. In my experience, these inaccuracies could be due to incorrect filtering of the data, a misconfiguration of Google Universal Analytics, or incorrectly installed and configured Universal Analytics tracking code.

208    Specifically, Mr Jones's report pointed out that for the entire period apparently covered by the JDS Google Analytics data, namely 7 December 2014 to 18 September 2023, there are 1,151,220 New Users and only 598 Users. The figures were similar in each state and territory. For example, in Western Australia the number of New Users for the total period was 759,545 while the number of Users was only 279. Given the definitions of those terms, that cannot be right; there must be more Users than New Users because the former includes both first time visitors and repeat visitors to the site.

209    That basic understanding was confirmed by the experts. In Mr Jones' opinion, 'The significant difference between the number of Users (598) and the number of New Users (1,151,220) indicates a potential configuration problem with Google Analytics that is impacting the accuracy of the measurements' (TB 301 p 3031).

210    Mr Jones also focussed on the data for the 1 January 2019 to 31 December 2022, where the figures for Users did exceed the figures for New Users, which is technically possible. But they did not exceed them by very much, suggesting that the JDS Website receives very few repeat visits (since almost all the Users are New Users). In Mr Jones's experience, that is possible but unlikely.

211    In cross-examination, Mr Jones reiterated that the JDS Google Analytics data in Ms Nofal's affidavit (ts  255):

had inconsistencies between the new user and the user metric. When you have those levels of inconsistencies in that data without diagnosing what caused those inconsistencies, that calls into question the integrity of all of the data set.

212    Mr Simonetti was retained for the specific purpose of commenting on certain passages from Mr Jones's expert report, including his discussion of the JDS Google Analytics data. He agreed with Mr Jones that there is a discrepancy in the User data, although he calls it a 'limited' one (TB 195 para 27). He agreed that 'the number of 'Users' should at least be the same as, and more likely substantially larger than, the number [of] "New Users"'. He also agreed with Mr Jones that where the number of Users in the JDS Google Analytics data is higher than the number of New Users, the proportion of New Users to Users is still unusually high.

213    Nevertheless, Mr Simonetti's opinion is that the number of New Users in the JDS Google Analytics 'provides a reliable and useful indicator as to the number of visitors to the [JDS Website] in the period to which the data relate' (TB 195 para 28). In particular, he considers that (TB 195 para 28):

(a)    adopting a conservative approach, the number of 'New Users' recorded in Exhibit GN-1 reflects at least the minimum number of total users who accessed the [JDS Website] for the period to which the data relate. For example, for 2016, a minimum of 115,375 total users accessed the [JDS Website];

(b)     if the number of 'New Users' in fact reflects first-time users of the website for the period to which the data relate, then I would expect that the number of total users for the period to which the data relate would be substantially higher. For example, for [sic] the number of total users who accessed the website in 2016 may be substantially higher than 115,375.

214    Mr Simonetti explained his reasoning for these views as follows:

30.    First, in the course of analysing Google Analytics data as part of my work since about 2012, I have observed that it is common for there to be inconsistencies between the numbers of 'Users' and 'New Users'. My estimate is that I have observed inconsistencies of this kind in approximately 10% of the hundreds of Google Analytics data sets that I have considered in this period. When I have encountered such inconsistencies, I have relied on, and made digital marketing recommendations and decisions to or on behalf of clients based on, that part of the data which appears to be accurate. For example, if (as here) there is data recording 'Users' as 0, I have relied instead on the 'New Users' data.

31.    Secondly, I have no reason to doubt the accuracy of the 'New Users' numbers shown in Exhibit GN-1. This is because:

(a)    the figures accord with other data that are recorded in Exhibit GN-1, such as 'Average session duration' and 'pages per session' data;

(b)    the figures appear to be consistent with the first graph showing Organic Traffic for the [JDS Website] on page 10 of the Jones Report. Organic website traffic (traffic to a website resulting from an unpaid search engine result) is a subset of the website's total traffic (which includes organic traffic and traffic from all other sources, for example, social media, referring websites and email communication from businesses);

(c)    the figures are within the range of what I have encountered in my career and would expect, in respect of websites for specialised consumer goods.

215    However, the discrepancies in the figures which Mr Simonetti accepts there, mean that he does 'not consider that the data enables any conclusion to be drawn as to the proportion of users of the [JDS Website] who are repeat users' (TB 195 para 32).

Cross-examination of Mr Simonetti

216    The cross-examination of Mr Simonetti was painstaking and, as will be seen, detailed criticisms were advanced of both his evidence and of the JDS Google Analytics data. It is therefore necessary to set the cross-examination out at some length.

217    Mr Simonetti was asked what could have caused the discrepancy between the Users and New Users figures. The tenor of his evidence was that there could be any number of causes. He seemed to agree that incorrect configuration of something called a tracking code could be to blame, although he did not seem to think that was the likely cause, because '[t]he tracking code is quite easy to install' (ts 295). Later, he accepted that an incorrectly configured tracking code could 'cause certain users to be tracked as having visited a website multiple times, even though they only visited once' (ts 295).

218    However, Mr Simonetti appeared to think 'another conflict' was a more likely cause, explaining that (ts 295):

when that information is passed to Google, there's various other things going on being sent to both servers and to Google servers and to the user all at once. So, there's a complicated mix of stuff going on. And at some point that number could be interfered with or that particular trigger doing that count could be interfered with. That could come from other code, that could come from server problems, that could come from traffic on the internet, that could come from errors on the internet, all sorts of - there could be many places that could occur.

219    Mr Simonetti thus accepted that there were many potential causes for 'any discrepancies that you see in Analytics' (ts 295). He accepted that another possible cause was 'a filter being applied in the Google Analytics account' (ts 295). He further accepted that it was possible that 'if a filter is being applied or an incorrect configuration of the tracking code has occurred, then that could affect the reliability of both the new user number and the user number' (ts 296) (as to filtering, see below).

220    The following exchange then occurred (ts 296):

If you saw a discrepancy between users and new users in Google Analytics data, that discrepancy would at least call into question the reliability of both the user and new user data from Google Analytics?---It would call into question, but it wouldn't confirm it.

You would at least want to verify the accuracy of the new user data?---From a high level, yes.

And the only way to verify the accuracy of either the user data or all the user data would be to access the Google Analytics account or get the code for the website in question?---The only way to validate it?

Yes, accurately?---No.

221    Mr Simonetti then outlined, relevantly, two ways of verifying the data, other than accessing the code on the website to see how it was configured. They were: referring to 'Semrush' data; and looking 'at the business overall and say[ing], does this seem reasonable in terms of the data that's being presented in Analytics?' (ts 296). Semrush was described in Mr Jones's report as an SEO software vendor which keeps a database of web traffic; in fact he said of the data available from Semrush and a similar service called Ahrefs that 'While it may not be directly comparable to more accurate Google Analytics data, it is accurate for the purpose of comparing relative domain performance' (TB 301 p 3021). It appears that Semrush was an important source of the information analysed in Mr Jones's report (despite what he described as its lower level of accuracy compared to Google Analytics).

222    After further cross-examination, Mr Simonetti accepted that he was 'not in a position to say that the figures in Google Analytics are accurate down to the last individual mentioned in the data' but he maintained that 'in a general sense you can' (ts 297). He accepted that it would have helped had he had access to the Google Analytics account for the JDS Website (he did not have access to it) since '[t]he more information you get, the better' (ts 298). But he also said that (ts 298):

the more other aspects you can put to it, like third-party platforms or understanding the business, you're going to have a better understanding of if that data is accurate or not. You can - I can have an opinion on it based on other businesses or similar businesses, based on the data that I can purely look at in analytics. But it's better when it's rounded with other external data.

223    He accepted that if he had access to the account he 'could have a deeper dive' (ts 298) and that this possibly would have permitted him to ascertain the cause of the discrepancy between User numbers and New Users numbers.

224    An example of filtering Mr Simonetti gave later was where someone has applied a filter to 'turn new users off for all … geographic locations' (ts 300):

And one way of resolving whether there is an issue with the filter being applied to the Google Analytics account or an incorrect tracking configuration is to access the Google Analytics account?---Yes. From a technical viewpoint, you would want to look at a whole range of potential, you know, settings or issues that could - could have - could have arisen to cause that.

In order to identify what the relevant cause is and determine to what extent it affects the reliability of the data?---You can look at it from that perspective and say, 'Is the reliability of the data in compromise, because of this one variable missing?' Or you can also look at the data and say, 'From an overall perspective, does the rest of the data still make sense?' Both ways - you can look at it both ways.

225    Mr Simonetti did not know what the cause of the discrepancy was in this case.

226    Other relevant evidence given later was (ts 305-306):

Do you agree that's anomalous, to have zero users but then a number of new users recorded?---But we're talking about the same overarching point. You know, if the user data is unreliable, but the new user data is reliable, then we rely on the new user data in all cases.

Yes. I just want to, I suppose, test whether you consider that the fact that no users are recorded is an additional discrepancy beyond simply there being a difference between user and new users with users being less than new users?---I don't consider that a problem.

You see as part of the overall issue, where users should exceed new users, but don't in the case of this dataset?---Correct.

227    Mr Simonetti was also taken to numerous examples where the JDS Google Analytics data covering the period 7 December 2014 to 18 September 2023 purported to show more New Users than Users in a variety of countries that are far removed from JDS's core markets. It is only necessary to give three examples to illustrate: Pakistan - Users 1, New Users 860; Faroe Islands - Users 0, New Users 7; Kyrgyzstan - Users 0, New Users 119.

228    Mr Simonetti did not agree that it was unusual that there should be, in the words of the cross-examiner, 'so many new users in such countries' (ts 303). And when asked, 'But these figures don't call into question the reliability of the new user data, in your mind?', his response was 'Not at all' (ts 303). His explanation for this view was (ts 303-304):

Well there's - from what I understand, a range of products on this website, with a range of organic keywords that we discussed earlier. This is available on the World Wide Web. That's accessible to everybody on the web, which means everybody in the world, anybody with internet access, anybody with a geographic location, as listed here by Google Analytics. And if they type in a particular search term that's available on this website, and that's highly probable, because there's many products on this website, with many organic search terms, then these users in these countries are being referenced to a site being hosted in Australia.

229    His evidence was that this might occur even if the search term was not an English word. He gave as an example a search for A4 paper, 'A4' being a fairly universal code for a size of paper. Also (ts 304):

So, there's many things in art, including colour, including brushes or including terms that have very specific brand terms, or other keywords that are all, you could consider, non-English. They're just general terms or brand terms.

230    Mr Simonetti was also taken to numerous specific instances where the average session duration for Users from particular foreign locations was very small or non-existent: for example, in Vanderhoof (presumably British Columbia, Canada) the number of New Users was 1 and the average session duration was 0. Mr Simonetti explained that this includes both Users and New Users (ts 306):

Average session duration is linked to the information that gets pulled into Google Analytics when a user accesses the website. New user, user, the entire row is considered a set of data when that user visits the site.

231    Mr Simonetti's explanation for apparently anomalous average session data was based on the fact that Google Analytics calculated the session duration on the basis of two specific times: the time the web page was opened by the local browser, and the time that the page was exited. He likened this to a stopwatch, where it is necessary to press both start and stop to get an accurate time reading. Sometimes, people may not exit the page, making accuracy difficult to attain. After Mr Simonetti looked at numerous instances such as the Vanderhoof one just described, the following exchange took place (ts 310):

Now, I suggest, it's impossible to have someone look at a website for no time at all; what do you say to that?---Well, now you're putting our logic on to the Analytics data, which average session time, again, comes with a very detailed page from Google explaining, you know, there needs to be two points of time to be checked, and that data needs to be, you know, validated by them, and then it will be presented with a time period. So, the more users that go to a page, the more accurate that data will be; right? But if there's one user or two users or - you know, most of those rows have one or two users of data in it - and they've come and then not looked at anything else - that's a random occurrence in the many-year period of this data is being recorded - then that's a possibility.

Right. So, there's only one data point rather than two data points; is that what you're saying?---There's no time - there's no secondary time data point. They've just left or they've, you know - they've - they've left that browser window open forever and then turned their computer off or - - -

And that would come up as zero, would it, rather than - - -?---Can come up as zero, yes.

Right?---Well, it's not going to come up as 100 hours, or 10 hours or whatever they've left their computer on and left that browser window open for. You know, again, Google is trying to present the most accurate data it can, but there's limitations to what it can actually present as the average session duration data. So, that's why as an overall you look at it from that perspective, and if you want to pick out rows, you can pick out, you know, strange anomalies all day in Google Analytics data from every client.

But would you agree that absent further explanation it is anomalous to have a zero session time recorded?---No.

Not anomalous at all?---No. Not just based on that stopwatch example. That's possible. You know, based on other - there's other reasons as well it could happen. But there - there's no, like - if - if a user comes to the site - and they've searched something, and they've physically come to the site, they have spent time on the site, but Google might not have recorded that because that might be the only page, and they might not have left - like, all the examples that I just gave before.

232    And later (ts 311) Mr Simonetti said:

Even if you interrogated the data, there's still those anomalies in all data in Google Analytics when the data is so small, like, zeros and ones, in terms of that row; okay? And, then, the - the data becomes more reliable as you look at an overall perspective - as bigger numbers. So, you know, in terms of someone coming from the Ukraine once or, you know - it's hard to read some of these, but ..... zero, one new user for no period of time. That's - you know, a reasonable thing as you scroll down to the very, very small, tiny or almost negligible percentages in the Google Analytics data.

Right?---So, I would say that, is that data accurate? Has someone come? Possibly. But in terms of the overall, does it really matter?

But you don't know the cause of that particular figure in that particular metric?---No. But you see it all the time.

233    And still later, the following exchange occurred about average session data (ts 313):

And, correct me if I'm wrong, but I understood your evidence to be that the data that appears in that column is linked to both the user and the new user data?---Yes. Well, It's linked to every instance of a visit to the site.

Does it follow then that if the user data is unreliable, that would mean that the average session duration figures are unreliable?---No.

Well, why not, given that, as I understand it, it draws upon the user data?---No, no. They're just all variables in a single row of a spreadsheet. One variable or one field could be incorrect, like we can see here in the user data, but the others seem reasonable in terms of their results.

And when you say it seemed reasonable, that's based on your understanding of the Jacksons Drawing Supplies business?---That's my understanding of Google Analytics.

234    During the earlier cross-examination on this subject, Mr Simonetti was asked about his review of the data presented in Ms Nofal's affidavit, as follows (ts 308):

But I take it you haven't been through each of the line items in this data?---I wasn't asked to go through each line item in the data for all the countries and all the cities and all the instances.

Right?---My task was to look at it from an overall perspective and say does it make sense, scanning through looking for anomalies like this.

And I take it then you didn't identify this particular anomaly?---I didn't identify any anomalies that gave me concern to adjust my affidavit to say the data is unreliable as an overall.

But is it fair to say that you've conducted a high-level review of the data?---A reasonable review, yes.

A broadbrush review?---No. I looked at it in detail but not in every single circumstance on every single row.

Right?---But I don't need to do that to have an opinion on the dataset.

Sure. But obviously your opinion is going to be more reliable the more of the data you look at?---Of course, but to what extent.

235    Mr Simonetti was also asked about bots, being autonomous programs on the internet which interact with computer systems or users (Oxford English Dictionary (6th ed, 2007) 'bots'; ts 312):

Or perhaps, just taking a step back, Google Analytics has a filter that can be applied which screens out bots?---Well, there's various filters that can be applied and tools that can be applied to try and screen out bots. But sometimes it's not always successful.

If the relevant tools weren't employed to screen out bots, that would have the potential to affect all of the metrics in the Google Analytics data?---It could, but you would still look at - as an overall, would it be reliable based on bounce rate in pages and those sorts of things, so that you can get a good sense that the data is still accurate based on that data.

236    According to Ms Nofal's affidavit, 'bounce rate' is the percentage of single page sessions in which there was no interaction with the page. A bounced session has a duration of zero seconds. In cross-examination Mr Jones agreed with this paragraph of Ms Nofal's affidavit.

237    Mr Simonetti accepted that there were a number of other matters that could affect the reliability of Google Analytics data. Then there was the following exchange (ts 314-315):

And there are other potential errors that might arise that might affect the reliability of the Google Analytics data beyond those that you've agreed with?---Again, in a general sense, no. Like, in terms of my affidavit and the data that we're presenting as an overall, it still looks very [reliable]. In individual cases, yes, you can completely strip out, you know, a user visit or have errors in an individual visit.

That wasn't quite my question. I was speaking more generally rather than looking at the specific data. Directing yourself to the more general proposition, there are other potential matters that might affect the reliability of the Google Analytics data beyond the ones that I've just asked you about?---Yes, there can be.

And each of those ones that I've identified, namely, tracking configuration, script conflict, a filter being applied, and data being corrupted, to use a more neutral term than 'intercepted', has the potential to affect both the new user figures and the user figures in a Google Analytics account?---It does.

And really you need to interrogate the Google Analytics account in order to determine whether the new user figures are affected or not by whatever the cause of the relevant discrepancy might be?---Yes, new users and other data.

The submissions about the JDS Google Analytics data

238    The respondents submit that the Court can have no confidence in the JDS Google Analytics data in Ms Nofal's affidavit. That is because of the discrepancy between the numbers for Users and New Users. It is also because, according to the respondents, the data suggests that there are 'Users and New Users in worldwide locations that are so implausible as to render the data unusable': respondents' written closing submissions (RCS) para 16. The respondents rely on the opinion Mr Jones expressed in cross-examination. Further, the respondents submit that the description 'User' overstates what the result is showing - essentially access to a site (rather than making any 'use' of it as such)': RCS para 16. The respondents submit that the Court should discount the data entirely.

239    The respondents submit accordingly that the Court should not accept Mr Simonetti's opinion that the New User figures in the JDS Google Analytics data were reliable. This is for several reasons:

(1)    The discrepancy between the number of Users and the number of New Users, where the cause of that discrepancy is unknown.

(2)    While Mr Simonetti was provided with access to JDS's Google Analytics account, he was not asked to look at it and did not do so, despite his accepting that the cause of the discrepancy might have been revealed if he had interrogated the Google Analytics account. The respondents put the inference that in the circumstances, it can be inferred that instructing Mr Simonetti to access its account would not have assisted JDS.

(3)    According to the respondents, on its face the New Users data looks unreliable, having regard to the places where New Users are recorded (such as Ukraine, the Faroe Islands and various Central Asian republics).

(4)    Mr Simonetti accepted that the data could be affected by bots, which are not real Users.

(5)    Mr Simonetti's reliance on the average session duration figures to support the reliability of the New Users figures is undermined by his acknowledgment that the average session duration figures include User data, where the User figures were unreliable. Mr Simonetti also accepted that there was a discrepancy with some rows of data where the average sessions were shown as one or zero seconds.

(6)    Mr Simonetti accepted that possible causes of the discrepancy between the User and New User figures were issues that could affect the New User data.

(7)    The respondents submit that Mr Simonetti's evidence on the nature of the review he conducted was inconsistent and unsatisfactory. They submit (RCS p 27; footnote removed) that Mr Simonetti:

said variously that he had looked at the data 'overall' and not on a line by line basis, that he had undertaken a 'reasonable review' of the data and that he had looked at it 'in detail' (albeit not every single row). The reality is that Mr Simonetti did not conduct anything more than a broadbrush review, which cannot be relied upon in the circumstances.

(8)    The respondents also submit (RCS p 27, footnote removed) that Mr Simonetti's:

broad statements about the figures being consistent with what he would expect having regard to other (unspecified and unexplained) comparable businesses and that inconsistencies occur in approximately 10% of data sets he has reviewed are not persuasive.

240    The respondents thus submit (RCS pp 27-28, footnote removed):

JDS's Google Analytics data is not reliable at all; the Court can have no confidence that any of the figures are accurate. Accordingly, no weight should be afforded to it. In the absence of such data, it is not possible for the Court to make a finding that JDS has any substantial reputation outside of Western Australia and the Northern Territory. Further and in any event, as Mr Simonetti confirmed, 'user' and 'new user' data in Google Analytics says nothing about the number of people who made purchases. As such, 'new user' numbers are not capable (even if accepted) of providing much if any evidence of reputation.

241    On this subject, senior counsel for JDS submitted that both Mr Simonetti's and Mr Jones' evidence supported the accuracy of the New User data, as well as the accuracy of the other analytics data from the JDS Website, except for the User data. Both experts relied on the organic traffic information in Mr Jones's report, which was based on Semrush data, the accuracy of which was not impugned. He also submitted that despite the rigorous cross-examination, Mr Simonetti did not waver in his views, and indicated in clear terms why he considered that the New User data and certain other data appeared to be reliable having regard to the overall data and Mr Simonetti's knowledge of comparative specialised online stores. He further submitted that both experts accepted that while Google Analytics is not perfect, it is informative even when there are discrepancies. Thus, it was submitted, the Court could be confident that approximately 20% of New Users of the JDS Website over an extended period of time came from outside Western Australia and the Northern Territory, and they were not fleeting visits.

Assessment of the evidence as to JDS's online reputation

242    Before dealing with the controversy over the JDS Google Analytics figures, it is helpful to put that controversy in context by making findings about the other main source of evidence of JDS's online sales, namely the accounting figures. It will be recalled that after the financial year that ended on 30 June 2016, there were no separate figures for online sales. So, from that time, JDS relied on Mr Boercamp's estimate that online sales comprised 25-40% of Head Office sales.

243    I do not accept Mr Boercamp's estimated range. He provided no reasoning to support it and was unable to defend it in cross-examination. The tenor of that cross-examination is set out at [204] above.

244    It does not follow, however, that JDS has failed to establish any online sales in the financial years after 2017. And nor did the respondents suggest that it had; as their senior counsel properly accepted, absolute precision in quantifying those sales is not necessary. The fact in issue is whether JDS had sufficient reputation outside its core markets to cause people outside those jurisdictions to be misled by conduct which, it is alleged, associated JAS with JDS's reputation. Since JDS had no stores outside those jurisdictions, to a significant (albeit not exclusive) extent, any reputation it did have would need to be shown by online sales.

245    To adopt Allsop CJ's formulation in Winnebago (No 1) (see [124] above), what is required is proof of a substantial number of persons who were aware of JDS's business as a retailer of art products. If JDS establishes online sales, to an order of magnitude, that will be capable of being taken into account in evaluating the overall question of whether a substantial number of persons did have that awareness. That is all the more so when the evaluation is unlikely to be based on direct evidence: see [122]-[123] above. It thus proceeds to a significant extent by inference.

246    With that approach in mind, I consider that JDS has established that it had online sales during the financial years ending 2017 to 2023 in the order of 20% of the Head Office sales. Its online sales for the financial years ended 2012 to 2016 were substantial, averaging at approximately $350,000. And there was no observable trend of decline, so it is vanishingly unlikely that those sales simply stopped on 30 June 2016.

247    In my respectful view, the analysis reflected in the cross-examination summarised at [204] above is sound: it is likely that online sales continued to be in the order of at least 20% of Head Office sales. This is a conservative estimate, given the continued increased uptake of online purchases by the public since 2016, the likely increase also caused by the COVID-19 pandemic (see [443] below), and Mr Boercamp's evidence that Head Office sales did not include online sales that were fulfilled at the stores.

248    Given the imprecision involved, I do not consider it appropriate to seek to reconstruct annual figures in the way that is attempted in the table at [202] above. It is enough to say that based on the average annual Head Office sales for the period 2017 to 2023 ($1,167,988), average annual online sales during that period were likely in the order of $230,000 (i.e. 20% of $1,167,987.66 rounded to the nearest $10,000).

249    The respondents' primary submission about JDS's online sales figures was that, whatever they were, they were a low percentage of its overall sales. Senior counsel said that it was a de minimis part of the business. This was intended to reinforce the respondents' submission that the two businesses have very different characters.

250    Whether or not that is so, there is a more fundamental problem with drawing any conclusions from the online sales figures about the fact in issue here, namely JDS's reputation outside its core markets. The problem is that there is simply no basis in JDS's sales evidence to specify how many of the online purchases were made outside its core markets.

251    Also, as the respondents point out, JDS has not adduced a single item of evidence to establish an online sale (or any sale) outside the core markets (or in them for that matter). While the respondents did not make any express submission that I should infer from this that JDS made no sales outside its core markets, it is a significant gap in the evidence. JDS offers no explanation of the gap, beyond submitting that there is no evidence to suggest that documents evidencing specific sales (such as invoices or order forms) do exist, and saying that it was not put to Mr Boercamp that they do. Also, as I have said (at [181]) above, while Mr Boercamp was cross-examined about the lack of such documents, it was not put to him that there simply were no online sales outside Western Australia.

252    However, a Brown v Dunn (1893) 6 R 67 style submission is not, with respect, a persuasive way of meeting the respondents' point about the absence of any sales records. It can be inferred as a matter of common experience that a business of the scale of JDS will generate routine documentation of sales such as invoices or order forms, including via its systems for receiving and fulfilling online sales, if applicable. The absence of a single record of such sales was a matter that required explanation, by evidence. And no such explanation has been advanced.

253    Therefore, if that were the state of the evidence, it would not provide a sound basis to conclude that the volume of online sales by JDS outside its core markets was sufficient to establish that a substantial number of people outside those jurisdictions are aware of JDS's business by reference to the JDS Names. That being so, the Google Analytics evidence and other evidence about web traffic does assume some importance.

254    Turning to that evidence, then: despite the respondents' sustained and detailed attack on the JDS Google Analytics data, I am persuaded that the data establishes that between December 2014 and October 2018, a not insignificant number of people visited the JDS Website from places in Australia outside its core markets. That is for the following reasons.

255    First, while it cannot be right that there were less Users than New Users visiting the JDS Website during that period, it does not logically follow that both of those figures are unreliable and must be discarded. It is obvious that something has gone wrong with the way in which the Users figures were collected - it is vanishingly unlikely that only 598 Users visited the JDS Website during the approximately nine year period in question. So they can and must be discarded. That having been done, the User numbers can shed no light on whether the New User figures are reliable.

256    Second, Mr Simonetti's opinion was that the New Users figures were reliable and useful, and that opinion was supported by reasoning which I found persuasive in all respects but one (discussed below). Mr Simonetti characterised his approach as conservative, in that the New Users figures were likely to be the minimum number of users that visited the JDS Website during the period, given that there would certainly have been repeat visitors, so that the true number of Users was likely to be higher than the number of New Users. This makes sense.

257    Further, Mr Simonetti supported his reliance on the New User figures by reference to other data such as 'average session duration' and 'pages per session'.

258    Mr Simonetti also expressed the opinion that the figures were consistent with Mr Jones's 'Organic Traffic' data. One would expect the number of people visiting a website to exceed the organic traffic, as the latter represents one way of finding a website among others, namely finding it by entering search terms and being presented with a link to the page in unpaid (non-sponsored) search engine results. This too makes sense. And it is consistent with the view Mr Simonetti expressed in cross-examination that Semrush data can be used to verify Google Analytics data: see [320] above.

259    The only respect in which I do not accept Mr Simonetti's evidence concerns the final reason expressed by him for holding these opinions, namely that the figures were within the range he would expect in respect of websites for 'specialised consumer goods'. That is too broad a category to be of much use here and Mr Simonetti does not expose the evidentiary basis of that view by, for example, citing any generally available statistics about the traffic to such websites. I therefore put no weight on that reason. But the others are sufficient, in my view, to provide persuasive support for Mr Simonetti's overall opinion.

260    I do not consider that the reliability of Mr Simonetti's opinion was significantly damaged by his concessions in cross-examination that he would have had more confidence if he had access to JDS's Google Analytics account and/or the data in it, giving him the opportunity to do a 'deeper dive'. Those concessions were proper and indeed inevitable, but the fact that one can always obtain more confidence with more data does not mean that one can have no confidence with the data one does have. The same can be said of Mr Simonetti's concession that he did not know the cause of the discrepancies in this case. He nevertheless considered that the New User data was reliable and supported that by reference to other data.

261    Nor did the cross-examination about the figures in exotic locations such as Kyrgyzstan detract from Mr Simonetti's ultimate conclusions. The explanation he gave for those (very small) figures was persuasive: people searching for art products in those countries may occasionally be taken to the JDS Website, even though it is located in Australia. That could occur when universal terms (like 'A4') were entered. His explanation of how locations with very low User numbers could also have anomalous session time data was also persuasive: see [330]-[332] above.

262    Third, unlike Mr Simonetti's opinion on this topic, Mr Jones's opinion was not supported by any reasoning. He simply says that the inconsistencies call the integrity of the whole data set into question. But the tenor of Mr Simonetti's evidence was that it is not uncommon for there to be discrepancies in Google Analytics data and that this alone does not prevent the drawing of conclusions from the data set. As will be seen, there were discrepancies in the Google Analytics evidence produced by JAS (which I will call the JAS Google Analytics). Mr Simonetti was prepared to disregard the obviously wrong User numbers without that causing him to discard the New User numbers. As I have said, I generally preferred the evidence of Mr Simonetti, and I prefer it here. The tenor of that evidence was that discrepancies in Google Analytics data do not deprive that data of utility, at least where the purpose is to understand traffic sources rather than exact numbers.

263    Fourth, the conclusion that the respondents urge on the Court - that the JDS Google Analytics data should be disregarded entirely - goes further than Mr Jones's view - that the discrepancies indicate a potential configuration problem that is impacting the accuracy of the measurements.

264    To the extent that the above does not address the respondents' numerous submissions on this subject, I make the following additional observations:

(1)    The inference that the respondents invite me to draw that Mr Simonetti was not given access to JDS's Google Analytics account because that would not have assisted JDS is far-fetched and is based on a tendentious account of Mr Simonetti's evidence at [321]-[322] above. There is no reason to think that anyone had access to the account and analysed it, so the suggestion that some sort of forensic decision was made not to give it to Mr Simonetti has no basis. And again, the respondents' reliance on Mr Simonetti's unremarkable concession that if he had more information, he might have been able to draw more conclusions, or to draw them with more confidence, does not advance matters. He has expressed conclusions based on the data he did have. That he may, for example, have been able to identify the cause of the discrepancies with greater access is neither here nor there.

(2)    The suggestion that the reliability of the data was affected by bots was speculative. Again, what matters for present purposes is that Mr Simonetti did confirm the reliability of the New User figures by reference to other data.

(3)    The submission that Mr Simonetti's reliance on the 'average session duration' figures is undermined by his acknowledgment that they include the unreliable User data reflects a misunderstanding of the point Mr Simonetti was making in that respect. His point was that the average session data was just for visits to a website; he was not saying that it was necessarily linked to the same function within Google Analytics that counts Users or New Users: see [329]-[332] above. And in the same passage of evidence, Mr Simonetti provided an explanation for apparently anomalous session duration figures which also made sense: the more users you have from a location, the more accurate and less anomalous the 'Average Session Duration' figures will be.

(4)    The submission that Mr Simonetti accepted that the discrepancy between the User and New User figures was possibly caused by issues that could affect the New User data is based on a selective account of his evidence. Presumably it is based on the last answer set out at [336] above. But that one answer does not reveal the extent to which Mr Simonetti considered that it is likely that the New User figures were affected by the cause of the discrepancy. Viewed in the context of the rest of his evidence, it is clear that he considered the New User numbers were sufficiently reliable, despite the discrepancy.

(5)    The respondents' submission that Mr Simonetti's evidence about the nature of the review that he conducted was unsatisfactory exaggerates the inconsistencies in that evidence by juxtaposing specific words from a longer passage of the cross-examination. That passage is set out at [333] above. Read fairly and as a whole, it is to the effect that Mr Simonetti conducted a detailed review, but not of every line, because the data was broken down between numerous countries and cities and examining the lines of data for each of them would have delivered diminishing returns.

(6)    JAS also submitted that I should draw a Jones v Dunkel inference about the reliability of the JDS Google Analytics data arising from JDS's omission to call its marketing manager, Ms Burstein to give evidence (Jones v Dunkel (1959) 101 CLR 298). She was responsible for establishing the Google Analytics account. But there is no reason to think that Ms Burstein would have been able to shed any light on the somewhat technical issues surrounding the reliability of the JDS Google Analytics data, and I decline to draw any such inference in this context.

265    I have reached the above views in a context where the issue at hand is the magnitude of the number of people visiting each website. Absolute accuracy in determining that magnitude is not necessary. And that magnitude will in turn will feed into an assessment of the extent to which the parties' respective trading names and logos have acquired a reputation in Australia. Answering that question requires an evaluative approach, not a precisely quantitative one.

266    In that context, despite the discrepancies, it is inherently unlikely that the JDS Google Analytics data is illusory, in the sense that the numbers are simple hallucinations of Google's data collection process. The data for Perth in the JDS Google Analytics data illustrates the point: it shows 729,046 New Users and 242 Users; obviously the second of these is wrong but it does not follow that the first should be discarded entirely. It is, entirely plausible that 729,046 or more users visited the JDS Website from Perth; whether it is precisely that number does not matter in the present context.

267    It is worth making the additional point that the respondents and Mr Jones sought to minimise discrepancies in the Google Analytics data that the respondents presented, while at the same time seeking to emphasise the discrepancies in the data presented by JDS. The JAS Google Analytics data is considered below when I come to assess JAS's reputation, and JDS did not seek to attack the reliability of that data. But it is worth looking at the submissions the respondents put about their data because, in my view, some of the points made are also valid in respect of JDS's data.

268    The respondents appear to accept the correctness of two points that were made to Mr Jones in cross-examination: that in the JAS Google Analytics data, in many instances the User figures only marginally exceeded the New User figures; and that there was one instance of the New User figure exceeding the User figure. The respondents nevertheless submit that their data does not suffer from the same discrepancies from which the JDS data suffers, and that some weight can be placed on it. According to the respondents, the first point made to Mr Jones is of little moment given that neither expert expressed the view that the User figure only marginally exceeding the New User figure was on its own a reason to question Google Analytics data, and both accepted this is possible. Also, in his oral evidence Mr Jones confirmed that JAS's data was otherwise in line with industry benchmarks. As for the latter point, the respondents say it is an isolated discrepancy which appears to be a summing error.

269    I agree that the second point is of little moment. But I do not agree that there is any real distinction between the first point, and the main discrepancy found in the JDS Google Analytics data. Certainly the discrepancy is starker in JDS's data, with the User figures being lower than the New User figures, and in many cases much lower. But both experts considered that in such data, the true number of Users likely to be substantially larger than the number of New Users. Both experts considered that where the number of Users did not exceed the number of New Users by very much, the proportion of New Users to Users was unusually high. This all stands to reason; if the numbers are not substantially different, then the website in question would have received very few repeat visits, which seems inherently unlikely. As Mr Jones explained in his report, 'The close alignment of users to new users indicates that the website receives very few repeat visitors, and relies on no repeat business. In my experience, this is possible but unlikely' (TB 301 p 3031).

270    So there must have been one or more issues interfering with the accuracy of the numbers collected in the JAS Google Analytics data, just as there was for JDS's. Indeed, it is arguable that the problem is worse for JAS, because for JDS the very low User numbers are clearly wrong, while with the JAS numbers it is not clear which of the two (User or New User) is wrong, potentially calling both into doubt.

271    Nevertheless, Mr Jones accepted that at least the New User numbers in the JAS Google Analytics data were reliable. This, along with the relative absence of supporting reasoning for Mr Jones's opinions is why, with respect, I am inclined to put less weight on his opinions than on those of Mr Simonetti. He appeared to me to be willing to adopt inconsistent views, and this compared unfavourably to the broad consistency of Mr Simonetti's evidence.

272    In the end, each of the experts was prepared to accept relevant figures produced by the party calling them as reasonable, in the context of the data sets as a whole and their industry knowledge, and neither expert went so far as to say that the data produced by the other party was worthless. Given that, as I have said, precision is not necessary in this area, I am prepared to accept the New User figures in the JDS Google Analytics data as a reasonably approximate indication of the extent of traffic to the JDS Website from different parts of Australia during the relevant period. The true number of Users is likely to be significantly higher than the number of New Users, but the evidence does not indicate how much higher (even in terms of orders of magnitude) so the New Users figures are the only ones on which reliance can be placed.

Assessment of JDS's reputation

273    It is now possible to reach findings about three aspects of JDS's reputation. The first is how extensive it was throughout Australia as at October 2018, and in particular whether JDS had any substantial reputation outside Western Australia and the Northern Territory at that time. The second is the nature of the reputation, that is, whether (as the respondents submit) it was mostly connected to in-store sales and to direct order sales (for example by schools or government agencies) with little of it being conducted online. And the third is the class of persons who were aware of the reputation in connection with the JDS Names. That is the class of persons who, on JDS's case, were misled. As is explained further in Section VI below, the impugned conduct is to be assessed by reference to its likely effect on ordinary and reasonable members of that class.

The extent of JDS's reputation

274    The respondents submit that JDS is primarily a Western Australian and Northern Territory 'in-store trader'. They say that otherwise most of its business is account based with wholesale, institutional or retail traders. It differentiates its business as being locally based, and trades on its local identity. The respondents point out that JDS has not adduced evidence of a single sale outside Western Australia or the Northern Territory.

275    The respondents also submit that JDS's online sales are small, both objectively and when compared to JDS's in store sales. In 2010 they were a mere $8,325.74, which was only 0.06% of JDS's total sales. But that appears to have been at a time when the JDS Website had no online ordering capability, so I place no weight on the small size of the sales figure for that year. It was not until 2011 when ordering capability was apparently added to the website that online sales became a real possibility.

276    By 2016 online sales were up to 4% of total sales. After that, JDS's accounts ceased to differentiate online sales from Head Office sales made through other channels. I have already found that it is reasonable to estimate JDS's online sales at 20% of the Head Office sales shown in the accounts. That yields an online proportion of 3.7% of total sales for 2017 and 3.6% for 2018.

277    JDS criticises any attempt to separate its online reputation from its reputation generally. For the purposes of s 18 of the ACL and the tort of passing off, it is reputation in general that matters, not online reputation. Further, a business's online promotion and sales will enhance the reputation of its physical stores and sales and vice versa, so it is artificial to seek to distinguish between the two. Also, a website (JAS's) can still make misleading representations that lead a consumer to believe that it is the website of another (JDS) even if the latter website has no significant reputation of its own.

278    As general propositions, JDS's submissions are correct. But they do not remove the need to assess the extent of JDS's reputation online in the particular context of this case. That is because there is no direct evidence that JDS has any reputation outside Western Australia or the Northern Territory, other than the evidence that people outside those regions have visited the JDS Website. And while the pertinent issue is JDS's reputation and goodwill in Australia generally, the extent to which that reputation is localised to places within Australia is, at least, relevant to the discretion to grant relief. I do accept, however, that the need to look at JDS's reputation in connection with its website should not lead to the drawing of distinctions that distract from the fundamental question of whether, within Australia, the respondents' conduct was misleading or deceptive.

279    JDS submits in any event that when the conduct it impugns commenced, that is, October 2018, it had a far greater reputation than JAS in Australia. It points to the JAS Google Analytics figures above, showing 26,326 Users from Australian to the JAS Website in 2017, and compares that with the JDS Google Analytics figures for 'New Users' for the JDS Website of about 100,000 for the same year. While that may be so, the question of reputation in the present context does not engage comparison of the relative popularity of the JDS Website and the JAS AU Site. It is not a competition between the two. The present question is the extent of JDS's online reputation, particularly among web users outside its core markets.

280    I have concluded that JDS has established that, as at October 2018, it had a reputation and goodwill in connection with the JDS Names throughout Australia which was substantial enough to provide a context within which JAS's alleged conduct may mislead or deceive. Its reputation thus meets the minimum threshold necessary to support a claim for breach of s 18 of the ACL or for passing off; putting it another way, any conduct on the part of the respondents which associates them with JDS's reputation will not be commercially irrelevant. JDS has not, however, established that its reputation exceeded that threshold significantly, outside its core markets.

281    I have reached those conclusions for the following reasons.

282    First, there is no real dispute that at all material times JDS has had a substantial and extensive reputation within its core markets. It has a long history of trading, an extensive network of urban, suburban and regional stores, and in recent years substantial annual sales in the order of $9 million. And throughout, it has traded under the JDS Names (albeit without rigorous consistency in its branding). The word 'Jacksons' has been given particular prominence on its stores, corporate livery and promotional material.

283    There are also numerous documents in evidence showing that JDS has been active in sponsoring and participating in community art organisations and initiatives. That strengthened its reputation and goodwill in its core markets.

284    Second, as I have indicated, on the authority of Pham, the Court does not need evidence to find that people who have been located in Western Australia and the Northern Territory for a time, and who were thus aware of JDS's business in connection with the JDS Names, travelled freely within Australia and frequently moved around it: see [138]-[141] above. Allsop CJ made a similar point when, in Winnebago (No 1), he referred to 'residents or visitors' (see [117] above). That, coupled with JDS's substantial reputation associated with the JDS Names within its core markets, mean that a not insignificant number of people outside those regions are likely to be aware of the business and to associate it with those names.

285    I would not, however, take Pham further than that, so that to establish an extensive reputation in Western Australia is to establish an extensive reputation throughout Australia. As I have emphasised in the discussion of Pham above, the relevant conclusions in that case were premised on findings that the industry in question (radiology) was a specialised national industry with particular characteristics: see in particular [142] above.

286    It is true that in cross-examination in this case, Mr Thompson accepted that, notwithstanding the presence of the warehouse in Adelaide, JAS was intending to reach consumers of specialist art products located in every state and territory in Australia. He also accepted that was because JAS considered the market for the supply of specialist art products in Australia to be a national market. Mr Thompson confirmed that had always been JAS's position, including as at October 2018. But the fact that people throughout Australia buy art supplies does not mean that the market for such products is 'national' in the requisite sense. Nothing in the evidence suggests that the market in which JDS operates lends itself to a level of national awareness of participants in the market, in the way that the specific characteristics of the radiology market did in Pham (see in particular [135] above). I therefore do not place the extensive reliance on that case which JDS urged.

287    Third, JDS has maintained a website since 1997, that is, nearly thirty years. For most of that time, the website has had online purchasing capability. Following Pham, evidence is not necessary to establish that the internet is a ubiquitous part of life in Australia. And it is consistent with ordinary experience in contemporary society to find that many people using search engines to find art supplies are likely to encounter the JDS Website and thus learn about JDS's business and its brand. It is unlikely that those persons were only located in Western Australia and the Northern Territory. But the evidence does not make it possible to say how frequently that occurred. Mr Jones's evidence about keyword rankings all concerned terms that included the name 'Jackson'; it does not touch on the rank that JDS (or JAS) had in Google results for searches for art supplies conducted without the use of that name.

288    Fourth, I have, however, found that the JDS Google Analytics data shows an approximate minimum number of persons from outside Western Australia and the Northern Territory who have visited the JDS Website. It follows that those persons were exposed to the business and to its associations with the JDS Names and the JDS branding. On that basis, and on the basis of the more general points I draw from Pham, I conclude that a not insignificant number of persons outside Western Australia and the Northern Territory became familiar with JDS's business through the JDS Website, and associated it with the JDS Names.

289    That, together with the other matters just described, means that JDS has established the threshold level of awareness to support a claim for breach of s 18 of the ACL (or s 29, or passing off).

290    The respondents submit that the JDS Google Analytics data only show people visiting the JDS Website, not people wanting to buy. That is correct, but the fact that sales are often taken as good evidence of reputation does not mean that sales are the only evidence available on that subject. People visiting the JDS Website will thereby gain knowledge of, and sometimes familiarity with, JDS's business and its trading names and branding and the association between them. The JDS Google Analytics data is relevant to the issue of reputation, even if not every visit represents a concluded sale.

291    But it cannot be said that, outside Western Australia and the Northern Territory, the number of people familiar with JDS is large: see Appendix 3. As said above at [205] the total number of visitors to the JDS Website outside its core markets from 2015 to 2018 was 92,509 (22.9% of the total from Australia as a whole). That, together with the relatively small percentage of JDS's total sales that are comprised of its likely online sales, lends support to the respondents' submission that the online aspect of JDS's business is a minor and incidental part of its business overall.

292    Further support for that view may be found in the fact that between 2009 and 2011, the JDS Website did not even have online ordering capability. A business that placed significant reliance on its online sales would hardly allow itself to lose that capability for that length of time. While that was some seven years before the commencement of the allegedly contravening conduct, the lack of substantial growth in online sales as a percentage of total sales since then suggests that JDS's approach to the online aspect of its business had not changed much since then. And the fact that JDS has adopted an accounting system incapable of identifying online sales confirms that this sales channel has not been an important one for the company in the years leading up to the commencement of the impugned conduct.

The nature of JDS's reputation

293    The evidence canvassed above supports the respondents' submission that JDS's reputation is mostly connected to in-store and account business in its core markets, with a small part online. The sales figures above and the findings about JDS's online reputation bear that out. Clearly, the preponderance of JDS's sales were in its core markets, in its stores and to account customers.

294    I do not, however, put the same significance on this as JAS does. I will address in Sections V and VI below its submissions that the two businesses were sufficiently distinctive to mean that consumers were not misled. But for present purposes, it would be a mistake to draw any firm distinction between an 'online' reputation and a reputation associated with other forms of trading. All a business's trading activities can provide a context in which impugned conduct can mislead. A person may be aware of JDS because they have bought art products at its physical stores, and still be misled when exposed to JAS's activities online.

The class of persons who were aware of JDS's reputation

295    The respondents submit that JDS has failed in its onus to show who is the ordinary and reasonable consumer allegedly being misled by their conduct.

296    With respect, the basis on which this submission is made is unclear. I have already disposed of the respondents' submission that is necessary to identify a single hypothetical consumer with the necessary characteristics. Rather, what is necessary is to identify a class of persons.

297    The class here includes retail consumers who are arts and crafts enthusiasts, or casual users of arts and craft products, who are likely to have bought products from one of JDS's stores. It also includes professional artists, teachers, hobbyists and students. It also includes those who purchase or use the products in and on behalf of schools and other institutions (for example the police force and prisons). As senior counsel for the respondents submitted, those last mentioned customers engaged with JDS by placing order forms via its catalogues, examples of which were in evidence. The relevant class of customers also includes wholesale customers, who presumably are retail operators who stock their own range of art products (for example newsagents). All this emerges with tolerable clarity from the evidence described at [158]-[160] above.

298    The respondents submitted that the ordinary and reasonable consumer of JDS 'is someone who has shopped at JDS before, knows the JDS brand, its shop signage and distinctive web page, knows the business strongly affiliates with Western Australia and the Northern Territory, and/or who shops online, more often than not using a shopping account or purchase order' (RCS para 37). I deal with a legal aspect of that submission below (see [477] and following). For now it is enough to say that there is no evidence to support the view that all reasonable members of the class of consumers are likely to have that relatively extensive and sophisticated level of knowledge of JDS and its history and operations.

299    In truth, the class will encompass people with less knowledge of JDS's business than the submission describes. Casual and dedicated users of arts and crafts products, artists, teachers, hobbyists and students comprise a wide cross-section of members of the public. For example, a person who drives past one of JDS's stores every day and therefore knows of JDS's business and trading names, but has never shopped there or held an account with JDS, and who is embarking on an online purchase of art supplies for the first time, may fall within the relevant class of ordinary and reasonable consumers. It will be convenient to refer to that class of persons as consumers of art products.

V.    JAS'S TRADING AND REPUTATION IN AUSTRALIA

The evidence

JAS's sales in Australia

300    JAS's sales figures in Australia from 2005 to 31 July 2023 are in evidence. They are as follows (the years are calendar years):

* to 31 July 2023

301    So it can be seen that for the 13 years from the beginning of 2005 to the end of 2017, total sales in Australia were £547,595.83. JDS submits that I should conclude from this that JAS did not have any reputation, or at most a small reputation, in Australia when the impugned conduct commenced. But in my view, the figure for the 14 years to the end of 2018 is more meaningful, as that includes only a few months after the impugned conduct commenced. That sales figure is £838,614.48. In any event, it appears that sales picked up significantly from 2019, so that for the 4½ years from then to the date where the sales figures end (31 July 2023), JAS's Australian sales totalled £3,861,254.43.

JAS's online presence

The JAS Website

302    As has been said, JAS has a small number of brick-and-mortar stores, but they are all in the United Kingdom, and no party suggested that they were relevant to this proceeding. All the relevant trading, being sales to Australian customers, has occurred by way of the JAS Website (apart from a small number of telephone sales).

303    The JAS Website has been accessible to Australian users at the domain name jacksonsart.com from 2001. JAS has accepted orders via the website from various parts of the world including Australia since that time. Although its sales records only go back to 2005, Mr Venus's evidence was that persons located in Australia could and did purchase products from the JAS Website from as early as 2001, although he concedes that the number of sales then was small.

304    At least in so far as Australia is concerned, until 2022 products so ordered were exclusively supplied by sending them from the United Kingdom.

305    Mr Thompson's unchallenged evidence was that the JAS Names appeared on the JAS Website from 2001. This included a stylised script 'Jackson's' logo, although the specific one depicted at [20] above was not adopted until about 2015.

306    Screenshots of the home page of the JAS Website from time to time appear at Appendix 2 to these reasons. It can be seen that for some of the time, the phrase 'Jackson's Art Supplies' appeared prominently at the top of the page, with a stylised script 'Jackson's' as by far the largest word. From June 2005 to sometime between February 2009 and February 2011 only that stylised script word 'Jackson's' was used as the prominent logo in the banner. And that has also been the case at all times since late 2015.

307    From 2013, the JAS Website featured a drop down menu which permitted the user to select different currencies in which to shop. Initially that menu was not available on the home page but was available on product pages. The default setting was pounds sterling.

308    The AUD was among the available alternative currencies. The site accepted payment in Australian dollars via PayPal from September 2013, and from December 2013 via an e-commerce integrated payment processor called Sage Pay, that is, within the checkout page on the JAS Website. So if the AUD option was selected, an Australian customer's banking card provider would not need to convert payment into pounds sterling. From June 2015 the same functionality was offered via a different back end e-commerce platform.

309    From 2013 to late 2015 the only other alternative currencies were the Euro and the US dollar. From late 2015 until October 2018, the user could select between 11 currencies, including GBP and AUD. From about 2015, the currency selection menu appears to have been available from all pages on the JAS Website, not just product pages.

310    From about September 2007, JAS sold through amazon.com as well as through the JAS Website. Customers in Australia could buy from JAS using the Amazon platform. Amazon established an Australia-specific online store in about 2018.

311    The function of the JAS Website including the JAS AU Site (and of the Amazon platform) was to sell fine art products and craft products. The respondents made an attempt to differentiate JAS's product lines from those of JDS, but the evidence establishes a very substantial overlap between the two. It would appear that JAS's range is wider than that of JDS, and it would also appear that JDS trades in more lines of what could be called craft products (for example, glues) than fine art products. But despite Mr Thompson's attempts to emphasise the fine art character of JAS's product offerings (as best he could under cross-examination), no evidence has been presented to persuade me that any reasonable consumer of art products would think that there is any significant difference between JAS's product line and that of JDS. While JAS's is more extensive, there is nothing to suggest that this or anything else about the character of its offerings would be apparent to an online browser or purchaser, in such a way as to cause them to differentiate between the two companies.

312    Nor did the evidence provide any reason to think that the class of people likely to use the JAS Website was significantly different to the class of consumers familiar with JDS and the JDS Names. Mr Thompson accepted in cross-examination that his company's products were bought, not only by professional artists, but also by teachers, students and hobbyists; compare Mr Boercamp's evidence at [159] above. JAS offered specific programs to tertiary students and to teachers through the JAS AU Site (see [418] below). So there would also be some overlap between those segments of JAS's market and the school customers who were accustomed to using order forms or an online account to procure products from JDS. To the extent that there were some institutional account customers of JDS that were unlikely to be customers of JAS (for example, prisons), that difference is of no importance to the issues in this proceeding.

313    All this means is that a submission made by the respondents that the two companies were 'in different trading realms' (ts 41) is not correct.

The JAS AU Site

314    The AU Pop Up as at September 2019 appears in Appendix 2 to these reasons. Uncontested submissions indicate that between October 2018 and May 2023, this appeared to any user accessing the JAS Website from a device with an Australian Internet Protocol (IP) address. It is from this point on, JDS submits, that the character of JAS's conduct changed, and JDS only alleges that the conduct after that time constituted contraventions of the ACL and passing off.

315    It will be seen that in prominent lettering at the top of the AU Pop Up, presented over an Australian flag, there appeared the statement: 'HELLO, IT LOOKS LIKE YOU ARE IN AUSTRALIA' and then underneath that the question 'Would you like to shop in AUD ($)'. Benefits and shipping discounts available were then described, and payment and shipping options were then set out (one of which was Australia Post). At the bottom there were what appear to be buttons that enable the user to select shopping in AUD or in GBP.

316    If the user selected the AUD option, they were directed to a home page appearing on the JAS AU Site. This is also in Appendix 2.

317    The default currency on the JAS AU Site was Australian dollars, although it appears that the user could still select different currencies from a drop down menu. Assuming that they did not, then AUD, as well as an Australian flag, or, in the case of some pages, the word 'AUSTRALIA' at the top of each page of that site, appeared in the top right hand corner of every page.

318    As had been the case from 2015, the website was also prominently branded with the stylised script 'Jackson's'. Until October 2022, a London address and United Kingdom telephone number appeared in clear, but not especially prominent text, in the footer of the home page. The evidence does not make it clear whether this was at the bottom of each page on the website, but the numerous examples in evidence established that it was at least on very many of them.

319    Other features of the JAS AU Site included the following text on the welcome page (as at June 2020):

WELCOME TO JACKSON'S ART SUPPLIES

Jackson's is one of the largest fine art suppliers in the world. We are passionate about fine art materials and stock a vast range, catering to the unique needs of every artist.

From selling a dozen products out of a gallery basement, we now ship orders to tens of thousands of artists around the globe.

320    On what appears to be the equivalent page as at November 2021, there is the text: 'Founded in London in 2000, Jackson's offers a vast range of art materials to artists from all over the world'. Also, a fairly inconspicuous link at the bottom of the page under 'CUSTOMER SERVICES' offers 'Brexit Updates'.

321    Generally it appears from the images in evidence of the JAS AU Site that from the introduction of the Adelaide based contact details in mid-2022 (see [421] below), these standard contact details on the bottom of each page (or most pages) were Australian rather than British. But the respondents point to United Kingdom references on the JAS AU Site even after that time, for example a welcome message referring to JAS's founding in London in 2000.

322    Setting aside the changes in mid-2022, the other characteristics of the JAS AU Site just described were present throughout the relevant period covered by the evidence, that is, from October 2018 onwards. But from 30 June 2023, the AU Pop Up did not appear to Australian users; they were simply directed by default to the JAS AU Site.

323    Apart from the Australian flag and currency, there was other content on the JAS AU Site that was specific to Australia. For example, there was a page headed 'Student Program' which offered that program to 'support Australian students'. The same page also contained a link to a teacher program offered 'to support art teachers across Australia'.

324    Mr Thompson's evidence was that the change to an Australia-specific website was part of a strategy of updating the JAS Website to include country-specific storefronts for various different countries, namely Germany, the United States, Canada, Australia and France. This was rolled out between about May 2018 and February 2019. In cross-examination he accepted that one of the motivating factors was to create an online storefront which gave visitors a more country-specific experience, and to make it easier for the customer, once they arrived. He said, 'It's to make people from those destinations feel more at home on those storefronts' (ts 157), and accepted that his intention 'was to make an Australian consumer visiting the Australian online store more receptive to the fact that [JAS was] speaking to them … Yes, we were making them feel more comfortable so they would know that they could get their orders quicker and cheaper shipping.' (ts 162). He also accepted that this was done because it would help to increase sales.

325    The expert witness called by the respondents, Mr Jones, similarly accepted in cross-examination that country-specific content at a country-specific domain name (or subdirectory) 'would ordinarily increase the likelihood of consumers for that country engaging with the website'. He also accepted that it would convey to users of the website that those running the site 'were specifically interested in selling to users in that country' (ts 275). He further accepted that using a visitor's local currency as the default currency for the online store at a country-specific domain name (or subdirectory) 'would increase the likelihood of the consumers in that country engaging with the website … because it also conveys to visitors of the website on that country-specific subdomain that the website is tailored for consumers of that country' (ts 275).

Traffic to the JAS Website

326    Mr Jones accepted that the combination of the use of a country-specific domain name (or subdirectory), together with references to the country and content specific to it on the pages made available at that domain name, would increase the likelihood that the website would attract traffic from Google in response to users in that country conducting searches.

327    The JAS Google Analytics figures in evidence show visits to the JAS Website for devices that Google Analytics identifies as being in Australia. I have already described the respondents' submissions about the reliability of the JAS Google Analytics data. While I have criticised the respondents and Mr Jones for inconsistency in the approaches they have taken to the Google Analytics evidence adduced by both parties, JDS did not challenge the reliability of the JAS Google Analytics data, and for reasons discussed above the New Users figure is, at least, reliable.

328    The JAS Google Analytics data show New Users visiting the site from Australia as follows:

* to 25 June 2023

329    There were steady but modest increases in these numbers each year from 2011 to 2017 inclusive. But from 2018 onwards, significant ongoing increases can be observed.

330    Mirroring this is evidence about a painting prize competition that JAS has run since 2016. In the first three years of its existence, the prize attracted small numbers of Australian entries (in the order of five, often from the same person). Then the numbers of Australian entries began to rise, to 15 in 2019 to 125 in 2023 (compared to total worldwide entries in that year of 11,225).

331    Similarly, Mr Jones's opinion was that since January 2012, Australian traffic to the JAS Website increased, peaking in November 2020 at approximately 56,568 visits per month from organic searches. He produced the following graph:

332    A significant increase starting in the second half of 2018 can be observed. This can be compared to Mr Jones's evidence about organic traffic to the JDS Website, set out at [206] above.

333    In Mr Jones' opinion, the decline in the traffic of both the JAS and JDS Websites from 2020 to 2023 is explained by the COVID-19 pandemic. This 'provided a boom period for many businesses in the arts, crafts and hobby industries around the world, as people in lockdown turned to home based activities' (TB 301 p 3032). So there was a corresponding decline in demand for home based activities when the pandemic eased.

334    Mr Jones's evidence was that the JAS Website was the top-ranking site shown in Google search results for search terms that included: 'jackson art australia', 'jackson art supplies australia'; 'jackson's art australia'; 'jackson's art supplies'; and 'jackson's'. Further his evidence was that the JAS Website was the second ranking website, behind the JDS Website for the search terms 'jackson drawing supplies' and 'jacksons drawing supplies'. Presumably this was as at the time of his report, in January 2024.

335    Mr Jones's evidence about the behaviour of search engines in this regard was (TB 301 p 3036):

In my experience, this is the expected split between two similar brands. Search algorithms are very sophisticated now, and are able to split between the two brands. A company named 'Jacksons Drawing Supplies' should, all things being equal, rank in position 1 for that term, but a company called 'Jacksons Art Supplies', that also sells art supplies that could be considered drawing supplies, would also be expected to rank for the same term.

336    Mr Simonetti disagreed that search algorithms are able to split between the two similar brands, and also disagreed that the keywords data that Mr Jones presented was the expected split. His reasons were, however, not based on disagreement about the behaviour of the search engines, but were rather based on views about the behaviour of the people performing the searches. In short his view (based on what he said was common knowledge in the SEO field) is that consumers do not always search for a business using words closely matched to the business's name, but can often search using terms that reflect knowledge of the name and also knowledge of what the business sells. So, in Mr Simonetti's view, a user searching for JDS's business online might enter the words 'Jacksons' and 'art' or 'art supplies' because they know that is what JDS sells. But in that situation, according to Mr Jones's data, users in Australia would be directed first to the JAS AU Site.

337    Mr Simonetti did not waver in his opinion despite detailed cross-examination. He rejected, for example, the proposition that he had made an assumption that JDS was trading under the names 'Jacksons Art' and 'Jacksons Art Supplies'. He was, rather, simply describing that consumers were likely to search for, in the context of branding for both businesses which he appeared to describe as 'very generic in nature from a user's standpoint' (ts 320). While his evidence was said to have been based on broad knowledge of user behaviour unsupported by specific academic or other sources, it was not challenged as to admissibility on that or any other basis, and it accords with common experience. I accept Mr Simonetti's evidence in this regard. It follows that, as JDS submits (RCS para 53), it is likely that a number of users intending to search for JDS will enter terms that return the JAS Website as the first ranked search result. This finding will be relevant in Section VI below, when I come to consider whether the impugned conduct was misleading or deceptive.

338    Mr Jones reached the following conclusions about traffic to the JAS Website (including the JAS AU Site) compared to traffic to the JDS Website (TB 301 p 3023):

[The JAS Website] has had a presence in the Australian market since at least January 2012, and likely earlier given the data from the Internet Archive's Wayback Machine. Over this period, they have experienced more organic search growth than [the JDS Website], including ranking for more organic keywords (17,200 vs 4,100), having more backlinks (1 million vs 12,200) and having more referring domains (19,400 vs 401).

339    A backlink is a link to a website that is located on another website, and a referring domain is a website that contains a backlink. So according to Mr Jones, many more websites contain hyperlinks to the JAS Website than the number of websites that contain hyperlinks to the JDS Website.

340    Mr Jones also expressed the following opinion (TB 301 p 3028):

While [the JAS Website] initially had significantly lower organic search traffic and ranked for fewer keywords than [the JDS Website], this grew over the last 11 years to a point that [the JAS Website] has more Australian traffic, ranks for significantly more organic keywords (17.2k v 4.1k), has more backlinks (1M vs 12.2k) and more referring domains (19.4k vs 401k).

341    It seems, however, that the statistics Mr Jones presented are worldwide, and so do not provide a measure that correlates to the reputation of either website in Australia.

342    Mr Simonetti was asked to comment on these passages in his report. According to him, rankings for organic keywords, backlinks and referring domains are not (TB 195 para 25):

the most important parameters for understanding the 'presence in the Australian market' of a particular website. In my view, a better data point for the 'presence' of a website in Australia is the number of visitors to that website who are located in Australia. This is because the number of organic keywords, backlinks and referring domains does not of itself indicate the presence of a website in a particular market. Put another way, Website A may have a substantially greater number of Australian users than Website B, notwithstanding that Website B has a significantly greater number of organic keywords, backlinks and referring domains.

343    Mr Simonetti therefore said that he does not agree with Mr Jones's opinions as to the JAS Website having greater Australian traffic, higher ranking for organic keywords, organic search domains, more backlinks and more referring domains.

344    In cross-examination, however, Mr Simonetti accepted that organic keywords, backlinks and referring domains could be used to make a comparison between the 'presence' of two websites, but maintained that it would be necessary to have regard to the nature of the businesses more generally. 'You would look at the data and say, does that data seem reasonable based on the business presence of those entities?': ts 289.

Social media and other channels

345    The respondents also rely on Mr Thompson's evidence about JAS's social media presence. JAS joined Instagram in 2013 and as at October 2023 had approximately 393,000 followers. As at 21 June 2023 3,693 of those were Australian. On Facebook, which it joined in 2009, its page has 49,000 page likes and 55,000 page followers, with 1,589 Australian followers (as at 21 June 2023). It had 24,800 followers on Pinterest (as at 20 June 2023) and 57,600 subscribers on YouTube with 9,961,076 views (as at June 2023). It had 2046 followers on TikTok (as at 20 June 2023).

346    As at 17 August 2023, 17,301 Australian customers had a customer account with JAS. This compared to 507,578 globally (of whom roughly half were in the United Kingdom).

347    JAS had 7,970 subscribers to its newsletter mailing list as of 17 August 2023 (compared to 193,928 worldwide and 146,999 in the United Kingdom).

The establishment of JAA and the Adelaide facilities

348    JAA was incorporated in April 2022. As has already been said, it is common ground that JAS owns 90% of the equity in JAA via an intermediate holding company, the third respondent JAH, and Mr Baumgartner and Ms Sadri hold the remaining 10% through the fourth respondent, PCP.

349    Mr Thompson agreed in cross-examination that JAA 'was incorporated for the specific purpose of having an Australian company on the ground in Australia' to facilitate JAS's Australian operations.

Changes to the JAS AU Site

350    From mid-2022, the JAS AU Site displayed an Adelaide address in the footer of each page, in place of the London address previously displayed. It also displayed an Australian telephone number designated as a 'customer service' number, and gave opening hours for that telephone number in Australian Central Standard Time, that is, Adelaide time. It can be inferred from the images in evidence of the JAS AU Site that this appeared on the website from mid-2022.

351    On an 'About Jackson's' page on the JAS AU Site (as at November 2023), before information about JAS's founding in the United Kingdom, the following text appeared:

MEET THE TEAM

Here in Australia, you'll find a dedicated team filled with great enthusiasm. They are all hands-on and fulfil customer orders from our new warehouse in Adelaide that now houses Jackson's Art Australia. This means faster, more economical and greener deliveries of art materials to artists in Australia, as well as a local Customer Service Team. We're busy stocking up the warehouse with an extensive and diverse range of products, similar to the range we currently supply from the UK.

The team is fully committed to providing the best prices, most comprehensive range, and best service in Australia and New Zealand.

352    Another page on the JAS AU Site to which JDS refers is headed 'SHIPPING, TAX, CUSTOMS FEES & DUTY'. It appears to have been reached by clicking on one of numerous links at the bottom of (at least) the home page, this one in a column headed 'HELP'. The page contains information on 'ORDERING FROM OUR UK WAREHOUSE', 'ORDERING FROM OUR AU WAREHOUSE' and 'ORDERING TO NEW ZEALAND'. In relation to the Australian warehouse it was said that 'If the products in your Basket are available in our AU Warehouse, the order will be shipped domestically'.

353    In cross-examination, Mr Thompson accepted that the intention of including this text on the JAS AU Site was to convey to Australian consumers that JAS was providing a more localised service, so as to increase sales to Australian consumers. JAS wanted to make Australian consumers 'feel more comfortable so that they would know they get their orders quicker and cheaper shipping' (ts 162). The intention was to convey this to consumers across Australia, not just in Adelaide. He effectively accepted that JAS has always treated Australia as a national market.

JAA's role in product sales

354    Mr Thompson's evidence was that Mr Baumgartner and Ms Sadri comprised the customer service team who would answer calls to the Australian telephone number that appeared on the JAS AU Site. In cross-examination he agreed that he considered it advantageous for Australian consumers to be able to call an Australian customer service telephone number during Australian business hours. According to him, the purpose of opening a local telephone line in Australia was so that customers could call during Australian business hours to place orders. On the basis of the pleadings it is common ground that from October 2022 to February 2023, 16 orders were placed that way. But there is no clear evidence about any phone orders outside that period.

355    More often than telephone sales, though, JAA received customer orders that were placed on the JAS AU Site. Purchases made that way were from JAS as vendor. Mr Baumgartner's evidence was that if JAS's e-commerce software identifies that the delivery address is in Australia or New Zealand, and that the items are in stock in JAA's Adelaide warehouse, then the order is directed to JAA to pick, pack and ship. If JAA does not have the products then they will be shipped from JAS's United Kingdom warehouse.

356    While the customer's order is usually placed with JAS via the JAS AU Site, not JAA, there was evidence of occasions on which JAA invoiced business customers directly, including on one occasion with an invoice bearing the stylised script JACKSON'S logo. It is not clear how often that happened, and no party suggested that business customers were a significant part of JAA's revenue.

357    The respondents admit that from at least mid-2022, JAA dispatched products purchased by Australian consumers on the JAS AU Site under the JAS Names and communicated with Australian consumers with respect to purchases under or by reference to those names. They say, however, that JAA did so on behalf of JAS and under its direction.

358    Since that time, the packaging for goods dispatched by JAA to fulfil orders placed on the JAS AU Site has borne the URL pf the JAS Website and the 'Jackson's' stylised script logo as follows:

359    However, the following notation also appeared on the packaging:

360    This evidence was the result of a trap purchase conducted by a solicitor acting for JDS, Laura Tatchell. Ms Tatchell received confirmation of her order from a jacksonsart.com email address with the email signature 'The Jackson's Team' and giving the address of the Campbelltown (Adelaide) warehouse. Ms Tatchell also placed calls to the Australian telephone number shown on the JAS AU Site. They were answered by Ms Sadri identifying herself as 'Maggie from Jackson's Art'.

361    There is also a South Australian address for product returns given on the JAS AU Site, where it is said that 'our experienced Customer Service Team' will be on hand to help. In context, this is identifying that team as being JAS's customer service team. The team that handled returns to that South Australian address was in fact Mr Baumgartner and Ms Sadri of JAA.

362    According to Mr Baumgartner, JAA pays all the expenses necessary to maintain the warehouse and dispatch functions, including rent (it leases the warehouse), salaries, purchase of stock and electricity. JAA is remunerated by JAS crediting to JAA's account 90% of the value of the relevant sales.

Assessment of JAS's reputation

363    The evidence that has been canvassed in this section of the judgment is relevant to a number of issues. One is whether JAS and JAA have engaged in misleading or deceptive conduct (or passing off) as alleged in JDS's claim. For the evidence described above is evidence of the conduct that JDS impugns; broadly, what it labels 'targeting' of Australian consumers by trading under the JAS Names via a website tailored to Australian consumers and with customer service and order fulfilment from an Australian location.

364    Another issue related to that is whether JAS had developed its own distinctive reputation, well-known to Australian consumers of fine art products, which meant that they were unlikely to confuse it with JDS and its own distinctive and different reputation. Part of the alleged distinctiveness involves what is said to be a difference between JAS's product line and that of JDS. This is part of the respondents' defence to the misleading conduct claim against them.

365    Another relevant issue concerns JAS's reputation as necessary context to the cross-claim which is resolved in Section IX below.

366    A further issue is the history and extent of JAS's trading in Australia as relevant to the discretion to grant relief, which is addressed in Section X.

367    In the context of those issues, it is convenient to reach some conclusions about the nature and extent of JAS's reputation and goodwill in Australia now.

368    The respondents submit that the Court should find that JAS has established a substantial reputation among consumers of art products in Australia under the JAS Names and the stylised script 'Jackson's' logo. It submits that this reputation was created shortly after it began trading in Australia in 2001 and certainly from 2005, which is the first year for which sales into Australia are in evidence.

369    The respondents further submit that the Court should accept Mr Jones's evidence that JAS has been selling to customers in the Australian market since 2005. Although Mr Jones's data only went back to 2012, his view that JAS had a presence in the Australian market from that time is consistent with what is suggested by the sales data.

370    The respondents further submit that the Court should conclude that since January 2012, the JAS Website has experienced more 'organic growth' than the JDS Website (RCS p 26). But it is not clear how that is relevant, that is, how the rate of increase in traffic or another metric bears on any of the issues in this proceeding, or why comparing the two different rates of increase matters, or what exactly 'organic' growth means. Once again, this proceeding is not going to be resolved by an assessment of the relative prominence and success of each party's branding in the Australian market. I give this submission no further attention.

371    JDS submits that JAS has not established any reputation in Australia as at October 2018, being the date that JDS identifies as the commencement of the conduct it seeks to impugn, or by August 2022, a date that is relevant to the cross-claim (see Section IX below). JDS submits that from 2005 to October 2018 it has made only a 'relatively small volume of sales' to consumers in Australia.

372    I do not accept JDS's submissions in this regard. To the extent that October 2018 is a relevant date for assessing JDS's reputation, at [327] above I set out the JAS Google Analytics numbers for New Users visiting the JAS Website. For the five years leading up to and including 2018 those figures totalled to 147,039. I have accepted these figures as accurate, and on the basis of the evidence canvassed in connection with the JDS Google Analytics figures in Section IV above, it is likely that the users visiting the site, that is including repeat visitors, was higher. While these numbers increased significantly after 2018, they show that in the period 2014 to 2018 a substantial number of people in Australia viewed the JAS Website and so were made aware of the fact that JAS was selling art products in Australia under the JAS Names. The branding using those names was clear and consistent on the JAS Website, the JAS AU Site and other media (for example packaging) throughout.

373    Also the total of JAS's sales figures in pounds sterling for the same five years from [300] above was £658,386.66. Again, while these figures increased substantially after that time, they are not insignificant and together with the JAS Google Analytics figures they show that JAS had established a reputation in connection with the JAS Names in Australia as at late 2018.

374    It is plain that by mid-2022, the date relevant to the cross claim, JAS's trading and reputation in Australia had increased significantly. In each of the three years 2020 to 2022 the number of New User visits exceeded 300,000, figures increased, no doubt, as a result of the COVID-19 pandemic. Similarly, sales revenue increased substantially in those years, from more than £600,000 in 2020 to more than £1 million in 2022. There can be little doubt that JAS had a significant reputation connected with the JAS Names in Australia by mid-2022. I will deal in Section X with a submission that this reputation should be disregarded because it was built by means of contravening conduct on the part of JAS.

375    The respondents also make submissions comparing JAS's trading in Australia, which was entirely online, to that of JDS, year to year. JAS has produced the following table:.

*Estimated

**33% of 'Office' sales from 2016 onwards

376    In summary, JAS's trading in Australia started at very low levels in 2005. JDS's online trading in Australia started at similarly low levels in 2010. Between 2012 to 2017, JDS's online sales exceeded JAS's online sales in Australia. In 2018 they were roughly equivalent and after that JAS's sales increases significantly while JDS's online sales did not (even accepting, for the sake of argument, that JDS's sales were one third of its head office sales from 2018 on - see [242]-[253] above).

377    I accept that this comparison is accurate but I do not accept that it is relevant. As has been said, this dispute is not going to be resolved by deciding who had the greater sales or reputation at any time. I also do not accept that comparing JAS's sales to JDS's online sales is the relevant comparison. The relevance of the parties' reputations and trading histories is not confined to online sales only even though, as a matter of fact JAS's trading is almost all online (setting aside a few telephone sales).

378    If the point is simply that the parties have been trading in the same market for many years, then that may be accepted. This seems to be relevant to arguments about the discretion to grant relief which I will in Section X below.

379    Setting such comparisons aside, though, I find that by at least mid-2022, JAS had a substantial reputation and goodwill in Australia in connection with the JAS Names. I have already concluded that there was no significant difference between the nature of the product offerings to which JAS's reputation was connected and the products known by consumers of art products to be offered by JDS.

VI.    DID JAS OR JAA'S CONDUCT CONVEY THE REPRESENTATIONS?

Principles

380    In Self Care the High Court (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) summarised the principles applicable to misleading or deceptive conduct cases as follows (footnotes removed):

[80]    The principles are well established. Determining whether a person has breached s 18 of the ACL involves four steps: first, identifying with precision the 'conduct' said to contravene s 18; second, considering whether the identified conduct was conduct 'in trade or commerce'; third, considering what meaning that conduct conveyed; and fourth, determining whether that conduct in light of that meaning was 'misleading or deceptive or … likely to mislead or deceive'.

[81]    The first step requires asking: 'what is the alleged conduct?' and 'does the evidence establish that the person engaged in the conduct?'. The third step considers what meaning that conduct conveyed to its intended audience. As in this case, where the pleaded conduct is said to amount to a representation, it is necessary to determine whether the alleged representation is established by the evidence. The fourth step is to ask whether the conduct in light of that meaning meets the statutory description of 'misleading or deceptive or … likely to mislead or deceive'; that is, whether it has the tendency to lead into error. Each of those steps involves 'quintessential question[s] of fact'.

[82]    The third and fourth steps require the court to characterise, as an objective matter, the conduct viewed as a whole and its notional effects, judged by reference to its context, on the state of mind of the relevant person or class of persons. That context includes the immediate context - relevantly, all the words in the document or other communication and the manner in which those words are conveyed, not just a word or phrase in isolation - and the broader context of the relevant surrounding facts and circumstances …

[83]    Where the conduct was directed to the public or part of the public, the third and fourth steps must be undertaken by reference to the effect or likely effect of the conduct on the ordinary and reasonable members of the relevant class of persons. The relevant class of persons may be defined according to the nature of the conduct, by geographical distribution, age or some other common attribute, habit or interest. It is necessary to isolate an ordinary and reasonable 'representative member' (or members) of that class, to objectively attribute characteristics and knowledge to that hypothetical person (or persons), and to consider the effect or likely effect of the conduct on their state of mind. This hypothetical construct 'avoids using the very ignorant or the very knowledgeable to assess effect or likely effect; it also avoids using those credited with habitual caution or exceptional carelessness; it also avoids considering the assumptions of persons which are extreme or fanciful'. The construct allows for a range of reasonable reactions to the conduct by the ordinary and reasonable member (or members) of the class.

381    In TPG FCAFC at [22] a Full Court summarised a number of relevant subsidiary principles (citations removed):

(a)    First, conduct is likely to mislead or deceive if there is a real or not remote chance or possibility of it doing so.

(b)    Second, it is not necessary to prove an intention to mislead or deceive.

(c)    Third, it is unnecessary to prove that the conduct in question actually deceived or misled anyone. Evidence that a person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself establish that conduct is misleading or deceptive within the meaning of the statute. The question whether conduct is misleading or deceptive is objective and the Court must determine the question for itself.

(d)    Fourth, it is not sufficient if the conduct merely causes confusion.

382    To this should be added the point made in Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; (2013) 250 CLR 640 (TPG HCA) at [50] (footnotes removed):

It has long been recognised that a contravention of s 52 of the [Trade Practices Act 1974 (Cth)] may occur, not only when a contract has been concluded under the influence of a misleading advertisement, but also at the point where members of the target audience have been enticed into 'the marketing web' by an erroneous belief engendered by an advertiser, even if the consumer may come to appreciate the true position before a transaction is concluded. That those consumers who signed up for TPG's package of services could be expected to understand fully the nature of their obligations to TPG by the time they actually became its customers is no answer to the question whether the advertisements were misleading.

383    It is 'consistent with that general proposition, however, to accept that conduct may not be misleading or deceptive or likely to mislead or deceive, notwithstanding that it may engender temporary and commercially irrelevant error': SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 at [51].

384    Finally, mention should be made of Edelman J's description in Australian Competition and Consumer Commission v Valve Corporation (No 3) [2016] FCA 196 of how the Court should assess conduct that comprises making a misleading statement in one place, together with qualifications to that statement in a different place (approved in TPG FCAFC at [25]). At [214] his Honour said:

One consequence of the need to consider the conduct in light of all relevant circumstances is that any allegedly misleading representation must be read together with any qualifications and corrections to that statement. Hence, although a qualification to a statement might be effective to neutralise an otherwise misleading representation, this might not always be so, particularly if the misleading representation is prominent but the qualification (often linked to the representation by an asterisk) is not: Medical Benefits Fund of Australia Limited v Cassidy [2003] FCAFC 289; (2003) 135 FCR 1, 17 [37] (Stone J). As Keane JA expressed the point, the qualifications must have 'the effect of erasing whatever is misleading in the conduct': Downey v Carlson Hotels Asia Pacific Pty Ltd [2005] QCA 199 [83].

The class of relevant persons

385    It is appropriate in this context to deal with a particular submission that the respondents made. They say (RCS p 9, emphasis in original):

On the test of the ordinary and reasonable consumer, it is also important to observe that the word the is used and not an. It is not enough to say that the evidence identified a consumer (who might) be misled, and may qualify as an ordinary and reasonable consumer. While numbers of consumers is not the test, one would expect a response of being misled, or likely response, to have a quality of a common or ordinary response - not impacting one or a comparatively small group of people, but a properly identified group of consumers who would fall within the class of ordinary customers. In fact, the relevant ordinary customer of JDS is someone who has shopped at JDS before, knows the JDS brand, its shop signage and distinctive web page, knows the business strongly affiliates with [Western Australia and the Northern Territory], and/or who shops online, more often than not using a shopping account or purchase order (which necessarily mean, they know how to contact JDS and could not purchase goods without knowing and putting into effect an engagement by fax, email or online with JDS).

386    It is true that the identification of the reasonable member of the class in question requires the Court to disregard reactions that might be regarded as extreme or fanciful: Self Care at [83]; and see also Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12; (2000) 202 CLR 45 at [105]; Australian Competition and Consumer Commission v Employsure Pty Ltd [2021] FCAFC 142 at [93], [127]. But at this step in the Court's reasoning, it is not required to fashion a single hypothetical person whose knowledge, experience, intelligence, education and other relevant characteristics might be said to meet the median or mean or mode level of the class as a whole, and then to test the impugned conduct against that person's likely reaction. In National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] FCAFC 90 at [24], Dowsett J (with whom Jacobson and Bennett JJ generally agreed) said:

Whilst it is true that members of a class may differ in personal capacity and experience, that is usually the case whenever a test of reasonableness is applied. Such a test does not necessarily postulate only one reasonable response in the particular circumstances. Frequently, different persons, acting reasonably, will respond in different ways to the same objective circumstances. The test of reasonableness involves the recognition of the boundaries within which reasonable responses will fall, not the identification of a finite number of acceptable reasonable responses.

387    Similarly, at [68] Jacobson and Bennett JJ observed that the attribution of characteristics to the hypothetical member of the class is objective 'in order to allow for the wide range of persons who would, in fact, make up the class'.

388    With respect, the respondents' submission puts too much weight on particular uses of the definite article. For while the language used in the canonical formulations of the test in Campomar at [103] and Self Care at [83] does use the singular, elsewhere in both decisions the High Court speaks of 'the ordinary or reasonable members' of the relevant class or classes: see Campomar at [105]; Self Care at [83]. In Self Care the High Court referred to 'an ordinary and reasonable "representative member" (or members)' of the class, and went on to explain that the 'construct allows for a range of reasonable reactions to the conduct by the ordinary and reasonable member (or members) of the class' (at [83]).

389    Once that is appreciated, the significance that the respondents placed on the use of the definite article falls away (even before one gets to whether judicial pronouncements should be construed as though they were statutory provisions). For what the canonical formulations require is to identify a subset of the wider class of consumers, being the subset of all the ordinary and reasonable members of that class. Assuming that a range of ordinary and reasonable responses to the impugned conduct is open, that subset will contain a number of people whose individual characteristics may be different.

390    The proposition in the respondents' submission that it is necessary to identify a single 'common or ordinary response' to the impugned conduct is footnoted with a reference to State Street at [733] and [743]. But that proposition appears nowhere in those passages. It is also inconsistent with the Full Court authorities just quoted; further to which, in TPG FCAFC at [23(f)] the Full Court emphasised Dowsett J's proposition that the 'test of reasonableness involves the recognition of the boundaries within which reasonable responses will fall'.

391    So is not correct to identify a member of the class with a single 'average' set of characteristics, and then posit how that one imaginary person would react. I do not accept that, once a consumer with the very specific characteristics described in JAS's submission is identified as being 'ordinary and reasonable', the conduct must be tested by reference to that person's characteristics alone. Rather, it must be tested by reference the range of reactions that may be expected from ordinary and reasonable members of the class of persons described at [296]-[299] above. That class is, as JDS submits, essentially the same as the general public.

392    I have already mentioned that there is no need to show that the impugned conduct is likely to have misled or deceived any 'not insignificant number' of persons: see [120] above. As explained above, that is not the same question as to whether JDS has established the necessary awareness of it and its branding among a not insignificant number of persons.

The impugned conduct

393    In this section VI, I take the first and third of the steps outlined in Self Care at [80]: identifying the conduct said to contravene s 18; and considering what meaning that conduct conveyed. The second step, as to whether the conduct was in trade or commerce, is not in issue and the fourth step, as to whether the meaning conveyed was misleading or deceptive, will be addressed in Section VII.

The conduct said to have been misleading

394    It is necessary at this point to address a specific submission made by senior counsel for the respondents in closing submissions about the precise nature of JDS's case. This was foreshadowed this in Section II above. The submission is that this case 'is not a side-by-side branding comparison case' (ts 329). That is, it is submitted that it would be an error for the Court, on the case as presented by JDS, to resolve it on the basis of the similarity between the names 'Jacksons' and 'Jackson's' or 'Jacksons Drawing Supplies' and 'Jackson's Art Supplies'. At one point (ts 331), senior counsel submitted that this case was not a case where consumers were saying '"I think you're them," or, "I think they're you"'. He said, 'This case can only be concerned with consumers saying, "I saw this Adelaide operation; I assumed it was you"'. And then, he submitted (ts 332) 'You have to look at the change in conduct and features identified by our friends and say, "That has caused it, and you're the one responsible for causing it"'.

395    The 'change in conduct' was a reference to the aspects of the conduct that were alleged to have commenced in October 2018 and mid-2022. Excluded from these is the basic conduct of selling art products in Australia under the JAS Names, which began many years before October 2018. Senior counsel for the respondents thus appeared to be submitting that the conduct that must be found to have led consumers into error is the conduct in setting up the JAS AU Site with its Australian trappings and Australian dollars as a default currency, or in establishing operations in Adelaide and referring to them on the JAS AU Site, or (although this was not mentioned by senior counsel) in dispatching products via JAA.

396    In order to assess this submission, it is necessary to go to JDS's pleadings. JDS alleges that JAS and JAA made defined Representations: SOC para 16. The conduct said to have given rise to those Representations is set out at paragraphs 13 to 20 of the SOC. Paragraph 13 alleges that since around October 2018, JAS has operated the JAS AU Site and that the website has done two things: first, 'offered for sale, advertised, promoted and sold to Australian consumers arts and crafts products under or by reference' to the JAS Names; and second, 'had a country specific store front for "Australia", with AUD as the currency'. There is no 'and' or 'or' between those two things, but the natural way to read them is as conjoined, that is, it is alleged that the JAS AU Site has done both of those things. I will refer to the second of those two matters as concerning the Australian characteristics of the JAS AU Site.

397    Paragraph 14 then alleges that from around mid-2022 the JAS AU Site has done a number of things that can be summarised as referring, on the website, to the Australian operations, comprising the Adelaide warehouse, the Australian telephone number and so on.

398    Paragraph 15 then alleges that JAA has offered for sale and sold arts and craft products via that Australian telephone number under or by reference to the JAS Names, dispatched products purchased by Australian consumers on the JAS AU Site under or by reference to the JAS Names, and (this time, the conjunction is explicit) communicated with Australian consumers with respect to purchases of products under or by reference to the JAS Names. It is convenient to refer to this alleged conduct as the JAA conduct.

399    Along with paragraph 12 of the SOC, those three paragraphs, 13, 14 and 15, are the building blocks, as it were, of various further and alternative ways in which the allegedly misleading Representations are said to have arisen. Paragraph 12 alleges that JDS has a substantial reputation and goodwill in Australia in respect of the JDS Names, and is a common element in each.

400    The first way the Representations are said to have arisen is by reason of paragraphs 12 and 13 (see para 16 of the SOC). This is alleged against JAS. So, it is pleaded, JAS has made the misleading Representations by operating the JAS AU Website, because it has offered etc. arts and crafts products under the JAS Names and because that website has had the Australian characteristics.

401    It follows that the offering etc. of products under the JAS Names, in the context of JDS's alleged reputation connected with the JDS Names, is a component of the alleged misleading conduct. This can be described as raising a 'branding comparison', to use the words of senior counsel for the respondents. But the Australian characteristics of the JAS AU Site constitute another component of the alleged conduct, as a necessary element of what is said to make it misleading or deceptive. Only if I find that both of those aspects were present in JAS's conduct, and that they conveyed the Representations, will JDS's case in this respect have been established.

402    The second, further or alternative way the Representations are said to have arisen is by reason of the conduct in paragraphs 12 to 14 (SOC para 17). This too is an allegation against JAS. So for the Representations to be found to have arisen this way, JDS must establish that it had the necessary reputation in the JDS Names, that the JAS AU Site offered products under the JAS Names and had the Australian characteristics, and that the JAS AU Site referred to the Australian operations. JDS must also persuade me that this combination of conduct conveyed the Representations. Again, this must all be read as conjunctive. So once again, a 'branding comparison' is part of the case. But even if I were prepared to find that offering art products for sale under the JAS Names is misleading because of JDS's reputation in the similar JDS Names, that would not be enough to make out JDS's case. The other components of the conduct just described also need to be established.

403    The third further or alternative way the Representations are said to have arisen is by a combination of the conduct in paragraphs 12 to 15 (SOC para 18). This too is an allegation against JAS. The same analysis applies: the similarity between the JDS Names and the JAS Names is a necessary but not sufficient part of JDS's case; also established must be the other components of the case that have already been described, as well as the JAA conduct alleged in paragraph 15.

404    SOC paragraph 19 makes a further or alternative allegation that JAA made the Representations, by reason of the matters in paragraphs 12, 14 and 15 of the SOC. The use of the JAS Names in the context of JDS's reputation is thus part of the case (because of paras 12 and 15) but the references to the Australian operations on the JAS AU Site (para 14) are also pleaded as a necessary component of the conduct that conveyed the Representations.

405    Finally, it is alleged that JAA conveyed the Representations by engaging in the JAA conduct pleaded in paragraph 15, in the context of JDS's reputation as alleged in paragraph 12 (SOC para 20). A 'branding comparison' is thus required along with offering products for sale via the Australian telephone number, dispatching products and communicating with Australian customers (para 15).

406    What follows from this analysis of the SOC? If senior counsel for the respondents was submitting that I must find that the Representations arose solely out of the alleged conduct that did not comprise selling products under the JAS Names, I do not accept that submission. JDS is not, for example, advancing a case that having a website with Australian characteristics alone conveyed the Representations that JAS was JDS or was associated with it. Such a case would be inherently difficult, if not impossible. It would amount to a case that an art supplies business that set up a website with Australian characteristics contravenes s 18, regardless of what trading name the business uses. Rather, on each further or alternative pleaded case, JDS's reputation in the JDS Names and JAS or JAA's offering or selling under the JAS Names are also components of the impugned conduct.

407    I do accept, however, that the 'changed conduct', that is the things said to have occurred only after October 2018 and mid-2022, are necessary to be established if JDS's case as pleaded is made out. Any misleading similarity between the JDS Names and the JAS Names in connection with the sale of art products will not be enough. One or more of the Australian characteristics of the JAS AU Site, the references to the Australian operations on that site, and the JAA conduct must also be established, in one or more of the combinations outlined above. And it must be found that this conduct contributed towards the conveying of the Representations.

408    Therefore what is alleged against JAS is three different combinations of conduct, which operate cumulatively: first is the use of the JAS Names together with the Australian characteristics of the JAS AU Site; second is those things as well as the references to the Australian operations on the site; and third is all of those things, in the additional context of the JAA conduct. By saying that they operate cumulatively, I mean that it must be concluded that every aspect of the various combinations of conduct, considered together, conveyed the Representations. The corollary of this is that if one aspect of the conduct is not established to be misleading - for example the references to the Australian operations - then the pleas that include that aspect will not be made out.

409    I read the SOC that way because that is the natural way to read its language, and it is consistent with the importance that JDS places on the alleged changed conduct, and it also follows from the way that different combinations of conduct have been pleaded as further alternatives. If it were enough to establish JDS's case for some but not all of the different aspects of conduct to be established, JDS would simply have presented a single list of those aspects, and relied on them together and separately (as is commonly the effect of a list of particulars supporting a plea of negligence).

410    Consistently with this analysis, in oral submissions, senior counsel for JDS was clear that the conduct of which his client complains commenced when the Australian consumer, coming to the JAS Website by whatever means, was presented with the AU Pop Up or, after May 2023, with the JAS AU Site. On JDS's case it is when the consumer notices the Australian characteristics of the JAS AU Site, or notices the references to the Australian operations, or is exposed to the JAA conduct, that they are misled. But senior counsel was equally clear that this conduct must be assessed as misleading (or not) in conjunction with the 'Jackson's' branding employed on the JAS AU Site.

411    JDS's submissions as to the conduct that was misleading were largely consistent with the pleaded case that has just been outlined. At one point senior counsel for JDS expressly disavowed any suggestion that the conduct of JAS in selling art products in Australia under the JAS Names was itself misleading or deceptive (ts 380).

412    It is only necessary to add that the conduct of JAS comprised of selling under the JAS Names on a website with Australian characteristics can be divided into two periods (JDS calls this the 'AU Store Front Conduct'). The first period is from October 2018 to May 2023. According to JDS, during that period the AU Pop Up appeared to people using the JAS Website in Australia, including the functionality that directed the user to the JAS AU Site if they selected shopping in Australian dollars. Senior counsel for JDS described this as 'targeting to Australian consumers' (ts 19). The second period runs from June 2023. From that time, the AU Pop Up did not appear, and users accessing the JAS Website from Australia are taken straight to the JAS AU Site, with Australian dollars selected as the default currency.

JDS's submissions as to why the conduct conveyed the Representations

413    JDS submits that by the conduct just outlined, JAS and JAA have respectively since October 2018 made the Representations. It will be recalled that these are pleaded to have been representations that, broadly, conveyed that JAS/JAA and JDS were the same or were associated. JDS advances several reasons as to why the Court should find that the Representations were made.

414    First, the names under which JAS/JAA and JDS trade in Australia are essentially the same: 'Jackson's' and 'Jacksons' respectively. The words that differ as between the JAS Names and the JDS Names - 'Art'/'Art Supplies' and 'Drawing Supplies' are both descriptive and similar. JDS emphasises that some of its stores, and the URL of the JDS Website, use the name JACKSONS alone. Senior counsel for JDS submitted that it should not seriously be in dispute that the brand names the parties are using are similar.

415    Second, both JAS and JDS sell specialist art products, including fine art products and craft products. Their respective customer bases are the same. Again, senior counsel for JDS submitted that this should not seriously be in dispute. Both JDS and JAS supply these goods to Australian consumers.

416    Third, many consumers are likely to come to the JAS Website or the JAS AU Site after searching for JDS by entering the term 'Jacksons Art'. Some consumers looking for JDS are likely to enter 'Jacksons Art' into Google and will thereby be directed to the JAS AU Site as the top ranked result for the query. In that regard, JDS relies on Mr Simonetti's evidence as described at [336] above and submits that people are much more likely to click on the first result than results lower down, with the result that they will end up on the JAS AU Site.

417    Fourth, JDS has a substantial reputation in Australia in connection with the JDS Names. JDS submits that this reputation is unaffected by the fact that it promotes itself as based in Western Australia. Senior counsel for JDS also submitted in closing that it is artificial and wrong at law to distinguish between a reputation built through in store sales and one built through online sales. But to the extent that the distinction is meaningful, he submitted that substantial online sales had been established by the commencement date of the impugned conduct, October 2018, as well as a high volume of Australian visitors to the JDS Website.

418    Fifth, JDS relies on the evidence it adduced of consumers who, it says, mistakenly considered that JDS and JAS were the same company. I will deal with that evidence in Section VII below when I come to deal with the fourth of the steps in the inquiry that is laid out in Self Care at [80], namely whether the Representations (if conveyed) were misleading or deceptive or likely to mislead or deceive.

419    Senior counsel also submitted that the significant increase in JAS's Australian sales figures that is described above (at [300]) confirms that there was a change in the conduct as at October 2018, and further confirms that consumers were being misled. He submitted that this increase commenced in 2018 so that it was not explicable by the COVID-19 pandemic, which started seriously affecting Australia in March 2020, and which, both parties accepted, did contribute to an increase in their respective sales. I will also consider this briefly in Section VII below.

The respondents' submissions as to why their conduct was not misleading

420    The respondents' submissions commence with the proposition that JDS and JAS have both traded in Western Australia and the Northern Territory for many years, but with 'very different market focuses' (RCS para 1). The respondents submit that consumers in those geographical areas would be long used to seeing both brands.

421    The respondents refer to JAS's United Kingdom base and to aspects of the JAS Website that communicate its United Kingdom character. They compare that to the 'strong parochial WA referencing of JDS' (RCS p 6) including the references to JDS's Western Australian character in much of JDS's marketing materials (see [172]-[178] above). The respondents also compare JAS's character as a predominantly online business to that of JDS as a business that relies mostly on in-store sales, along with fax or phone purchase orders by schools and other institutions who hold accounts with JAS (RCS p 6). They draw a contrast between that and the 'strong international focus' which, according to the respondents, JAS 'has, and strongly communicates' (RCS para 6). The respondents also rely on JAS's 'extensive specialist stock lines' (RCS p 2).

422    As for the respondents' submissions about JAS's own conduct, they describe the AU Pop Up as 'clearly a communication to consumers of a foreign UK-based company' (RCS para 7).

423    Further, the respondents submit that it is clear to anyone looking at the JAS AU Site that JAS is a United Kingdom company. This is because of the United Kingdom address and telephone number that appeared at the bottom of most if not all pages (admittedly, only until mid-2022 and the establishment of the Australian operations) and various references to the United Kingdom in the text of the site.

424    The respondents also implicitly rely on what they say is JDS's failure to establish any reputation outside its core markets as a factor which, outside those geographical areas, is fatal to JDS's case. I have already found, however, that JDS has established the necessary reputation, albeit only to the necessary threshold level outside its core markets. As for the case in relation to JAS's conduct concerning consumers within those two regions, the respondents submit that JAS has a 'long and unimpeded sales history in those jurisdictions and its own reputation accordingly' (RCS para 12). They appear to submit that JAS's (or JAA's) Adelaide address further distinguishes it from the proudly Western Australia-based JDS.

425    As for account customers, the respondents submit that they are unlikely to be misled because 'once you have an account, you know who you are shopping with' (ts 331), and they cannot enter a JDS account name and password on the JAS Website, including the JAS AU Site.

426    The respondents even go so far as to submit that because 'both entities are using a common and well known first and surname name - Jackson' this increased the likelihood of consumers 'noticing differences in naming and branding style' (RCS p 8).

427    The respondents bring these points together in their written closing submissions (RCS para 49) as follows (while put under the heading 'Relief and delay', the point appears to be that JDS has not established misleading or deceptive conduct):

The case comes down to two honest traders present and selling in WA and NT for many years, and where JAS has a market presence outside these areas which JDS does not have. It is inevitable that both companies would come up in a search on Google using the term Jacksons. This does not indicate that consumers are being misled, but rather there are two businesses using (and have used for many years, with the familiarity and experience that brings) the name 'Jackson' in connection with similar product. Given the extent of well-branded instore activity and account-based trading, decades of trading using familiar branding by both entities in WA and NT, the strong focus of JDS on its WA identity, JAS's unimpugned trading for many years using AUD, JAS's higher levels of online trading, there remains a small group of unidentified consumers who are meant to be vulnerable to confusion. That case has not come close to having been properly proved.

428    As has been said, the respondents also emphasised the need to focus on the particular conduct of which JDS complains. It is not complaining simply that the trading names that JAS has used are similar to those that JDS has used. While the pleaded Representations are in those broad terms, the actual contravening conduct as alleged is much more specific. The respondents submit that this is artificial and should not be accepted.

Whether JAS's conduct conveyed the Representations

429    It will be recalled that the conduct alleged against JAS is that, in the context of JDS's reputation and goodwill in connection with the JDS Names, it maintained the JAS AU Site which offered and sold art products under and by reference to the JAS Names and had the Australian characteristics. Further or alternatively, from mid-2022, in the context of JDS's reputation and goodwill, JAS did those things and in addition (by the JAS AU Site) referred to the Australian operations. Further or alternatively JAS did all those things in the context of JAA engaging in the JAA conduct (broadly, fulfilling sales and providing customer service under the JAS Names).

430    I accept that each of these configurations of JAS's conduct occurred, and I accept that each of them conveyed the Representations in the manner that JDS has pleaded. I will now explain why I have reached those conclusions.

How the JAS AU Site in context conveyed the Representations

431    It is convenient to commence with the first configuration of the impugned conduct, comprised of maintaining the JAS AU Site using the JAS Names together with its Australian characteristics.

432    To begin with, although the similarity between the JDS Names and the JAS Names is not enough by itself to make out JDS's case as pleaded, it is still a significant part of that case. I have already found that JDS's business had a not insignificant reputation in Australia in connection with the JDS Names. And based on the largely uncontroversial findings made in Section V, there can be no dispute that via the JAS AU Site (and before October 2018, via the JAS Website), JAS has offered for sale and sold fine art products under the prominent names 'Jackson's', 'Jackson's Art' and 'Jackson's Art Supplies'.

433    The close similarity between 'Jacksons' on the one hand and 'Jackson's' or 'Jackson's Art' on the other is obvious and undeniable. So too is the similarity between 'Jacksons Drawing Supplies' and 'Jackson's Art Supplies'. The respondents made no real attempt to deny that they were similar; rather, their case was based on what they said were differences between various other characteristics of the respective websites and businesses. No more sophisticated analysis of why the use of the names may be misleading or deceptive is necessary at this point, save to say that I accept JDS's submission that the essentially descriptive nature of the terms 'Drawing' and 'Art' tend to reinforce the similarity.

434    And that is in a context where, as I have found in Section V, consumers are unlikely to perceive any difference between the nature of the products offered by JAS and the nature of those offered by JDS. They both sold art supplies.

435    Further, from the time of their introduction in October 2018, the Australian characteristics of the JAS AU Site are likely to have reinforced the impression that some ordinary and reasonable members of the class of consumers may form, as a result of the similarities in the names, that the businesses are one and the same. For at least some members of the class will be aware of JDS as an Australian based company. They will, for example, know that JDS has physical stores in Australia. So in conjunction with the similarity in brands, the Australian characteristics apparent on the JAS AU Site - in particular the Australian flag or AUSTRALIA that appeared on each page and the presence of Australian dollars as the default currency - are likely to lead to some ordinary and reasonable consumers of art products to believe that the JAS AU Site is the website of JDS, and so that JAS and JDS are one and the same. As I will explain below, those characteristics were quite prominent.

436    I pay no regard, however, to the possibility that persons using the JAS AU Site may have come to it because they searched for JDS using the terms 'Jackson' and 'art'. While the evidence of Mr Simonetti and Mr Jones may well have supported the likelihood that this would occur, none of the events leading up to the mistaken clicking on the JAS search results were established to have been a consequence of any of the specifically impugned conduct of JAS (or JAA). The focus needs to remain on that conduct, and what it conveys, rather than other sequences of events that may result in consumers mistaking JAS for JDS.

437    Turning, then, to the second configuration of impugned conduct, it is comprised of the conduct just found to have been misleading or deceptive, with the additional factor of the references to the Australian operations. This occurred from mid-2022.

438    Unlike the Australian characteristics, the references to the Australian operations were not an especially prominent feature of the JAS AU Site. The references to Adelaide were in relatively inconspicuous print at the bottom of the page. And it is true that more prominent references to Australia (such as the 'Meet the Team' text set out at [351] above and the shipping information mentioned at [352]) were not on the landing page or product pages that many consumers were likely to have visited. Even then, they were mixed on the same pages with references to the United Kingdom (such as to the founding of JAS in London) that are likely to have diminished the force of associations with Australia.

439    However, it would be incorrect to conclude on that basis that referring to the Australian operations was not conduct which, together with the first configuration of conduct, was likely to mislead or deceive. For it must be recalled that the references to the Australian addresses and contact details were on every page. It must also be recalled that the user of a website such as the JAS AU Site approaches it in a 'dynamic way', to adopt the phrase used by the Full Court in viagogo AG v Australian Competition and Consumer Commission [2022] FCAFC 87 at [29] (Yates, Abraham and Cheeseman JJ). Often, the user will be focussed on a particular product, and will search or navigate directly to the page for that product and bypass the other parts of the JAS AU Site which may communicate the United Kingdom origins of JAS's business. Also, it can be taken that many ordinary reasonable consumers will be interested in the physical location of the business with which they are about to transact - most pertinently because of shipping times. They will be looking for an address or location. And at least some of those consumers will be aware that there is an Australian 'Jackson's' business without being aware that it is based in Western Australia.

440    Therefore, while the issue is finely balanced, taking all that into account I consider that the presence on the JAS AU Site of references to the Australian operations, in conjunction with the other aspects of the impugned conduct, conveyed to members of the relevant class of consumers of art products that the business they were dealing with was Australian, and so that it was equivalent to the Australian 'Jacksons' business selling art supplies of which they were aware.

441    Turning to the JAA conduct, it provided further context which increased the likelihood that ordinary and reasonable consumers of art products would understand JAS to be the Australian company, JDS. Many customers would have noticed that after ordering products from the JAS AU Site with the characteristics just described, the products were dispatched to them from an Australian address. Some of those customers, at least (within the range of ordinary and reasonable reactions), were likely to think that this meant that the products were dispatched by JDS.

The respondents' submissions that they did not make the Representations are not accepted

442    The respondents' submissions that their conduct was not misleading are based on a contention that consumers are likely to have an awareness of the different characteristics of the two businesses which means that they are likely to distinguish between them. They are also based on particular features of the JAS AU Site which, the respondents submit, mean that it does not convey any misleading representations. I have considered those matters together in order to determine whether they provide a good answer to the claim that the JAS AU Site is misleading. It would not be correct to identify each point made and to decide that it does not answer in isolation.

443    Even so, the respondents' heavy reliance on the different characteristics of their business and history compared with those of JDS is not persuasive. I have already dismissed their submission that they and JDS were 'in different trading realms'. Further, the respondents' position assumes a level of familiarity with each of the businesses exceeding that likely to have been held by many ordinary and reasonable members of the class of consumers of art products. That class includes many people with only a casual and occasional interest in the purchase of art supplies, and no particular depth of knowledge of the market for such supplies or the history or other characteristics of the participants in it.

444    It is not to be assumed that all such persons have extensive prior experience of JAS or JDS. Some ordinary and reasonable members of that class may be taken to know that there is a locally based art supplies company called 'Jacksons' and they encounter a website of a company selling art supplies that is called 'Jackson's'. None of that involves knowledge of the different characteristics of the businesses. The respondents did not submit that those different characteristics were notorious and nor could they, as there was no evidence of that fact. The sales figures, social media evidence and Google Analytics data for both businesses did not rise nearly that high.

445    Nor would it be correct to proceed on the basis that consumers have engaged in a thorough examination of the respective websites and other promotional materials so as to form a view as to how each company presents itself. It is not, after all, a question of comparing the websites or the parties' marketing side by side and engaging in a minute and detailed analysis of the similarities and differences: see, in a different context, Natural Waters at [31]. For that reason, the respondents' reliance on the different ways that the two companies visually present their brands does not provide substantial support to their position. Many ordinary and reasonable consumers will recall only the name 'Jackson' that is common to both brands.

446    As for the respondents' submissions about the characteristics of the JAS AU Site that negative any suggestion that they are an Australian based business, those matters are not as prominent as the matters that constitute the misleading conduct. The overall branding of 'Jackson's' is the most prominent relevant feature of the JAS AU Site. Also reasonably prominent were the Australian flag or, in the case of some pages, the word 'AUSTRALIA' at the top of each page of that site, and the mention of Australian dollars. As to the latter, a person who is on the website in order to buy can be expected to notice the currency being offered. In contrast to that, the United Kingdom details that appeared at the bottom of each page until mid-2022 were, as I have said, not especially prominent. And they were replaced with Australian details from that time.

447    The reference to JAS on the home page as being founded in London in 2000 (which appears to have been present from November 2021 on) is in text liable to be overlooked by a shopper who is paying more attention to the products on offer. Other references to the United Kingdom history of the company are on pages that appear to be attached to one of many links at the bottom of the home page, where there is no guarantee that any given consumer will click on it. The relative lack of prominence of the references to JAS's United Kingdom origins on the website mean that, when taken together with the more prominent branding and Australian characteristics, those references do not erase what is misleading in the impugned conduct: see Valve Corporation at [384] above.

448    The respondents also rely on the AU Pop Up itself. They submit that a consumer presented with a page that says 'HELLO, IT LOOKS LIKE YOU ARE IN AUSTRALIA' and which then asks 'Would you like to shop in AUD ($)', with the choice of AUD and GBP being offered, will understand that they have visited a website not based in Australia. They submit that it is 'clearly a communication to consumers of a foreign UK-based company' (RCS para 7).

449    With respect, that overstates the position. I accept that the AU Pop Up is likely to have led some consumers to engage in a process of reasoning that brought them to conclude that the JAS AU Site belongs to a foreign company. Such persons are likely to be more sophisticated members of the relevant class who are familiar with the world of online shopping. But many will not engage in that process of reasoning. They will see the prominent Australian flag, or, in the case of some pages, the word 'AUSTRALIA' at the top of each page of that site, they may see the less prominent Australian shipping methods, and will overlook or place no significance on the use of the phrase 'your country' or the two references to GBP. In short, some ordinary reasonable consumers are likely to click 'Shop in AUD ($)' and think nothing more of the AU Pop Up. In any event, the AU Pop Up ceased to be in use from May 2023 and so cannot afford an answer to any ongoing concerns.

450    It is worth mentioning another aspect of the overall context here. Many, perhaps most, consumers visiting the JAS AU Site are shopping for relatively low value items such as paints, brushes and paper. They may be infrequent or occasional purchasers of such products only. Many of them will not be inclined to spend a long time investigating the site or the online vendor that operates it. They will be interested in the products and the price and are likely to click through or use the search function to find what they are looking for. They may be interested in where the products will ship from. In that context, to expect them to notice that the vendor is a United Kingdom operation will in many cases be to expect too much.

451    As to account customers, even if they discover, when they try to log in, that they are not on the JDS Website, by then the relevant Representations may have already been conveyed. The account customers will have been drawn into the 'marketing web'.

452    The respondents submit elsewhere that that the broad principles reflected in the doctrine of 'honest concurrent use' applicable in trade mark law can also have application in relation to ACL and passing off claims. They submit that when two traders have a reputation in the same or similar names that are concurrently being used, neither can be guilty of any relevant misrepresentation.

453    This analogy between trade mark law and the law of passing off has found favour in at least one prior decision. In Colorado Group Limited v Strandbags Group Pty Limited [2006] FCA 160 at [53] Finkelstein J said, speaking of passing off:

Whatever be the position in the years leading up to 1998, from the time Strandbags Group purchased the Edgarlodge business both it and Colorado Group had a strong reputation in the Colorado brand. I think this finding must put an end to the passing off claim. In a trade mark case, General Electric Co v General Electric Co Ltd (1972) 1B IPR 543 at 572; [1972] 1 WLR 729 at 743 , Lord Diplock said: 'In cases of honest concurrent user [and Strandbags Group's use is concurrent], neither of the owners of [a common law trade mark] could restrict the other from using it, but as against a usurper who infringed it either owner of the mark could obtain an injunction'. In a passing off case when two traders have a reputation in the same or similar names that are concurrently being used 'neither of them can be said to be guilty of any misrepresentation. Each represents nothing but the truth, that a particular name or mark is associated with his goods or business': Habib Bank Ltd v Habib Bank AF Zurich [1981] 1 WLR 1265 at 1275 per Oliver LJ. If in such circumstances there might be confusion that is just 'one of the misfortunes which occur in life', but it is not actionable as a passing off: Marengo v Daily Sketch and Daily Graphic Ltd [1992] FSR 1 at 2.

This passage was approved on appeal: Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184; (2007) 164 FCR 506 at [221] (Allsop J, Kenny and Gyles JJ each agreeing).

454    Nevertheless, I respectfully doubt that it is useful to introduce a term with a specific technical meaning in the context of the law of trade marks into the analysis of passing off, and I do not read Finkelstein J as seeking to do so. His Honour was simply drawing an analogy. Still less would it be appropriate to constrain the analysis of the broad prohibitions in the ACL. In any event, his Honour's analysis concerns the question of whether the misrepresentations necessary to found a passing off case occurred, and the respondents did not rely on the term in that way here.

455    The point that can be drawn from the submission, however, is a contention that in engaging in the impugned conduct, JAS made no misrepresentation because by using the JAS Names it was only conveying the truth, because consumers will associate those names with its reputation, and not of JDS. To the extent that they do not, that is merely confusion that is one of the misfortunes of life, as noted in the quote above.

456    I do not consider that the respondents can make that contention good, however. I have already given several reasons why I do not accept that the parties' reputations are sufficiently distinctive to mean that the Representations were not conveyed. As to 'honesty', JDS was trading in Western Australia for many years before JAS entered the Australian market. Further, it is clear on Mr Thompson's own evidence that he became aware of JDS in the early 2000s. And from Mr Thompson's evidence about his alleged emails to Mr Boercamp in 2010, he was aware by then that some customers were experiencing confusion: see [697] above. So it is doubtful how 'honest' any use of the name 'Jackson's' from the time of JAS's entry into the market could be. The 'honesty' or otherwise of the use of the name from October 2018 cannot be divorced from its honesty or otherwise before that time.

457    Finally, and in any event, the presence of the Australian characteristics on the JAS AU Site, the references to the Australian operations, and the context provided by the JAA conduct have all contributed to conveying the impression that JAS was an Australian company, and in the particular circumstances of this case, the Representations were conveyed.

458    For those reasons, I find that each of the three configurations of conduct pleaded against JAS conveyed that the operator of the JAS AU Site was an Australian art supplies company called 'Jackson's', which some ordinary and reasonable consumers of art products would understand to be JDS.

Which of the Representations were conveyed

459    Having made those findings, it only remains necessary to determine which of the pleaded Representations were conveyed by the conduct of JAS that I have found to be established (using sub-paragraph numbering from para 16 of the SOC where the various Representations are pleaded).

460    I accept that the conduct at least conveyed (to some ordinary and reasonable consumers of art products) that the operator of the JAS AU Site, that is, JAS, was JDS (a). It follows from this that those persons would conclude that the JAS AU Site is a website of JDS (c). I further accept that some such consumers, if not led to believe that the two companies were identical, would be led to conclude that they are associated with each other in some way, so that the operator of the website has JDS's endorsement, licence or approval (b). Similarly, it follows from this that the conduct conveys that the JAS AU Site is associated with or endorsed, approved, licensed or sponsored by JDS (d). Similar findings in respect of the telephone number shown on the JAS AU Site also follow (e) and (f). The rest of the pleaded Representations are really just different ways of restating the earlier Representations (without identifying JAS as the company that maintains the JAS AU Site) and it is not necessary to make findings in respect of them.

Whether JAA made any Representations

461    JDS submits that at least some of the conduct that has been identified above is attributable to JAA, so that it is liable as a person contravening s 18 and s 29 of the ACL, and not solely as a person involved in JAS's contraventions. Two entities may each contravene those provisions by simultaneously engaging in conduct which is misleading or deceptive or otherwise contravenes: Cassidy v Saatchi & Saatchi Australia Pty Ltd [2004] FCAFC 34; (2004) 134 FCR 585 at [37] (Moore and Mansfield JJ). Whether a particular respondent made misleading statements depends on all the circumstances, including the case as pleaded, and is a question of fact in each case: Cassidy at [39]-[40].

462    In submitting that JAA did engage in misleading or deceptive conduct here, JDS relies on the following matters:

(1)    JAA has admitted that from mid-2022 it dispatched products purchased by Australian consumers on the JAS AU Site under the JAS Names and communicated with Australian consumers with respect to purchases under or by reference to those names (see [357] above).

(2)    The packaging for goods dispatched by JAA to Australian consumers refers to 'Jackson's Art Australia Pty Ltd' and also features the stylised script 'JACKSON'S' logo as well as the URL for the JAS Website, with the string 'jacksonsart' given the most prominence: see [358] above.

(3)    JAA runs the warehouse and dispatches the goods that are ordered on the JAS AU Site. It employs and pays the wages of the people who staff the warehouse, including Mr Baumgartner and Ms Sadri who perform the customer service function for JAS.

(4)    90% of the value of the sales that are dispatched from JAA's warehouse are credited to JAA: see [362] above.

(5)    Some tax invoices issued by JAA had the company name on them: see [356] above.

(6)    JAA attended to customer returns of products ordered on the JAS AU Site: see [361] above.

(7)    Calls to the Australian telephone number shown on the JAS AU Site are answered on behalf of 'Jacksons Art': see [359] above. Purchases have been conducted using that telephone number: [354] above.

463    Alternatively, JDS submits that by engaging in the conduct above, JAA has adopted and endorsed the representations made by JAS. However I do not consider that this adds much. While there are cases where a person is found to have made a representation their own by passing on something prepared or said by others (Downey v Carlson Hotels Asia Pacific P/L [2005] QCA 199 at [53]), the present case is not susceptible of that analysis. The only matter of fact that JDS has enlisted in favour of its alternative case that JAA endorsed or adopted the Representations is that JAA is a subsidiary of JAS. But the difficulty with this argument is that nowhere is there evidence that the shareholding relationship between JAS and JAA was apparent to members of the public. To the extent that the existence of JAA as a separate entity was apparent at all (for example on packaging), its conduct in making the Representations was comprised of the use of 'Jackson's Art' in its name. The undisclosed shareholding relationship adds nothing to this.

464    Rather, the conduct of JAA to be assessed is the conduct set out above. It is simply a question of fact as to whether, by that conduct, JAA has conveyed matters of fact that may tend to lead other persons into error, specifically the pleaded Representations.

465    And, indeed, that is how JDS has pleaded its case against JAA. To come back to the analysis of that pleaded case undertaken above (see [404]-[405]), the conduct of JAA alleged to have given rise to the Representations is:

(a)    first, the references to the Australian operations on the JAS AU Site together with the JAA conduct, in the context of JDS's reputation in connection with the JDS Names; and

(b)    further or alternatively, the JAA conduct by itself, in the context of JDS's reputation in connection with the JDS Names.

466    It follows from that analysis, and from the conclusions reached in relation to JAS, that each of these alternatives has been made out.

467    The JAA conduct involves, in brief, the dispatch of fine art products to purchasers in Australia from an Australian address identified on the packaging used by JAA, with the JAS Names appearing as prominent branding on the packaging. While nearly all of those purchasers will encounter that conduct after having viewed the JAS Website, it remains the case that the JAA conduct just summarised is likely to convey equivalence or association between JAS or JAA on the one hand and JDS on the other.

468    Customers will, after all, have received a package of art supplies with the prominent branding 'Jackson's' that is shown as having been dispatched from an address in Australia. Some ordinary and reasonable consumers of art products will understand that conduct to convey that the business sending out the products using that labelling is the Australian art supplies business, JDS. For reasons already given, JDS's Western Australian character is not so notorious or otherwise widely known to members of the relevant class of persons as to mean that they will distinguish between the two businesses because the address on JAA's packaging is in South Australia.

469    There is also one invoice in evidence, issued to a consumer by JAA using its name and address and using the stylised 'Jackson's' script. The effect of this conduct is the same as the effect of the use of that name, address and script on the product packaging. Two other invoices were mentioned but explained by JAA as being anomalous transactions with other art supply businesses so I take no account of them.

470    For completeness, it will be recalled that JDS alleges that the JAA conduct included offering and selling arts and craft products by telephone under or by reference to the JAS Names. It is common ground on the pleadings that a small number of such sales were made over a period of about four months from October 2022. Hence, that aspect of the claim has been made out. But it is impossible to say how many telephone sales there were over any longer period, so they will not be considered separately from now on.

471    In any event, by engaging in the JAA conduct in the relevant context set out above, JAA conveyed (at least) that it or JAS was JDS and that they were associated with or endorsed, approved, licensed or sponsored by JDS, being the first two of the pleaded Representations.

VII.    DID THE REPRESENTATIONS CONSTITUTE MISLEADING OR DECEPTIVE CONDUCT OR PASSING OFF?

472    As has been said, there is no real issue that if JAS or JAA did make the Representations as pleaded by JDS, that was misleading or deceptive conduct. JDS is not JAS and is not associated with it. I therefore find that in making the respective Representations that have been made out, as determined in Section VI, JAS and JAA engaged in conduct that was misleading or deceptive or likely to mislead or deceive in breach of s 18 of the ACL.

473    It further follows that each of JAS and JAA contravened s 29(1)(g) and s 29(1)(h) of the ACL: see [542]-[551] below.

474    Nevertheless it is convenient at this point to consider a substantial body of documentary evidence adduced by JDS which, it says, shows that many individual consumers have in fact been misled. For while I have reached the above findings without needing to consider that evidence, at trial substantial resources were consumed arguing about its relevance and the weight to be afforded to it. As a trial judge, it is appropriate for me to make findings about the evidence in case, on appeal, it assumes a significance it does not have, given the reasoning above. It is also possible that the findings will be relevant to the important issue of the discretion to grant injunctive relief, which will be the subject of much of Section X below.

475    It is convenient to refer to the evidence I am about to consider as the consumer confusion evidence. It is necessary, however, to remain conscious that in each case the question is whether there is indeed confusion, wonderment or error, where only the last of these will be evidence of a contravention of s 18 (or s 29) of the ACL: see TPG FCAFC at [22(d)]; and Employsure at [96].

Objections to evidence

476    I ruled on several objections to evidence in the course of the trial, giving brief reasons contemporaneously. But for one group of objections I overruled them with reasons to be delivered later.

477    Those objections were to a series of documents annexed to one of Mr Boercamp's affidavits. They are communications to JDS and to JAS that are described in more detail in Appendix 4. JDS sought to rely on them as showing that on several occasions, customers and others had mistaken JAS for JDS. They are a subset of the consumer confusion evidence. According to JDS, the documents were relevant to the issue of whether JAS's conduct was misleading or deceptive or likely to mislead or deceive.

478    The respondents notified their original objections to the admission of these documents under s 59 of the Evidence Act, that is hearsay. But in oral argument, the basis of the objection changed to s 135, which gives the court a discretion to refuse to admit evidence if its probative value is substantially outweighed by the danger that it might be unfairly prejudicial to a party, or be misleading or confusing, or cause or result in undue waste of time. The submission was based, in particular, on the fact that the makers of the communications had not been called to give evidence, so that it was not possible to test what they were actually thinking or intending, or whether they were in fact confused in any way.

479    I ruled against this objection because I was satisfied that the Court would be able to judge the weight to be accorded to each document depending on its contents and what could (or could not) reasonably be inferred from it. This could be done bearing in mind that it was, indeed, not possible to question the makers of the communications as to their states of mind at the relevant time. That is the approach I have taken to the consideration of the documents in Appendix 4.

480    Counsel for the respondents submitted that if I were to be against him in relation to s 135, the documents could only be admitted under s 66A of the Evidence Act. That section is an exception to the rule against admitting hearsay evidence, which operates on evidence of a previous contemporaneous representation made by a person that is about the person's health, feelings, sensations, intention, knowledge or state of mind. That was, he submitted, the course that Rofe J took in relation to similar evidence in Bed Bath 'N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd [2023] FCA 1587 (Bed Bath 'N' Table FI) at [333]-[340].

481    However it also appeared possible to me that the evidence was not adduced for a hearsay purpose at all, and so would be admissible under the exception in s 60 of the Evidence Act. For completeness, I note that JDS also submitted that the communications were admissible under the business records exception to the hearsay rule that is found in s 69(2).

482    There was therefore a range of possible bases under which the statements could be admitted. And in at least some cases, different bases were available for different statements within the same email or other communications.

483    My conclusions as to the admissibility of each such communication are set out in Appendix 5 to these reasons. Here it is helpful to make some general observations about the approach I took which I applied to the specific rulings contained in the appendix.

484    First, as to business records, that exception to the hearsay rule applies to a representation which forms part of the records belonging to a business or 'made or recorded in the document in the course of, or for the purposes of, the business': Evidence Act s 69(1). The hearsay rule will not apply to the extent that the representation was made by a person with 'personal knowledge' or knowledge 'directly or indirectly supplied' by a person with personal knowledge of the asserted fact: Evidence Act s 69(2).

485    Each of JDS and JAS is obviously a business within the meaning of s 69. An email sent or received in the course of that business, including its attachments, is generally capable of being a business record within the meaning of s 69(1)(a) of the Evidence Act: see Australian Competition and Consumer Commission v Air New Zealand Limited (No 1) [2012] FCA 1355; (2012) 207 FCR 448 at [57]-[60] (Perram J).

486    There is no suggestion that any of the emails in question here were of a personal nature, albeit sent or received using a JDS or JAS email address. Representations made by JDS or JAS employees in such emails and other online communications can comfortably be inferred to have been made in the course of the business of selling art supplies. The JDS and JAS employees can also be inferred to have had personal knowledge of the customer communications in question. The representations by employees are therefore admissible under s 69. This includes a representation in the form of an 'opinion' as to the existence of a fact: Ringrow Pty Ltd v BP Australia Ltd [2003] FCA 933; (2003) 130 FCR 569 at [18] (Hely J).

487    Whether a representation by a third party that is recorded in a business record was made for the purposes of a business 'will depend in large part upon the nature of the document in question': Air New Zealand Limited (No 1) at [47]-[48], agreeing with Drummond J in The Tubby Trout Pty Ltd v Sailbay Pty Ltd (1992) 42 FCR 595 at 599. In this case, I have taken the view that representations made by customers of JDS or JAS cannot be said to have been made in or for the purposes of the respective businesses. So those representations were not admissible under the business record exception.

488    Second, as indicated those representations may however be admissible under s 60 of the Evidence Act because they are admitted for non-hearsay purposes. Objectively, the evidence is tendered not to prove the truth of any of the customers' perceptions, but rather that the customers did in fact have those perceptions: SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483 at [33] (Perram J). It should be noted however that 's 60 does not give to the hearsay evidence a weight or cogency which the circumstances do not warrant': Lardil, Kaiadilt, Yangkaal, Gangalidda Peoples v State of Queensland [2000] FCA 1548 at [26].

489    Thirdly, where the representations are being relied on for a hearsay purpose, they may be admissible under s 66A as evidence of a contemporaneous representation about the knowledge or state of mind of the JDS/JAS customers, specifically error: see SMA Solar at [32]-[33] (Perram J); Telstra Corporation at [206]-[207] (Murphy J).

Evidence of consumer confusion

The records said to evidence consumer confusion

490    The evidence described in Appendix 4 is comprised of numerous annexures to an affidavit of Mr Boercamp dated 15 November 2023 (Boercamp II). With the exception of some direct evidence from the respondents which is mentioned further below, it was all in the nature of emails or similar communications, to either JDS or JAS/JAA, from persons who were not called as witnesses. I have omitted a small number of such communications on which JDS relied because, on my examination of them, it was not possible to see whether they evidenced any confusion. It is convenient to divide them by headings referring to the number of the relevant document in the trial bundle.

491    There is no consumer confusion evidence before the establishment of the JAS AU Store in October 2018. The earliest instance of consumer confusion in evidence is July 2019 and there has been no explanation of why no evidence before that time has not been put before the Court. But this does not indicate that it was the establishment of the JAS AU Site which led consumers into error. As will be seen, with one exception, the evidence itself does not establish that it was the Australian characteristics of the JAS AU Site, or the references to the Australian operations, or the JAA conduct that confused people.

Other evidence about consumer confusion

492    In addition to this documentary evidence, Ms Sadri gave evidence to the effect that JAA receives one to two phone calls per month from people who either telephone to confirm that they are ordering from JDS (Ms Sadri's affidavit at paragraph 6 says 'JAS', but from the context I infer that is a typographical error and she means JDS), or who telephone to enquire about collecting an item from a store in Western Australia or placing an order at such a store.

493    Ms Sadri's evidence, which I accept, is that in the latter cases she emphasises that JAS is a United Kingdom company and not affiliated with JDS in Western Australia. Nevertheless, her evidence is evidence adduced by the respondents to the effect that consumers do telephone JAA's number, which they presumably obtain from the JAS AU Site, under the misapprehension that they are calling JDS.

494    That inference is supported by Mr Thompson's evidence in cross-examination that leading up to mid-2022 (when JAA was established) he was aware of one to two instances per month of Australian consumers being confused, even though he sought to confine that to consumers in Western Australia. Mr Thompson accepted that after the establishment of JAA's operations, the number of consumers who were confused had gone up. In re-examination he said that the number had gone up to one to two per month after mid-2022 so that it was less than that before but there is no need to resolve this apparent contradiction in his evidence; nothing turns on the precise figures.

Assessing the evidence of consumer confusion

495    Although I overruled the respondents' objections to the consumer confusion evidence, they persisted in submitting that I should nevertheless give the evidence no weight. They complained that they did not have an opportunity to cross-examine the consumers who were said to have been misled (or confused). They even submitted that the absence of those people from the courtroom supported an inference that JDS did not call them so as not to expose itself to the risk of the evidence being rejected as 'proper evidence of confusion' (RCS p 8).

496    In Bed Bath 'N' Table FI at [333]-[340], Rofe J was generally critical of the decision of the applicant to adduce evidence that customers had been confused or misled, in the form of evidence from its employees of confusion or error on the part of consumers, where no consumers themselves were called as witnesses. At [333] her Honour said:

The starting point is that indirect evidence of alleged confusion should be given little or no weight, particularly where no explanation has been given for the failure to call direct evidence: [Telstra Corporation at] [188], [199], [210], [225], [231], [236], [241] (per Murphy J); [Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159] at [151] (per Nicholas J). Such indirect evidence is problematic, not least because:

(a)    It may be 'impossible to know' what customers meant by any statements they made and which are quoted in the evidence or whether the quotes attributed to them are accurate: [Telstra Corporation] at [191] (per Murphy J).

(b)    It may be 'impossible to explore the nature or extent' of any alleged confusion or how or why any alleged confusion arose: [Telstra Corporation] at [199] and [225] (per Murphy J).

(c)    It may not expose 'whether and to what extent any misconception … arose from the respondents' conduct' (as opposed to some other reason): [Telstra Corporation] at [232] (per Murphy J).

497    Her Honour found that in the case before her there was no satisfactory explanation of 'the total absence of direct evidence from 36 potential witnesses': Bed Bath 'N' Table FI at [334]. Her Honour did, however, quote the observation of French J in State Government Insurance Corp v Government Insurance Office of New South Wales (1991) 28 FCR 511 at 529 that:

the inference is open, independently of such testimonial evidence, that conduct is misleading or deceptive or likely to mislead or deceive, then it may be that the evidence of consumers that they have been misled can strengthen that inference.

498    Her Honour then concluded this part of her reasons as follows (Bed Bath 'N' Table FI at [340]):

I consider that the confusion evidence is admissible, but I give it limited weight. I accept that the evidence alone is not sufficient to establish deceptive similarity, misleading and deceptive conduct, or passing off. Although there are evident issues with the reliability and cogency of some of the evidence, there are examples of consumers, or other members of the public, confusing House B&B with BBNT and thinking there was some association between the two stores. Therefore, as I discuss below with respect to the ACL claim, the confusion evidence has a role in so far as it confirms other inferences available from the evidence that GRBA's conduct caused confusion among the ordinary and reasonable consumer.

499    On appeal the Full Court neither criticised nor endorsed Rofe J's approach. Their Honours did say, however (Bed Bath 'N' Table FC at [72]) that:

evidence that members of the relevant class have been actually misled or confused is not essential but it may be given considerable weight. However, not all such evidence is persuasive. As observed by Nicholas J (with whom Dowsett J agreed) in Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; 294 ALR 661 at [137]:

It is well established that evidence of actual confusion may be highly persuasive. But as with other evidence, in assessing what weight should be given to it, the court must evaluate the quality of the evidence by reference to its internal features, the other evidence and the court's own knowledge of human affairs …

Various factors may affect the weight to be given to what is said to be evidence of actual deception or confusion. These include: the way in which the evidence has been collected and presented (which may make it impossible to know whether any relevant misconception is attributable to the respondent's conduct) and whether the evidence is likely to be representative of the thinking of ordinary and reasonable members of the relevant class.

500    In my respectful view the approach to the evidence in Bed Bath 'N' Table FI is soundly based on two key matters. The first is that it is for the Court to evaluate the quality of the evidence before it by reference to its internal features, the other evidence and the Court's knowledge of human affairs. The second is that the question of whether conduct is misleading or deceptive is an objective one for the Court to assess itself.

501    In one sense the consumer confusion evidence here is more reliable than the evidence in Bed Bath 'N' Table FI, because it consists of written communications from the consumers themselves, and so is not mediated by the fallible and potentially biased memories of employees of the applicant. Mitolo Wines Aust Pty Ltd v Vito Mitolo & Son Pty Ltd [2019] FCA 902 (Besanko J) is an example of the Court taking into account evidence of a kind similar to the evidence in question here. Some of the evidence of consumer confusion before Besanko J there consisted of email communications and Instagram posts by persons who were not called to give evidence themselves. His Honour gave weight to some of those instances as suggesting error on the part of the consumers, but found that others merely suggested wonderment: see in particular [171]-[186], [240].

502    In my view this all points to the need, here, to assess the consumer confusion evidence with care, conscious of the fact that it has not been possible for the respondents to question the authors of the written communications. Inferences about the cause of any confusion or error should not be reached unless they are clearly supported on the face of the communications, and no other realistic explanation for the communications is available.

503    The respondents also submitted that in any given case it is not possible to test whether the particular consumer was a member of the class of ordinary and reasonable consumers or is an outlier. That point is well made, although the sheer number of instances of confusion tends to dilute its force.

504    I do not accept, however, the respondents' submission that I should infer that the people said to have been misled were not called because JDS did not wish to expose itself to the risk of the evidence being shown not to be proper evidence of confusion. Firstly, there is no reason to think that JDS's lawyers spoke to any of those persons, so that they formed any view that there would be such a risk. Second, there is an obvious reason why, it may be inferred, those people were not called; they were numerous customers who would have been difficult to contact and to obtain testimony from, and this would have added significantly to the cost of the proceeding and the length of the trial.

505    In truth, this submission by the respondents is just another way of saying that the evidence should not be given weight because of the possibility that there may have been circumstances not apparent on the face of the written communications which dispelled the impression those communications gave by themselves. I accept that there is such a possibility and I accept that it should lead me to treat the evidence with care. But that is consistent with the approach I have extracted from the authorities about the use of such evidence to which I refer above and the submission does not, in the end, take matters any further.

506    The respondents also submit that the evidence is compromised by the fact that JDS has itself caused confusion in the marketplace by registering domain names with redirects to the JDS Website and business names; in other words, the conduct that founds JAS's cross-claim. The respondents point to the coincidence that this conduct occurred from 2015 and there is no evidence of any consumer confusion before 2015. But there is no reason to think that this is anything other than a coincidence. For reasons set out in Section X below, JAS has not established that JDS's conduct was likely to mislead or deceive (or confuse) anyone. Further, the lack of any evidence of confusion before 2015 is readily explicable by the fact that JDS's case concerns conduct that commenced in 2018, as well as the simple fact that the longer ago the written communications occurred, the harder it would be to discover them.

507    The respondents rely on evidence that Mr Thompson gave in cross-examination to the effect that he did not believe that some of the specific instances described above were evidence of consumers having been led into error, as distinct from confusion. But I place no weight on that. Mr Thompson had, and claimed, no direct knowledge of the instances or consumers in question. I am in as good a position to interpret the evidence as he was. His opinions about the states of mind of the various consumers, even if not objected to as evidence, cannot hold any sway with the Court.

508    JDS submits that I should find that this evidence is merely the 'tip of the iceberg' in terms of Australian consumers who have been misled by the respondents' conduct (ACS para 62; ts 387). I do not need to go that far and I do not consider it appropriate to do so. It may be inferred that the instances of consumers being misled that are identified above are only a subset of all the instance of such that have occurred. Other persons who have been led into that error may not communicate with JAS or JDS or their communications have not been located or preserved to become evidence. Of course the parties cannot be expected to have captured every such instance in a written record. But how large the total number of such instances might be is impossible to say.

509    Rather, the appropriate approach is to find, as I have, that JAS and JAA's conduct, assessed objectively, is misleading or deceptive, and to determine as an additional point whether the evidence of actual consumers being misled that have been identified confirms and reinforces that conclusion. It may also stand as evidence contradicting certain specific submissions made by the respondents, for example that JDS's account customers will not be misled because they are used to logging in to the JDS Website and those logins will not work on the JAS AU Site. The evidence provides no basis to go further than that.

510    One reason advanced by the respondents as to why I should disregard this body of evidence was that it was indeed no more than evidence of confusion, as distinct from error, and it is well established that mere confusion or wonderment does not result in a breach of s 18 of the ACL: see [473] above. It says that with large enterprises, it is inevitable that there will be some degree of confusion. The answer to that, however, is simply that much of the evidence I have summarised in Appendix 4 goes beyond confusion, and shows that certain consumers were led into error. I am referring in particular to the following instances, designated by trial bundle number, in Appendix 4: TB 102, TB 103, TB 203, TB 205, TB 204, TB 208, TB 207, TB 206, TB 104, TB 202, TB 106, TB 107, TB 109, TB 112, TB 113, TB 114, TB 115, TB 200 p 1721, TB 116, TB 117, TB 200 p 1722, TB 110, TB 118, TB 200 p 1725, TB 201 p 1739, TB 200 p 1724, TB 201 p 1740, TB 200 p 1726, TB 200 p 1727, TB 201 p 1738, Exh 12, TB 201 p 1735, TB 200 p 1728, TB 200 p 1729, TB 200 p 1732, TB 200p 1733, Exh 13 and Exh 14).

511    For the balance of the instances in that appendix (TB 105, TB 111 and TB 200 p 1723), the communications in question only show confusion or wonderment, or do not show anything at all (TB 201 p 1736).

512    In the end however, the consumer confusion evidence has been of little assistance in establishing JDS's case as pleaded. That is because in almost every instance, it is not possible to say that the specifically post-October 2018 aspects of the impugned conduct had any causal connection with consumer error. It is obvious that the similarity in trading names and product lines did contribute to the errors but, as I have explained, that is not enough to establish JDS's case.

Web traffic

513    Another set of contentions made by the parties going to the question of whether consumers were in fact misled by JAS's conduct should be briefly addressed. JDS submits that the significant increase in traffic to the JAS Website from 2018 supports the view that consumers looking for the JDS Website were mistakenly going to the JAS Website instead. That increase appears from Mr Jones's data set out at [239] above.

514    The respondents point out that the traffic to the JDS Website also increased over 2018 and 2019 and only began to decline in late 2019/early 2020 at the time of commencement of the COVID-19 pandemic. They say this is inconsistent with JDS's contention. They submit that JDS has not established that the conduct of which it complains was the cause of the increase; apart from COVID-19 there could be all sorts of reasons for it, including the product lines offered and consumer preferences.

515    I accept the respondents' submissions on this point. JDS's submissions were little more than speculation. I have described evidence given by the expert witnesses to the effect than the COVID-19 pandemic (which commenced in Australia in March 2020) led to a significant increase in traffic to both the JAS Website and the JDS Website. Mr Jones also expressed the view that both websites saw a decline in traffic in 2022 which was likely to be an industry wide trend resulting from the abatement in the pandemic. Beyond that, there was no expert evidence as to the cause of the rise in the organic traffic to the JAS Website which can be observed to begin around January 2018 to accelerate in, perhaps, mid-2018, and to accelerate further at, perhaps the beginning of 2019. That one low resolution graph is a slender basis on which to draw any conclusions about that cause. The sales figures take the point no further.

516    To isolate any particular conduct, misleading or not, as the cause of the rise in Australian organic traffic to the JAS Website, or in JAS's Australian sales, is impossible. I do not accept JDS's submission in that regard.

Passing off

517    It is also necessary to assess the impugned conduct under the rubric of passing off. In ConAgra at 355 Gummow J said:

Within the passing off action, there is an accommodation and adjustment of three competing interests. First that of the plaintiff in protecting the commercial advantages flowing from his efforts and investment, secondly that of the defendant in being free to attract purchasers for his goods and services by what appears to him to be an effective means, and thirdly that of consumers in selecting between competing goods and services without the practice upon them of misrepresentations.

518    In In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193 at [295] Katzmann J identified the 'essential elements of the tort, often referred to as "the classical trinity"' as:

the goodwill or reputation acquired by the claimant in his goods or services, name or mark; a misrepresentation by the respondent leading to deception or confusion; and damage caused by the misrepresentation …

519    JDS relies on the same matters which, it says, establish misleading or deceptive conduct (or misrepresentation) on the part of JAS and JAA to allege that they are also liable under the tort of passing off.

520    I find that the three elements in the classical trinity have been made out in each case.

521    As has been said, the respondents did not dispute that, for the purposes of assessing whether the tort has been committed, the time as at which JDS's goodwill or reputation was to be assessed was October 2018. I have found that JDS had a reputation and goodwill associated with the selling of JDS Names, certainly in its core markets but also (to a lesser extent) Australia wide.

522    Further, I have found that, by conduct comprised of the use of the materially similar JAS Names to sell art products in Australia, as well as the maintenance of the JAS AU Site having the Australian characteristics, the Australian operations, and in the context of the JAA conduct, JAS has represented, in effect, that it is JDS or is associated with JDS.

523    Despite the summary of principle in In-N-Out Burgers, the respondents made no submission that it was necessary to prove that any persons had been misled in order to establish passing off. To the contrary, they submitted that the 'relevant misrepresentation need only be likely to lead the public to believe that the goods are those of the applicant' (RCS p 18). The submission was made on the basis of Bodum v DKSH Australia Pty Limited [2011] FCAFC 98 where Greenwood J (Tracey J agreeing) said that (citations removed) 'the misrepresentation need only be likely to lead the public to believe that the goods are those of the plaintiff. There is no requirement that actual deception be proven' (at [214]).

524    That being so, on the basis of the findings already made I find that the necessary misrepresentation by JAS has been established.

525    Third, despite a submission made on behalf of the respondents at the beginning of the trial that JDS had not established loss or damage, it was common ground by closing submissions that there is a rebuttable presumption of damage once the first two elements are proved. That is so: see Shape Shopfitters at [233]-[240]. While the assessment of any damages was not part of the present trial, the respondents adduced no evidence to rebut the presumption for the purpose of the elements of passing off. Hence I find that the third element has been established for the purposes of whether JAS is liable under the tort of passing off.

526    The same analysis applies to JAA in respect of the representations that it has made as a result of having engaged in the JAA conduct which, it will be recalled, includes the dispatch of art products under or by reference to the JAS Names. There is no need to repeat the analysis just given.

527    Both JAS and JAA have committed the tort of passing off. Subject to the effect of any delay in commencing the proceeding, they will be liable to JDS in respect of that tort. The effect of delay will be considered in Section X below.

VIII.    THE RESPONDENTS' ACCESSORIAL LIABILITY

Introduction and principles

528    JDS alleges that each of JAS and JAA is liable, not only as a principal contravener of s 18 and s 29 of the ACL, but also as a person 'involved' in the contravention of the other within the meaning of that term in s 2(1) of the ACL. If that is correct then in their capacities as involved persons, each of JAS and JAA will be liable under s 236 to pay the amount of any loss or damage suffered by JDS and also susceptible to the various remedies for which s 237 and s 243 provide.

529    JDS also claims that each of JAS and JAA are joint tortfeasors with the other in respect of the tort of passing off.

530    JDS further claims that the third respondent, JAH and the fourth respondent, PCP, are 'involved' in the relevant sense with JAA's contraventions of the ACL and joint tortfeasor with JAA in respect of passing off.

531    In so far as it is alleged that these respondents were 'involved' in the contraventions of others, JDS relies on the following paragraphs of the definition of that term in ACL s 2(1), namely that each respondent 'has aided, abetted, counselled or procured the contravention' (para (a)) and 'has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention' (para (c)).

532    JDS's submissions split these into three 'limbs' (separating 'party to' from the balance of (c)). The principles as to each limb may be summarised as follows:

(1)    Aiding, abetting, counselling or procuring the contravention. This conveys the single 'concept of conduct that brings about or makes more likely the commission of an offence': Handlen v The Queen [2011] HCA 51; (2011) 245 CLR 282 at [6]. In Commonwealth Director of Public Prosecutions v Citigroup Global Markets Australia Pty Limited (No 1 - Indictment) [2021] FCA 757 at [27] Wigney J applied this to the words of s 79(1)(a) of the Competition and Consumer Act 2010 (Cth), and it can similarly be applied to the equivalent limb of a civil contravention of the ACL.

(2)    Being in any way, directly or indirectly, knowingly concerned in the contravention. In Leighton Contractors Pty Ltd v Construction, Forestry, Mining and Energy Union [2006] WASC 144 Le Miere J held that at [25]:

A person is directly or indirectly knowingly concerned in or party to a contravention if he or she has full knowledge of the essential facts or matters constituting the contravention and is an intentional participant by virtue of some act or conduct on his or her part which contributes to the commission of the offence. The person must engage in some act or conduct, including an intentional omission, which implicates or involves him or her in the contravention.

Another way of putting it is that there must be a practical connection between the person and the contravention: Ashbury v Reid [1961] WAR 49 at 51 applied in Emwest Products Pty Ltd v Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union [2002] FCA 61; (2002) 117 FCR 588 at [34] (Kenny J).

(3)    Being party to the contravention. This indicates no more than that the person 'participates in', 'takes part in' or 'concurs in' the contravention, but it does require the person to have taken some positive step: Yorke v Lucas (1983) 49 ALR 672 at 681 (Bowen CJ, Lockhart and Beaumont JJ).

533    In each case it is orthodox, and JDS accepts, that it is necessary to establish that the person said to have been 'involved' knew the essential elements that made up the contravention, although they need not have been conscious that it was a contravention: see Rafferty v Madgwicks [2012] FCAFC 37; (2012) 203 FCR 1 at [249]-[252] (Kenny, Stone and Logan JJ).

534    In so far as joint tortfeasance is alleged, I respectfully adopt the summary of principle which White J gave in Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573 at [190] (citations removed):

(a)    joint tortfeasorship requires that there be 'a concurrence in the act or acts causing damage' and not merely a coincidence of separate acts which by their conjoined effect, cause damage. That is, to be joint tortfeasors, two or more persons must act in concert in committing the tort;

(b)    persons act in concert when they act in furtherance of a common design. There must be something in the nature of concerted action or agreed common action;

(c)    the agreement to act in concert need not be explicit. Tacit agreement between the parties is sufficient;

(d)    persons who aid, counsel, direct or join in the commission of a tort will be joint tortfeasors; and

(e)    it is not necessary that the parties to the common design intend to infringe. It is a common design to do the act, and not to infringe, which is sufficient.

535    Given its allegations that the holding companies JAH and PCP are joint tortfeasors with JAA, JDS referred to the consideration of the corporate structure and shareholdings of respondents in Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA 1403 at [442]-[446]. It is true that in that passage Burley J found the shareholding relationship between the four respondents to be relevant to a finding that each was joint tortfeasor with the others. But that was merely one factor addressed by his Honour in coming to that conclusion. His Honour also found that, on the particular facts before him, the respondents 'together make up a small family-owned business' (at [442]), that the evidence about the business operations of the respondents also suggested 'a close connection' (at [444]), and that 'the evidence indicates that the 4 respondents own assets or operate their business in concert' (at [445]) and 'act in concert to produce one business outcome' (at [446]). I do not doubt that in particular factual contexts, shareholding relationships can be relevant, but that does not rise to a generally applicable point of principle (and JDS does not suggest that it does).

The parties' submissions about JAS and JAA

536    JDS submits that JAS and JAA are each accessorily liable for the other's conduct because (ACS para 84):

(a)    'JAA provides the Australian physical presence and customer service' for JAS's Australian operations;

(b)    Mr Thompson accepted in cross-examination (ts 179) that at all times since mid-2022, JAS has 'depended on JAA to carry out the responsibilities … to facilitate the Australian business operations' of JAS and each of JAS and JAA 'have acted hand in glove in ensuring that Australian consumers are offered for sale and supplied with specialist art products under the Jackson's branding';

(c)    JAS is JAA's ultimate holding company and they have two common directors (Mr Thompson and Mr Venus); and

(d)    each of JAS and JAA has had knowledge of essential matters making up the other's contravention.

537    The respondents made no submissions in opposition to JAS's accessory liability for JAA's contraventions, or vice versa. Their submissions about accessory liability were directed entirely to the position of the third and fourth respondents, JAH and PCP. Nevertheless, liability is denied in the Defence, so I need to be satisfied as to whether JAS and JAA do have any accessory liability.

JAA's liability in respect of JAS's conduct

538    Turning first to JAA's position, in so far as it is concerned JDS's submissions are made at a high level of generality. Its conduct and knowledge need to be judged against the specific elements of the contraventions of s 18 and s 29 by JAS that have been found above.

539    It may readily be accepted that JAA had knowledge of those matters; Mr Thompson confirmed as much in cross-examination. It may also be accepted that JAA knew of JDS and its business: Mr Thompson says he became aware of them in the early 2000s; and Mr Baumgartner also testified that as at April 2022, he was aware of JDS's business, including it having supplied art products in Australia for a long time. It follows from JAA's knowledge of the JAS AU Site that it knew that the representations conveyed that JDS and JAS were associated or the same. And it knew, of course, that those propositions were false. The knowledge requirements of involvement for the purposes of the ACL are therefore made out.

540    It follows from the conclusions I have reached in relation to JAS's misleading or deceptive conduct that JAA was, at least, concerned in that conduct. For one of the configurations of conduct found to have been misleading includes the JAA conduct as a necessary element. Having engaged in that conduct, it follows that JAA was concerned in the misleading or deceptive conduct in which JAS has been found to have engaged.

541    There is an obvious causal link between JAA's conduct and the contravening conduct of JAS: as a matter of common sense, JAA conducting the Australian operations was a precondition in fact to JAS's references to those operations on the JAS AU Site. Another way of putting it is that a material part of the contravention was the promotion of JAA's business operations; in engaging in those operations with knowledge of that, there was a real practical connection between JAA's conduct and the breaches of JAS.

542    If I had concluded that the JAA conduct was not part of JAS's misleading or deceptive conduct, my view as to JAA's knowing involvement would have been different. For then the contraventions by JAS that would have been established would begin and end with the operation of the JAS AU Site, with its use of the JAS Names and the Australian characteristics of that site, to promote, offer and sell art supplies. And there is no evidence that JAA has had any say, or has taken any part, in the content of the JAS Website, including the JAS AU Site.

543    The evidence does establish that JAA has fulfilled orders placed on the JAS AU Site and provided customer service in connection with it. But I am not persuaded that this would be enough to bring it within any of the limbs of knowing involvement on which JDS relies. However, given the findings I have made, it is not necessary to discuss this further.

Joint tortfeasance

544    The same conclusions are reached (and would have been reached) in respect of joint tortfeasance. The tortious conduct that I have found to have been established is constituted by the operation of the JAS AU Site in conjunction with the JAA conduct. It follows that the part that JAA has taken in the commission of the tort meets the description of acting in furtherance of a common design.

545    If had reached the view that neither the JAA conduct nor the references to the Australian operations were part of conduct that conveyed the Representations, my view on joint tortfeasance would have been different too. For when speaking of a common design, it is important once again to be specific about what the design was. It needed to be the design to commit the tort. If the commission of the tort consisted solely of maintaining the JAS AU Site with the Australian characteristics, there is no evidence that anything JAA did furthered that design.

546    But in the result, JAA is liable as a person involved in JAS's contravening conduct, and as a joint tortfeasor.

JAS's liability in respect of JAA's conduct

547    JDS's submissions about why JAS should be held liable for JAA's conduct have already been described. They are the same as its submissions about the converse situation, which I have set out above and have described as being at a high level of generality in so far as JAA's accessory liability is concerned. But their import is quite different when considering JAS's involvement in the contraventions and tort of JAA.

548    The contravening conduct of JAA which I have found to have been established encompasses JAA conduct, that is, the dispatch of fine art products to purchasers in Australia with the JAS Names and an Australian address appearing on the packaging. As JDS submits, Mr Thompson accepted in cross-examination the proposition that 'at all times since mid-2022, each of JAS and JAA have acted "hand in glove" in ensuring that Australian consumers are offered for sale and supplied with specialist art products under the Jackson's branding' (ACS para 84). What those two respondents have thus worked 'hand in glove' to do has been the JAA conduct which I have found to have been in breach of the ACL; that is, the physical supply by JAA (albeit not as vendor) using packaging applied by JAA that was affixed with the JAS Names.

549    In the context of those matters, the shareholdings and directorships are relevant. JAA is (through the intermediary company JAH) a 90% owned subsidiary of JAS and two of the three directors of JAA are directors of JAS, one of which is JAS's Executive Director and effective chief executive officer, Mr Thompson. From this and from Mr Thompson's concession just mentioned, it may readily be inferred that in engaging in the JAA conduct, JAS was acting at the behest of JAS. It may also be readily inferred that JAS was aware of all the necessary elements of JAA's contraventions.

550    It is not necessary to break down the analysis further. Plainly, JAS is liable as an accessory under each of the three limbs of involvement in JAA's breaches of the ACL on which JDS relies. Further, when that same conduct is characterised as the commission of the tort of passing off, it is plain that JAS and JAA were acting in concert to commit the tort.

551    In the result, and subject to the matters concerning relief addressed in Section X below, JAS is liable as an accessory for the contravening and tortious conduct that has been established against JAA.

The case against JAH

552    In the case of JAH, JDS relies on the following matters:

(1)    JAH is a wholly owned subsidiary of JAS.

(2)    Mr Thompson, Mr Venus and Mr Thompson's sister Ms Varley are JAH's directors. Thus, save for Ms Varley, the directors are also directors of JAS. Ms Varley leaves the decisions and conduct of JAH to Mr Thompson and Mr Venus.

(3)    Mr Thompson accepted in cross-examination that JAH was incorporated 'as part of the plan to have an Australian company on the ground in Australia' (ts 179).

(4)    JAH is subject to obligations in JAA's Shareholder Deed to use all reasonable efforts to promote JAA's business and profitability, and it has done so.

(5)    JAH has had knowledge of the essential matters making up the contraventions.

553    With a crucial qualification, I accept the factual accuracy of all these matters. The qualification is that the evidence that JAH has used all reasonable efforts to promote JAA's business and profitability was elicited from Mr Thompson in cross-examination in very general terms. It does not come close to persuading me that JAH actually did (or omitted to do) anything that aided, abetted, counselled or procured JAA's contraventions, or that it was knowingly concerned in or a party to those contraventions.

554    Mr Thompson was shown a copy of the Shareholders Deed of April 2022 in respect of JAA. The parties to that deed are JAA, JAH and PCP. The deed relates to the holdings of the latter two companies' shares in JAA. Mr Thompson's attention was directed to cl 5.5(b) of the Shareholders Deed, which requires each shareholder to 'use all reasonable efforts to promote the Business and the profitability' of JAA. 'Business' is defined in cl 24.3(a) to include 'the e-commerce sale and distribution of fine art supplies business in the Australian and New Zealand market known or referred to as "Jackson's Art Australia/Jackson's Australia"'. It was put to Mr Thompson that as far as he was concerned, the parties to the Shareholders Deed have complied with that clause, so that each shareholder has used reasonable efforts to promote the business and profitability of JAA. Mr Thompson accepted that this was correct.

555    Mr Thompson's evidence was, however, that JAH held 'very few' board meetings, two or three times a year, 'if that' (ts 180-181).

556    It emerges from the summary of principle given above in respect of three limbs of 'involvement' on which JDS relies that to come within that definition, a party must, with knowledge of the necessary facts, do some act (by words or other conduct) or make some omission that implicates it in the conduct of the principal contravenor.

557    In this case, JDS points to no act or omission on the part of JAH capable of meeting those requirements for knowing involvement. It is trite law that in general, a shareholder does not have any power to manage or otherwise direct the conduct of a company, those functions being generally reserved to its board of directors: see e.g. Australasian Centre for Corporate Responsibility v Commonwealth Bank of Australia [2016] FCAFC 80; (2016) 248 FCR 280 at [29]-[38]. JDS points to no action taken or words uttered by or on behalf of JAH that makes that general proposition inapplicable here.

558    Eliciting Mr Thompson's acceptance of the general proposition that JAH complied with a generally expressed obligation in an agreement falls short of persuading me that JAH actually did or omitted to do anything in its capacity as shareholder of JAA, or in any other capacity, that implicated it in JAA's contraventions, or led to them being more likely. It is even less persuasive when one considers Mr Thompson's reticence about saying that JAH's board met regularly (or at all).

559    JDS's position was not advanced very far by an oral submission made that JAH and PCP each 'combined with JAA to secure a particular outcome; that is, in effect, JAA's Australian operations, that is, the particular conduct' (ts 411). For one thing, this was not pleaded as conduct on the part of JAH (or PCP) that gave rise to accessorial liability. For another, it was not put to Mr Thompson as an officer of JAH (or to Mr Baumgartner as an officer of PCP) that this was the purpose of subscribing for or otherwise acquiring shares in JAA, or of joining in the Shareholders Deed.

560    But even if those objections were to be put aside, it is a submission put at a high level of generality that does not identify any specific step that JAH (or PCP) took (or omitted to take) to make it more likely that JAA would contravene the ACL, or any step to participate in JAA's conduct beyond the role of a passive shareholder. There was, for example, no evidence that JAA drew any funding from its shareholders to support its activities - what evidence there was suggested that its operations were funded by remittances from JAS of 90% of the value of the sales that JAA fulfilled. And there was no evidence that JAA's shareholders had any role in directing the management or operations of the company (beyond the very general evidence about compliance with the Shareholders Deed which I have already discounted).

561    As for joint tortfeasance, for the same reasons there is no persuasive evidence that JAH acted in concert with JAA, or that it acted at all. There is no evidence that JAH aided, counselled, directed or joined in the commission of any tort.

562    The case against JAH will be dismissed.

The claim against PCP

563    The case against the other shareholder in JAA, PCP, suffers from the same defect. But its position and the evidence pertaining to it are different, and so need to be canvassed separately.

564    JDS relies on the following matters to establish liability on the part of PCP:

(1)    PCP has the same principal place of business as JAA.

(2)    PCP's two directors and shareholders, Mr Baumgartner and Ms Sadri, are JAA's only two employees.

(3)    Mr Baumgartner is PCP's nominee director on JAA's board.

(4)    PCP has performed or caused JAA to perform various obligations under the JAA Shareholder Deed.

(5)    PCP has not had any role in any business other than JAA since December 2022.

(6)    Since April 2022, PCP has known the essential matters making up the contraventions of JAA.

(7)    As at April 2022, Mr Baumgartner (and thus PCP) was aware of JDS's business, including it having supplied art products in Australia for a long time.

565    Once again, with a crucial qualification, I accept the factual accuracy of these submissions. And once again, the qualification concerns the findings I am prepared to make, based on the evidence that PCP has performed or caused JAA to perform obligations under the Shareholder Deed.

566    That evidence emerged in the cross-examination of Mr Baumgartner. Mr Baumgartner said that the board of JAA met once a year. There was no evidence about how often the board of PCP met.

567    Mr Baumgartner confirmed that PCP had complied with the terms of the Shareholder Deed. The confirmation was in terms as broad as that.

568    Mr Baumgartner was then taken to a list of obligations and operational matters in the Shareholder Deed which PCP was required to fulfil or to cause JAA to execute. These included reporting regularly to JAS regarding JAA's overall operation, maintaining a standard of customer service as established by JAS, maintaining a certain rating on any 'chosen online or offline platform', and maintaining supplier relationships. He confirmed that to the best of his knowledge, PCP had complied with those obligations.

569    As with Mr Thompson, Mr Baumgartner was taken to cl 5.5(b) of the Shareholder Deed, requiring shareholders to 'use all reasonable efforts to promote the Business and the profitability of the Company'. Mr Baumgartner agreed that PCP had promoted the business 'with regards to relationships with, you know, suppliers and so on', and he later explained that this meant 'paying them on time to make sure we continue a smooth relationship with them' (ts 215-216). But he was also careful to add 'We don't engage in any sort of promotion for Jackson's, and - like, no marketing efforts, or whatever you want to - yes' (ts 216). He also agreed that PCP had used reasonable efforts to promote the profitability of JAA 'in terms of order fulfilment, timely - and customer service' (ts 216).

570    Once again, this broad evidence about compliance with the Shareholder Deed does not persuade me that PCP actually did anything (by words or other conduct), or omitted to do anything that made JAA's contraventions more likely or meant that PCP was concerned in or party to them. JDS has not identified any specific act or omission of that kind.

571    To the extent that PCP complied with broad obligations to fulfil various operational requirements, or to see that JAA executed them, for all the Court knows PCP had no need to do anything, because JAA was complying fully anyway. As for the obligation to promote the business and profitability of JAA, the qualifications Mr Baumgartner placed on his answers on that subject mean that his evidence provides even less basis to make findings adverse to PCP than Mr Thompson's did in respect of JAH.

572    These conclusions mean that JDS has failed to establish that PCP was 'involved' in any contravention within the meaning of s 2(1) of the ACL, or was a joint tortfeasor. Like the case against JAH, the case against PCP will be dismissed.

IX.    JAS'S CROSS-CLAIM AGAINST JDS

The issues on the cross-claim

573    It will be recalled that JAS's cross-claim is to the effect that in 2022:

(a)    JDS registered the Contested Domains which redirected to the JDS Website;

(b)    JDS registered the business name 'Jacksons Art';

(c)    Mr Boercamp incorporated a company named 'Jacksons Art Supplies Pty Ltd'; and

(d)    JDS added a reference to JDS being known as 'Jacksons Art Supplies' to the JDS Website and added 'Jacksons Art Supplies' as a metadata keyword of the website.

574    JAS alleges that this conduct was misleading or deceptive, because:

(a)    consumers looking for the JAS Website who mistakenly entered one of the URLs for the Contested Domains would be redirected to the JDS Website and would be likely to be misled into believing that JDS was one and the same as JAS, and that they were purchasing goods from JAS;

(b)    consumers would also be misled by reason of the metadata keyword mentioned above to believe that they were accessing the JAS Website when in fact it was the JDS Website; and

(c)    those searching the business name records would be likely to believe that JDS was one and the same as JAS.

575    The conduct alleged is largely admitted, but the cross-respondents JDS and Mr Boercamp deny that it was misleading or deceptive or likely to mislead or deceive. Also, JAS alleges and JDS denies (see defence to cross-claim filed on 22 February 2024 para 15) that JDS engaged in the conduct with the intention of misleading consumers (SOCC para 15):

into believing that JAS and JDS were and are one and the same, or are affiliated, and/or that in purchasing products from JDS they were purchasing products from JAS or a business associated with JAS, and by so doing wrongfully intended to divert business away from JAS.

576    It is therefore necessary to review the evidence about the conduct, largely admitted as it is.

577    It is worth noting here that everyone concerned conducted the trial on the basis of an implicit assumption that JDS's state of mind and Mr Boercamp's state of mind were one and the same. That assumption is clearly correct; as JDS's Managing Director and the person presented by JDS as the relevant witness and decision maker in relation to the issues in this proceeding, his state of mind about these matters is to be imputed to JDS. That is relevant to this section as well as to issues of JDS's knowledge of JAS's activities that are canvassed in Section X.

The evidence on the cross-claim

The business name and the incorporation of the company

578    These matters are covered by (bare) agreed facts. They are that:

(a)    on 23 May 2022, JDS registered the business name 'Jacksons Art'; and

(b)    on 8 August 2022, Mr Boercamp incorporated the company Jacksons Art Supplies Pty Ltd.

579    That company has not traded.

Changes to the JDS Website

580    The cross-respondents admit that in early 2022, JDS updated the JDS Website's metadata keywords to include 'Jacksons Art Supplies'. The particulars to this allegation in the SOCC, which have not been disputed, are that metadata keywords, or meta tags, are tags that give search engines such as Google information about the content of the website to assist in SEO (such as where a particular website ranks in the results when a particular search term is used).

581    Further, by their defence to the cross-claim, the cross-respondents admit that as at the date of that defence (originally 16 August 2023) the 'About Us' page of the JDS Website included the text set out at at [76] above. That is the text that states that JDS is 'also known as "Jacksons Art Supplies"'. The cross-respondents plead that the reference to 'Jacksons Art Supplies' was added to this text in around mid-2022. Mr Boercamp's evidence was that this occurred in around August 2022 and JAS made no attempt to contradict this. I will proceed on the basis that the words in question were added in August 2022.

582    Mr Jones's evidence suggests that the fact that the JDS Website included references to 'Jacksons Art Supplies' was unlikely to be effective as an SEO technique. His report says (TB 301 p 3036):

The [JDS Website] has been updated so that the home page and About page refer to 'Jacksons Art Supplies', and the About page in particular features a high density of the keyword 'art supplies'. In my experience, this appears to be a form of 'keyword stuffing', an out of date technique which involves using the same keywords or phrases over and over again in your website's content. It used to be a popular way to attempt to manipulate a website's ranking in search results, however Google have been able to identify this for many years, and it can actually hurt your ability to rank for these terms. The search rankings for these terms reflect this, with jacksonsart.com ranking above jacksons.com.au for most, if not all, 'Jacksons Art' related terms.

JDS's registration of domain names

583    For the most part, the inferences that JAS asks the Court to make concerning JDS's alleged intentions are said to arise from the evidence concerning the third area of its alleged conduct, namely the registration of the Contested Domains. Evidence about the registration of other domain names by Mr Boercamp on behalf of JDS is contextually relevant to that issue, and all this evidence is relevant to the question of when JDS became aware of JAS's activities in selling to Australian consumers.

584    That question is in turn relevant to the issue of whether any injunctive relief should be refused to JDS due to delay on its part. While the latter question falls to be determined in Section X below, it is best to describe all the evidence in this section.

585    However, the plea as to JDS's intent does not seem to have any relevance to the cross-claim, because intent is not an element of contravention of s 18 or s 29 of the ACL or of passing off. JAS makes no submission that a finding of intent means that a finding that the conduct was misleading can be made more readily: e.g. Apand Pty Ltd v Kettle Chip Company Pty Limited (1994) 52 FCR 474 at 496. Its relevance therefore appears to be confined to the discretion to grant relief to JDS on its claim and, potentially, the discretion to grant relief on the cross-claim. So I will defer making any findings on the evidence I am about to recount until Section X below.

586    Specifically, on Mr Boercamp's evidence, on 31 May 2015 he caused the following domain names to be registered:

(a)    jacksonsdrawingsupplies.com;

(b)    jacksonsdrawing.supplies;

(c)    jacksonsartsupply.com;

(d)    jacksonsartsupplies.com.au;

(e)    jacksonsartsupplies.com;

(f)    jacksonsart.supply;

(g)    jacksonsart.supplies; and

(h)    jacksonsart.com.au.

587    Mr Boercamp's explanation of how he came to do this is as follows (Boercamp II):

21    In 2015, [JDS] was using Melbourne IT (a domain name vendor) for various digital services. In early 2015, a representative of Melbourne IT (I cannot recall his name) recommended to me that, as part of [JDS's] online sales strategy, [JDS] should acquire domain names which were similar to jacksons.com.au or which people may use when thinking of [JDS], as those domain names could be used by [JDS] in the future.

22    [JDS] began implementing this strategy in May 2015. I have been responsible for selecting the domain names to register on behalf of [JDS].

588    Mr Boercamp's further evidence is that he registered the domains jacksonsart.au and jacksonsartsupplies.au in late 2021.

589    According to Mr Boercamp, he registered all of the domains that use the term 'art', in both 2015 and 2021 (Boercamp II para 25):

because, at the time of their registration, I was aware that many of the [JDS] Business customers refer to the [JDS] Business as 'Jacksons Art', including in conjunction with the word 'Supply' or 'Supplies', and I considered that to be an appropriate way to refer to the [JDS] Business.

590    In cross-examination, Mr Boercamp did not accept the suggestion that this was inconsistent with the explanation above, that he registered the domains on the advice of Melbourne IT.

591    Mr Boercamp registered (or renewed) further domain names in May to July 2022. They were:

(a)    jacksonsart.com.au;

(b)    jacksonsartaustralia.com.au;

(c)    jacksonsartsupplies.com.au;

(d)    jacksonsartaustralia.au;

(e)    jacksonsartsupplies.au;

(f)    jacksonsartaustralia.com.au;

(g)    jacksonsartaustralia.com;

(h)    jacksonsart.co.nz;

(i)    jacksonsartsupplies.co.nz;

(j)    jacksonsartaustralia.net.au; and

(k)    jacksonsartaustralia.net.

592    While there are a number of discrepancies between this evidence and the admitted pleas in the cross-claim, nothing turns on them.

593    In any event, Mr Boercamp's evidence was that he registered the domains he did in 2022 for the same reason that he registered the domains in 2015 and 2021, but also because after he became aware that that JAS and companies operating as 'Jackson's Art' had established a physical presence in Australia, including through the warehouse in Adelaide, he 'was concerned to protect [JDS's] position by ensuring that JAS did not acquire these domain names' (Boercamp II para 27(b)).

594    Each of the domains registered in 2015, 2021 (Mr Boercamp's affidavit says 2019 at this point but that seems to have been an error) and 2022 redirects to the JDS Website. In cross-examination Mr Boercamp gave an explanation as to why this was so. The explanation related to what his affidavit described as the 'strategy' that JDS began implementing in May 2015 (ts 125):

What was the strategy?---At the same time, the gentleman [from Melbourne IT] basically advised me that you could register all these domains. You can't park them and you need to actually redirect a lot of those websites to be active. So that was a part of - we looked at what numerous sites were available or domains were available and then instructed our web company to redirect them to our website.

Sorry, you were told you can't park things. Is that what you just said?---Correct.

In other words - did he explain why you can't park them?---The gentleman at the time said a lot of people buy domain names to stop other people accessing them, and you can't just leave them in limbo. You actually need to direct them to a legitimate website.

And so you redirected all these web pages to jacksons.com.au?---That's correct.

595    Further challenge to Mr Boercamp's evidence on this point in cross-examination proceeded as follows (ts 125-126):

So if someone looked up, for example, jacksonsart.com.au, they would land in your website?---Correct. Because that's what we were known as.

You knew there was a business in England trading as Jackson's Art, didn't you?---I had heard of them, yes.

And you weren't concerned at all to think that people might be confused or misled by the fact that you were operating a website called jacksonsart.com.au which is redirecting to jacksons.com.au?---No, because I had no knowledge of them ever trading in Australia.

You could easily have found that out to avoid risk in relation to that conduct, couldn't you?---I didn't think I needed to at the time.

See, what I put to you, Mr Boercamp, is you did know about Jackson's Art selling product in AUD in Australia, and you were deliberately intending to indeed redirect business from them using the jacksonsart.com.au domain?---No.

596    And then, later (ts 128):

Now, by of course 2022, you knew about the Jackson's Art - Art Supplies, JAS, to be clear with you - JAS selling product in AUD to Australia. We know that.?---Correct.

And registering a business. And what you do then… You go ahead and you register a whole lot of - or re-register a whole lot of names. But this time you do so in the knowledge of Jackson's Art Supplies UK, don't you?---That's correct.

And you cause these newly re-registered or newly registered names to redirect to your business?---This was done as a protection because the other party had registered business names and was setting up operations, so it was done as more of a protective measure, because obviously us losing those names to the other party would have been very detrimental to my business

So you would have seen then from your awareness of Jackson's Art UK that it was using the name Jackson's Art as a domain?---Correct.

…

In registering or re-registering jacksonsart.com.au with the knowledge that you had then in 2022, you knew the effect was to redirect customers from the jacksonsart.com site to your site if they entered jacksonsart.com.au?---My intention was to actually have our customers, who were dealing with Jacksons, to go to our site.

But if an Australian customer meaning to contact Jackson's Art Supplies entered jacksonsart.com.au, for example, they would end up at jacksons.com.au?---Correct.

And what I put to you is that you were endeavouring, by these registrations, to redirect business away from Jackson's Art UK to your business?---No.

597    JAS submits that it is unbelievable that the registration of the domain names before 2022 does not indicate an interest in available names and a close awareness of the relevance of such names. Presumably by this it means an awareness of JAS trading in the Australian market. JAS also submits that it is 'unimaginable' (RCS p 10) that over the many years of trading before 2019, Mr Boercamp or the marketing manager employed by JDS (Ms Burstein) did not notice another trader selling art supplies to Australian customers under the 'Jackson' name. Further, he caused each of the domains to redirect to the JDS Website.

598    JAS also criticises the absence of any evidence from any other JDS personnel about these matters, in particular Ms Burstein.

599    JAS in particular attacks Mr Boercamp's credibility on the basis of evidence given in cross-examination that in 2015 he found that www.jacksonsart.com (the URL of the JAS Website) was unavailable, but did not look that website up. The full passage of evidence is as follows (ts 123-124):

We, myself, went on and looked at what other companies were available, what other names we could actually utilise.

Sorry, you - so I want to understand that answer. You said, 'We looked to see what other company names might be available.'?---Myself and other key managements of the company.

And what results emerge from your searching for what company names might be available?---What other .com, what other linked in to our names, what other ones we could actually fit in with the name that we're known as.

You didn't find jacksonsart.com in that searching?---That was not available.

So you found it?---Yes, that's correct.

And you ascertained it wasn't available?---That's correct.

And you never looked it up?---Sorry.

You didn't enter it into a Google search and look it up?---No, I didn't.

It's a business called Jacksons. It has got 'Jackson's Art'. You say you're known by Jackson's Art. And your truthful evidence to his Honour is you never did a Google search to look it up?---That's correct.

Didn't stimulate some curiosity on your part?---I also registered a lot of other domain names at the time.

No, no. No, no. The question about curiosity was - - -?---We went through the register of which ones are available

Sorry. I don't want to cross over what you're saying, but I really require you to listen to the questions carefully. The question was the fact that you couldn't register jacksonsart.com, did that not stimulate your curiosity to go on Google and look up jacksonsart.com?---No. No.

I suggest that's untruthful, Mr Boercamp?---Sorry, it's the truth.

600    JAS submits that this evidence is 'altogether unbelievable' and that Mr Boercamp's statement elsewhere in his cross-examination that his intention in 2015 was 'to register names that were linked with our business' (ts 125) reinforces the unbelievability of his evidence because the domain name jacksonsart.com is linked to JDS's business, yet Mr Boercamp maintained that he did not even do a search of the name.

601    JAS also refers to what it says is a difference between the evidence described at [586] above and the following evidence which Mr Boercamp gave in cross-examination (ts 122-123):

In 2015 you say you had some communication with Melbourne IT about domain names?---Correct.

What was it?---Our renewals for our other domains was starting to come up. We received notices from them saying in 60 days, in 90 days, the renewal's coming up. A gentleman made contact with me and said, 'Basically, yes, are you renewing?' and also said, 'We have got new domain, sub-domains coming up, being .supply, .supplies, .other ones. Have you thought of registering a whole lot of other domains that link in with your company that you've now got access to?'

And that's the totality of the conversation you can now recall in the witness box?---That's correct.

602    JAS submits that this is different to the explanations given in the affidavit. And so it is, to the extent that it adds the details that JDS's existing domain names were coming up for renewal and that in 2015 Melbourne IT told Mr Boercamp that there were new domains or sub-domains becoming available for registration. But it is commonplace that in the witness box a witness will remember additional details of evidence given in an affidavit; that Mr Boercamp did so here is of no moment.

603    JAS submits that Mr Boercamp's evidence was that while he had received reports of confusion arising (he alleges) from JAS's conduct, he did not look at JAS's webpage at the time, that is, in May 2019 after his return to work after his illness. But that is not an accurate account of Mr Boercamp's evidence. The evidence to which JAS refers (ts 119 ln 7) concerns a particular version of the page which Mr Boercamp was shown in cross-examination. He said that no one brought that version of the page to his attention. But that is in the context of his broader evidence that he had been alerted to the AU Pop Up (ts 118 ln 34-35) and that he had looked up the JAS Website and been looking at it in 2019 to 2020.

604    According to JAS, all this demonstrates that Mr Boercamp was 'reckless and entirely indifferent to the consequences of his actions in failing to check the use of a very similar domain to jacksonsart.com and causing diversion of business to occur, doing so, not least, in 2022 with full knowledge of JAS' (RCS para 43). But with respect, this submission attempts to do too much. If it is posited on the basis that Mr Boercamp was telling the truth when he said that in 2015 he was not aware that JAS was selling products in Australia, then his failure to check what use was being made of the JAS Website's domain does not demonstrate recklessness or indifference to consequences. It merely demonstrates a somewhat supine approach to what was, on Mr Boercamp's evidence, only a possibility that JAS was selling into Australia.

605    As for the position in 2022, which the submission also covers, there is no evidence that the registration of the Contested Domains, with redirects, did divert any business. On Mr Simonetti's evidence, it is unlikely that it did (see [615]-[616] below). But JAS submits that Mr Boercamp registered the Contested Domains in 2022 with an intention to mislead which should preclude JDS from calling in aid the equitable jurisdiction of the Court (and, presumably, the analogous statutory jurisdiction to grant injunctions).

606    JAS submits that Mr Boercamp did not even give 'direct evidence of no apprehension of misleading conduct' (RCS p 11). But that is not correct: when asked whether he knew that the effect of registering the Contested Domains was to redirect customers from the JAS Website to the JDS Website if they entered jacksonart.com.au, Mr Boercamp replied (ts 129):

My intention was to actually have our customers, who were dealing with Jacksons, to go to our site.

But if an Australian customer meaning to contact Jackson's Art Supplies entered jacksonsart.com.au, for example, they would end up at jacksons.com.au?---Correct.

And what I put to you is that you were endeavouring, by these registrations, to redirect business away from Jackson's Art UK to your business?---No.

607    Before concluding this collation of Mr Boercamp's evidence about his activities on the internet, in Section III I expressed the view Mr Boercamp had and has no great knowledge of how the internet and commerce on it work, nor any great interest in those matters. I have reached that view on the basis of the tenor of Mr Boercamp's oral evidence overall, as illustrated by the following passage about the JDS Website (ts 129-130):

MR GOLVAN: …you say that in August '22, you introduced the words: Jacksons Drawing Supplies (also known as Jacksons Art Supplies.) Now, you hadn't said that before in your web page, had you?---No.

You also caused those words to be – I suggest you included it on the web page to cause Google to give a higher ranking to the jacksons.com.au web page when people entered the words Jacksons or Jacksons Art Supplies. Didn't you intend to do that?--- For Google? I didn't know how Google works, how the analytics or Google AdWords work. At the time, it was referring to what customers called us as. This was done as a protection measure because of the other party starting to operate in Australia.

Now, are you aware of the term meta tags?---No

Did you cause meta tags to be inserted into your webpage which used the word Jacksons or Jacksons Art Supplies?--- I have no knowledge of what meta tags and that information in regard to it. A lot of these would have been for our sales and marketing and our web developers.

All right. … Now, in paragraph 13 of the cross-claim brought against your company and yourself, it's provided that you updated your website to include metadata keywords. That was done in July 2022. And if we could look at the defence … At paragraph 13, that's admitted. Now, but you say you don't know anything about meta tags?---Sorry?

You don't know anything about meta tags?---We're saying – you're asking me to represent the whole company, or every person in the company?---

Hang on just a minute. You're the CEO and managing director of the company, right?---Correct.

The introduction of meta tags into your website has been admitted. But you don't know anything about it. Is that - - -?---The workings of meta tags? No, I don't.

You don't know how that admission has come about?---No.

Who does?---Sorry, ourselves and marketing manager.

And they're not here to give evidence, are they?---They're not here to give evidence.

608    Mr Boercamp ran a business that was, after all, predominantly brick-and-mortar, even in 2022. JDS was so uninterested in the internet that it suffered its own website to lose ordering capability between 2009 and 2011 (see [185] above). It was so uninterested in it that from 2016, it lost the ability to discern the level of online sales in its own accounts, and was unable to provide a persuasive reconstruction of those sales even when that became important for the purposes of this proceeding (see above [194]-[198]). Consistently with that, the proportion of JDS's online sales since 2015 has been both small and constant, that is, flat (see [195] and [197] above).

609    I will return below to the submission that JDS's conduct in registering the Contested Domains disqualifies it from injunctive relief.

610    JAS made further, comprehensive submissions about the absence of any other witness to support Mr Boercamp's evidence of his lack of knowledge of JAS's activities, in particular Ms Burstein. JAS invited the drawing of a Jones v Dunkel inference concerning JDS's knowledge of the JAS Website, including the existence of the drop down currency menu.

611    Ms Burstein was JDS's marketing manager since 2013. She was responsible for adding metadata keywords to the JDS Website and also for maintaining the Google Analytics account. JAS submits that as JDS's marketing manager, Ms Burstein would have been in a position to confirm or deny knowledge of the JAS Website, so that an inference based on JDS's failure to call her, that her evidence would not have assisted JDS, means that the Court can more readily infer that JDS did know about JAS (presumably meaning its activities in Australia) and the JAS Website and its functionality at least from 2015 and so should reject Mr Boercamp's evidence.

612    JDS's submission against making this inference was that it was 'implausible to think that lower-ranked employees of JDS knew more than Mr Boercamp' (ts 394), so there was no need to call Ms Burstein. Other than that, JDS gave no explanation of why she had not been called. Mr Boercamp's evidence was that she has two very young children, and so would need to organise babysitting, but he accepted that subject to that she would have been available to come to court.

613    In its written submissions, JDS said that Mr Boercamp should be believed because he presented as an honest and credible witness. In oral submissions, senior counsel for JDS pointed out that JAS made no plea as to JDS's intentions in registering domain names in 2015, and nor was it put to Mr Boercamp in cross-examination that he registered them with the intent of appropriating customers that would otherwise have gone to JAS.

The likely effect of registration and redirection of the Contested Domains

614    Mr Jones's evidence was that the redirection of the various sites to the JDS Website had 'no SEO effect' (TB 301 p 47). Mr Simonetti agreed with that evidence, explaining the reference to 'no SEO effect' as follows: 'In other words, the domain name the subject of the redirection (here, each of the Domains) will not appear as a search result in response to a search on an internet search engine' (TB 195 para 44).

615    Mr Simonetti gave further evidence in his affidavit as follows:

47.    Further it [is] extremely unlikely that internet users would access any of the [Contested] Domains and therefore extremely unlikely that internet users would in fact be redirected from the [Contested] Domains to the website . This is because, since well before the last decade it has been well-known, and I have into account when designing digital strategies for clients, that internet users generally access websites in one of four ways:

(a)    after having conducted a search on a search engine such as Google, by clicking on a result which takes the internet user to the website;

(b)    by clicking on a hyperlink to the website in, for example, an email that the internet user has received (often from the operator of the website) or an online advertisement;

(c)    by entering the domain (URL) of the website into their browser, in circumstances where the user is aware of what the domain is. For example, this includes a situation where the user types out the domain based on marketing material from the company which identifies the domain name;

(d)    where the user has previously visited the website, by entering the start of their domain in their internet browser and then clicking on an auto-completed form of full domain which shows up in the user's browser.

48.    In contrast, I consider it extremely unlikely that an internet user would seek to access a company's website by 'guessing' the domain name and entering this into his or her browser.

616    In cross-examination, Mr Simonetti was led to concede that it was possible that persons who were familiar with the URL for the JAS Website could enter that URL but accidentally append '.au' to it and so be redirected to the JDS Website. However he described such circumstances as 'very obscure' (ts 324).

The submissions on the cross-claim

617    JAS's submissions on the cross-claim were brief. It alleges that it had an extensive reputation among consumers of art products in Australia. According to the statement of cross-claim, it has had this reputation since at least 2005. Presumably, JAS alleges that the reputation was maintained or enhanced up to the time at which Mr Boercamp commenced the impugned conduct, which is all pleaded to have commenced in 2022. Any conduct in 2015 would have been outside relevant limitation periods.

618    JDS's alleged conduct included acquiring the Contested Domain names and redirecting them to the JDS Website. It included acquiring company names and business names similar to JAS's name. It included referring to JDS on the JDS Website as 'Jacksons Art Supplies' and inserting metadata keywords on the website in an effort to divert users searching for JAS to the JDS Website. JAS alleges that this was all done with the intention to divert custom from JAS to JDS and goes so far as to allege that Mr Boercamp took deliberate steps to 'make JDS appear as though it was JAS online' (RCS para 52). JDS admits all this conduct, but denies that it engaged in it with the intention alleged by JAS.

619    According to JAS, it is a reasonable inference that at least some consumers of art products sold in Australia would be, or would be likely to be, misled by the conduct of JDS into believing that JDS was JAS. The conduct, JAS says, therefore contravened s 19 and s 29(1)(h) of the ACL and amounted to passing off. JAS seeks injunctive relief but does not seek compensation (or an account of profits).

620    In summary, JDS resists the cross-claim on the following basis:

(1)    JAS has not established that it had a reputation in connection with the JAS Names in Australia as at August 2022. To the extent that it has, that reputation arose because of its own wrongful conduct, and it should not be permitted to rely on its own wrong to establish its cross-claim.

(2)    The mere registration of a business name or a company name is not misleading or deceptive. The company has not traded.

(3)    In any event, the use of the phrase 'Jacksons Art Supplies' on the JDS Website was not likely to mislead or deceive. That is because, when considered in the context of the website as a whole, it did not convey identity or an association between JDS and JAS. It is also because it was true to say that JDS was known as 'Jacksons Art Australia'.

(4)    The registration of the Contested Domains and redirecting to the JDS Website from them would not have misled anyone, because those domains do not appear in any relevant Google search, and JAS has not established a real and not remote possibility that a consumer is likely to enter any of the URLs for the Contested Domains in their web browsers with the intention of accessing the JAS Website.

(5)    As for the metadata keywords, Mr Jones's evidence contradicts any suggestion that they were likely to have resulted in misdirecting a consumer looking for the JAS Website to the JDS Website.

Consideration of the cross-claim

621    With two exceptions, I accept JDS's submissions as to why the cross-claim should be dismissed.

622    I will start with the exceptions. One can be dealt with summarily: I have already found that JDS was not known as 'Jacksons Art Australia': see [167] above.

623    The other concerns JDS's submissions about JAS's reputation. Contrary to those submissions, JAS has established that by August 2022 it had a relevant reputation in Australia.

624    I have already accepted that by October 2018, JAS had a reputation as a seller of art products under the JAS Names in Australia with a substantial (or not insignificant) number of Australian consumers: see [363]-[379] above. Between then and August 2022, as JDS itself submits, JAS's Australian sales increased significantly (see [300] above). Its JAS Google Analytics New User numbers in Australia also increased significantly (see [327] above). And while JDS made a bare submission that JAS had not established a reputation as at August 2022, it referred to no evidence to support that, and made no attempt to attack JAS's evidence in that regard. I have accepted that evidence: see [372] above. It follows that as at August 2022, JAS did have a reputation in Australia as a seller of art products under the JAS Names.

625    Nor do I accept JDS's submission that this reputation arose because of JAS's own wrong, so that it should not be permitted to rely on it. That is because, as JDS was at pains to emphasise, it does not complain that any of JAS's conduct before October 2018 was misleading or deceptive. So JAS had a reputation as at that date which was not acquired through wrongful conduct, and that reputation was likely to have persisted until August 2022. Any subsequent growth in that reputation that was attributable to wrongful conduct might be relevant to the question of granting JAS discretionary injunctive relief, but that would be difficult if not impossible to disentangle from the 'legitimately' acquired reputation.

626    In any event, on the view I have taken of the matter that question does not arise. That is because, putting those two exceptions aside, I generally accept what JDS says about the cross-claim, for the following reasons.

627    First, the mere registration of a business name or a company name is not likely to mislead or deceive anyone (in the necessary sense of being a real and not remote chance - see [381] above). Jacksons Art Supplies Pty Ltd has never traded. There is no basis in the evidence to believe that any person, let alone any consumer of art supplies, would search the business name register or company register for the supposedly offending names, and JAS posited no plausible scenario under which such a person would be led into error even if they did. While each case depends on its facts, I note that Forster J reached a similar conclusion in Burswood Management Ltd v Burswood Casino View Motel/Hotel Pty Ltd (1987) ATPR 40-824 at 48,918.

628    Second, an isolated statement on the JDS Website that JDS is 'also known as "Jacksons Art Supplies"' is unlikely to have misled or deceived anyone. Given the use of the JDS Names throughout the JDS Website, any user of the site reading that isolated statement would remain in no doubt as to whose website they were on. And it is far-fetched to posit that the user would then, somehow, arrive at the differently branded JAS Website and believe that they were dealing with JDS because of that isolated statement on the previous site. Rather, any confusion or error which the user might then experience would likely have been caused by the close similarity between the JAS Names and the JDS Names in the context of their similar businesses.

629    Third, the experts agreed that the redirection of the Contested Domains to the JDS Website would have had no effect on the behaviour of search engines. Those domains did not appear in search engine results: see [614] above. There can be no suggestion that people would have chosen to enter the URLs for the Contested Domains into their browsers, since there is no way that they would have become aware that domains with those URLs existed.

630    It follows that the only way that a user would come across one of the Contested Domains, and thereby possibly be misled, would be if they meant to enter the URL for the JAS Website into their browser and erroneously mistyped so as to have the browser point to one of the Contested Domains, and then redirect to the JDS Website. Mr Simonetti's evidence was that it was extremely unlikely that this would happen. Assiduous cross-examination elicited a concession by him as to circumstances in which it could occur, but he called those circumstances 'very obscure'. This evidence means that JAS has not established a real and not remote chance that the registration of the Contested Domains with redirects to the JDS Website would lead anyone into error.

631    Fourthly, and finally, JAS has not established that JDS's admitted conduct in adding metadata keywords made any difference to search engine results and so was likely to have led anyone into error.

632    In that regard, JDS relied on the passage from Mr Jones's evidence set out at [582] above. But it is not clear to me that this is talking about the same thing as the relevant allegations in the defence. Mr Jones appears to be referring to the inclusion of certain terms in the text that is visible to a user of the website, while the 'meta' in the term 'metadata keywords' appears to refer to data that does not appear on screen to the user, but is included in the data for the site in a non-visible way.

633    Nevertheless, JAS presented no evidence to suggest that the metadata keywords did have any effect on search engine behaviour, and in his closing senior counsel for JAS confirmed that there was no such evidence.

634    JAS did make a Jones v Dunkel submission about what JDS's intentions in placing metadata keywords on the web site can be inferred to have been, given that JDS did not adduce evidence from Ms Burstein, who appears to have been the person responsible. But in the absence of any evidence about what metadata keywords do, or can be expected to do, there is simply nothing on which a Jones v Dunkel inference could operate.

635    As a result, JAS has not discharged its burden of establishing that the addition of the metadata keywords (or meta tags) did lead anyone into error or was likely to do so.

636    For all these reasons, JAS has failed to establish that any of JDS's admitted conduct was misleading or deceptive or likely to mislead or deceive.

Passing off

637    It follows from the above that JAS has not established that JDS made any misrepresentation that led to deception or confusion. For with one possible exception, the conduct alleged did not have the outcome of making any misrepresentation to consumers who were familiar with JAS and its reputation.

638    The possible exception is the statement on the JDS Website that JDS is 'also known as "Jacksons Art Supplies"'. But even if that statement is considered in isolation from the rest of the website (which it should not be), the conclusions I have reached above mean that no damage was suffered.

Outcome of the cross-claim

639    JAS has not established that JDS relevantly contravened the ACL or engaged in the tort of passing off.

640    On the concession recorded at [89] above, Mr Boercamp would have been found liable if JDS had been liable, but that does not arise.

641    The cross-claim will be dismissed.

X.    WHETHER THE RELIEF SOUGHT BY JDS AGAINST THE RESPONDENTS OUGHT TO BE GRANTED

642    The injunctions sought in JDS's originating application are:

11    A permanent injunction restraining each of the Respondents from;

(a)    offering for sale, advertising, promoting and selling arts and crafts products under or by reference to JACKSON'S, JACKSON'S ART or JACKSON'S ART SUPPLIES, whereby such conduct involves:

(i)    using an Australian sub-domain or a website with content specific to Australian users;

(ii)    operating a warehouse, distribution facility or other physical presence located in Australia;

(iii)    the operation of an Australian telephone number, or is otherwise targeted at Australian consumers;

(b)    being involved in the conduct referred to in (a);

(c)    being a joint tortfeasor in respect of the conduct referred to in (a).

12    A permanent injunction restraining … each of the Respondents in trade or commerce from;

(a)    making or causing to be made, or threatening to make or cause to be made any of the Representations in Australia;

(b)    being involved in the conduct referred to in (a);

(c)    being a joint tortfeasor in respect of the conduct referred to in (a).

643    It is also relevant to note that JDS seeks an order requiring JAS to geo-block access to the JAS AU Site by persons located in Australia.

644    The respondents oppose the grant of any injunctive relief, even if they are found to have contravened the ACL or to have engaged in passing off.

645    Underpinning that opposition are three related themes (the respondents' submissions merit the breadth of that word). The first is JDS's alleged delay in seeking to enforce its rights. The second is what senior counsel for the respondents characterised as the parties' 'side by side trading' (ts 330) prior to the commencement of the proceeding. The third concerns the form and utility of the injunctive relief that JDS seeks.

646    The way JDS has structured its case seems to have anticipated the first and possibly second of these themes. As has already been made abundantly clear, JDS claims that JAS's conduct from October 2018, and the conduct of JAS and JAA from mid-2022, was each qualitatively different to the conduct that preceded it, so that any delay before those times should be disregarded.

647    Out of these themes the following issues arise for determination in this section:

(1)    What knowledge of JAS and its activities in Australia did JDS have, and at what times? The dispute between the parties on this point centred around when Mr Boercamp, and so JDS, knew that JAS was selling art supplies to consumers in Australia. At one point JDS's counsel seemed to assume that the question depended on JDS's actual and not constructive knowledge , although in response to a question from the bench he accepted that it would be possible in 'very unusual circumstances' to exercise the discretion based on some lesser level of knowledge (ts 397). The respondents, however, briefly submitted that JDS should be disqualified from relief regardless of the state of its knowledge.

(2)    Depending on the answer to that first question, should the lapse of time between JDS's acquisition of that knowledge and the commencement of this proceeding mean that injunctive relief should not be granted as a matter of discretion? The Defence put it in terms of estoppel, waiver and discretion, but as has been said in oral closing the respondents did not press the first two. So the question is as broad as has just been described. It encompasses the first two of the respondents' themes (delay and side-by-side trading).

(3)    Also encompassed in those themes, but with sufficient prominence to require particular attention, is JDS's main answer to the previous question: regardless of when the Court finds that it was fixed with sufficient knowledge of JAS's activities in Australia, there has been no delay because those activities changed in October 2018, and then in mid-2022 (with the introduction of JAA), so that any delay should only be assessed from those dates.

(4)    Two other discretionary factors were enlisted by the parties that also need to be addressed. The respondents submit that JDS's (Mr Boercamp's) state of mind in engaging in the conduct that was the subject of the cross-claim provides a discretionary reason to deny relief. They allege that by registering the Contested Domains and engaging in the other impugned conduct, JDS set out to improperly take advantage of JAS's reputation, and this should disqualify it from relief on its claim. JDS in turn submits that what it says is a flippant attitude on the part of Mr Thompson to the instances of consumer confusion mentioned above is a discretionary matter favouring the grant of injunctive relief.

(5)    Assuming an injunction is to be granted, what precise form should it take? This encompasses the respondents' criticisms of the utility of the form of injunction that JDS seeks. Those criticisms in part concern the way that JDS has structured its case, as considered under (2) above. They also concern the geographic extent of any relief.

648    I will now consider the principles that apply to these matters, before addressing each of them.

Principles

Remedies available under the ACL

649    The power to grant an injunction for breaches of s 18 or s 29 of the ACL arises under s 232(1)(a) of the ACL, which relevantly provides that the Court may grant an injunction in such terms as it considers appropriate, if it is satisfied that a person has engaged, or is proposing to engage, in conduct that constitutes or would constitute a contravention of a provision of Ch 2 of the ACL (in which s 18 is found) or Ch 3 (in which s 29 is found). Section 232(1)(c) and s 232(1)(e) also effectively pick up persons who are involved in such contraventions, in the manner that I have found JAS and JAA to have been. There is no express time limit for the commencement of proceedings seeking such an injunction.

650    Nor is there any requirement for the Court to find that the person intends to engage in the conduct again, nor any need for imminent danger of substantial damage to any other person: see s 232(4). Since the contravening conduct constitutes the ongoing operation of the JAS AU Site and fulfillment of orders by JAA, and since there has been no indication that JAS or JAA intend to modify that conduct if not required to do so by the Court, it can in any event be comfortably inferred that here, the contravening conduct will continue if not restrained.

651    Once the condition precedent contemplated by s 232 has been satisfied, the provision (and its predecessor in s 80 of the Trade Practices Act) gives the Court 'the widest possible injunctive powers, devoid of traditional constraints, though the power must be exercised judicially and sensibly': see ICI Australia Operations Pty Ltd v Trade Practices Commission (1992) 38 FCR 248 at 256 (Lockhart J, French J agreeing) applied in Australian Competition and Consumer Commission v viagogo AG (No 3) [2020] FCA 1423 at [133] (Burley J).

652    It is of fundamental importance in this area that injunctive relief to restrain contravention of s 18 of the ACL is limited to what is necessary in the circumstances of the particular case: see Campomar at [111]. There must be a nexus between the conduct found to constitute the contravention and the injunction granted, which involves an evaluative judgement: Homart Pharmaceuticals Pty Ltd v Careline Australia Pty Ltd [2018] FCAFC 105; (2018) 264 FCR 422 at [134] (Murphy, Gleeson and Markovic JJ).

653    And, of course, the applicant for an injunction must demonstrate that it will serve a purpose, that is, that it will have utility: Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2007] FCAFC 146; (2007) 161 FCR 513 at [111] (Moore, Dowsett and Greenwood JJ). Effectiveness or utility are proper discretionary considerations in determining whether relief should be granted: Ethicon Sarl v Gill [2021] FCAFC 29; (2021) 288 FCR 338 at [918] (Jagot, Murphy and Lee JJ).

654    The subject matter and the scope and purpose of the ACL also affects the exercise of the powers: see Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249 at [85] (Rares J). As Lockhart J said in ICI (at 256), 'Public interest injunctions are different'. But that does not mean that traditional equitable doctrines are irrelevant, simply that the absence of any one or more of the elements that might be necessary in equity is not fatal to the grant of the injunction: see ICI at 257.

655    The purpose of the ACL is, obviously, consumer protection. In World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 at 186-187, Bowen CJ explained:

Proceedings under the Trade Practices Act have a special character in that the Act deals with the protection of the public interest, and in the instant case, with the protection of consumers. In the course of protecting that public interest, the Act also enables a party to seek relief from injury to his own interests. An applicant for an injunction under s 80 need not show that a proprietary interest of his is affected, or that he has suffered special damage, or indeed, that he personally has suffered any damage at all. Even where the application is brought by a rival competitor seeking redress of damage to his business caused by the allegedly unfair and illegal practices of the respondent, the application, though it vindicates or protects the private interests of the competitor, at the same time secures the public interest of consumer protection. Though, for example, the complaint under Pt V of the Act in some cases closely resembles an action for passing off or trade libel, it is nevertheless an action to protect the consuming public from being misled or misinformed. For competition between rival traders properly to be promoted, it is necessary that the relevant market is kept adequately informed about the goods or services available for purchase, and is not misled by deceptive trade practices.

656    These points will assume some significance below.

657    As for damages, a person who suffers loss or damage because of the conduct of another person that contravenes Ch 2 or Ch 3 of the ACL may recover the amount of the loss or damage by action against that other person (here JAS and JAA) or against any person involved in the contravention (here, JAS): ACL s 236. A similar entitlement arises by combination of s 237 and s 243(e). In each of those cases, the relevant action must be commenced or application made before the end of six years after the day on which the relevant cause of action accrued: s 236(2) and s 237(3).

Remedies available for passing off

658    The remedies of damages and injunction are available if the tort of passing off is established: ConAgra at 364; 10th Cantane Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 at 320. Instead of damages, a plaintiff may elect to receive an account of profits: ConAgra at 364; 10th Cantane at 323. In that regard, senior counsel for JDS submitted (without demur from his opponents) that any such election would fall to be made before the hearing that is contemplated to take place to quantify the pecuniary remedy (see [58] above).

659    There is reason to think that the power to grant an injunction lies in equity's original jurisdiction rather than its auxiliary jurisdiction, because passing off was being restrained in equity before any common law cause of action evolved: see Wadlow C, Wadlow on the law of passing-off (6th ed, Sweet & Maxwell, 2021) (Wadlow) at p 18. This question may not be of purely academic interest, because if passing off is a purely legal claim then the defence of laches may not be available: see Orr v Ford (1989) 167 CLR 316 at 340 (Deane J). However, JDS has not taken this point. All parties proceeded on the basis that delay was a discretionary question at large, so that no distinction need be drawn between injunctive relief following a legal claim and that following an equitable claim.

660    Similarly, while it has been said that if passing off is established, final injunctions are 'normally granted as a matter of course' (Wadlow at p 754), JDS did not take that point, and it approached the matter on the basis that it was for the discretion of the Court: That is how I will proceed to deal with the question of any injunction following from passing off: cf. Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 5) [2016] FCA 983 at [58] (McKerracher J).

Delay

661    The leading modern authority on the impact of delay on remedies available in cases like the present is Winnebago (No 1). Broadly, the relevant facts were these. The respondent had been carrying on business internationally, but not in Australia, from about 1959, manufacturing and selling 'Winnebago' branded recreational vehicles. The appellants started selling recreational vehicles using that brand in Australia in 1978. The respondent found out about this in 1985. The parties had discussions about the issue in 1991 and 1992 which, the appellants claimed, resulted in an agreement permitting it to use the name in Australia. In any event, the respondent did not make demand for the appellants to cease using the 'Winnebago' name until 2010, 25 years after it found out about the appellants' conduct.

662    The trial judge granted a permanent injunction restraining the appellants from using the 'Winnebago' name. The Full Court set this aside and granted more limited relief. It did so on the basis of the respondent's 25 year delay in enforcing its rights. After rejecting an argument that the respondent's conduct gave rise to an estoppel or to laches, acquiescence or delay as a complete defence, Allsop CJ said (most citations removed):

[56]    Final injunctive relief may be refused by reason of delay. To the extent that any injunctive relief is informed by, or founded upon, the protection of the public by enforcement of the Trade Practices Act or Australian Consumer Law, delay, even serious delay otherwise sufficient in equity to disentitle the applicant to relief, may not have that effect, in that the court will be slower to give effect to delay or like considerations, given the wider public interest, beyond mere private rights. Even if conduct does not disentitle an applicant from relief, it may, in a case based on reputation, such as in a passing off suit or like proceeding, lead to more limited relief. A party that might otherwise be the subject of the order may only be required to distinguish its business from that of the applicant: see Turner v General Motors (Australia) Pty Ltd (1929) 42 CLR 352 at 565-567. This kind of grant of only limited relief may arise (as it did in Turner) from conduct amounting to delay or laches or acquiescence, though not of a character to constitute a complete defence. The inaction of an applicant may allow a respondent to continue trading and thereby, to some extent (to paraphrase Isaacs J in Turner at 366) 'suffer the party to acquire some goodwill and some responsibilities which it would now be inequitable absolutely to ignore'.

[57]    Secondly, as to the conduct of the hearing, Winnebago submitted that the factual proposition put by Knott as the foundation for the discretionary denial or limitation of relief, was not part of the controversy. That factual proposition was that Knott had considerably increased the size of its business through concurrent use. I cannot agree. First, in address, the point was made clearly by Senior Counsel for Knott (see transcript of 2 June 2011 at p 192). Secondly, and more fundamentally, the case involved in its essence Knott's own reputation. It had used the name and mark on sales for 32 years. Winnebago had, nevertheless, a reputation in Australia. The first point at which the assessment of that reputation arose was at the commencement of the offending conduct. Thereafter, even if, as is the case, Winnebago had a reputation in Australia in 1978, 32 years of sales and conduct by Knott (25 years of which was with the knowledge of Winnebago) may bear on the question of whether the conduct remained deceptive and what relief should be given, if any, in respect of it.

663    The essence of the Chief Justice's reasoning in relation to the case before the Full Court was as follows (citations removed):

[66]    It is difficult to disentangle the extent to which Knott has been advantaged by any misleading association with Winnebago. There was evidence, to which I have already referred, that at least in the 1990s, Knott deliberately sought to obtain some connection. Further, the findings as to Mr Binns' intention in 1978 to take advantage of such reputation as Winnebago had in Australia is relevant also. Nevertheless, over decades, with the deliberate and informed choice of Winnebago, Knott built its business, and undertook responsibilities and expended money on a certain hypothesis. It would be unjust to ignore this, if Winnebago can be assured by orders of the Court of no further entrenchment on its trade connection and reputation, and if the public could be appropriately protected by a measure that distinguishes Knott's vehicles from Winnebago's. Nothing can now be done about the thousands of recreational vehicles marked "Winnebago" on the road in Australia that were manufactured by Knott. In order to protect the public from deception, and to protect Winnebago, the distinguishing would have to be not merely in words and documents comprising or attending the advertisement, sale or hire of the vehicles, but would also have to be on the vehicle itself, so that it would be plain to someone that the vehicle was not manufactured by anyone with any connection with Winnebago of the United States.

[67]    This limitation of relief can be seen to reflect not only the balancing of the respective interests of Knott and Winnebago in the reputation developed by Knott's expenditure, in the context of Winnebago's extraordinary (and informed) delay, but also the erosion of the reputation of Winnebago. I do not accept that Knott has shown that Winnebago's reputation has been extinguished. The evidence reveals sufficient to conclude that at least some of Knott's reputation in the use of the name and marks was the development of its goodwill and reputation; that not all of the development of its business involved the taking advantage of Winnebago's reputation in Australia. In normal circumstances, this would not matter; it would be something that the party passing off would have to accept as a consequence of its wrongdoing. Here, however, Winnebago has contributed to this by standing by, informed of the position, for 25 years while Knott expended money and built a business, part at least of which was its own reputation.

[68]    In my view, it would be unjust to ignore these matters and to require Knott to cease to use the name and logos, if, in connection with the advertisement, sale or hire of, or other dealing with the recreational vehicles a clear distinction between Winnebago and Knott and the other appellants was made. That distinction would need to be made on the vehicle itself, clearly and visibly, as well as in documents dealing with the vehicle and anything that was said about the vehicles.

664    In his concurring reasons, Cowdroy J referred to (at [97]) the following passage concerning the doctrine of laches from Lord Selborne LC's judgment in Lindsay Petroleum Company v Hurd (1874) LR 5 PC 221 at 239, where his Lordship observed that the doctrine of laches is not 'an arbitrary or a technical doctrine' and then went on to say (at 239-240):

Where it would be practically unjust to give a remedy, either because the party has, by his conduct, done that which might fairly be regarded as equivalent to a waiver of it, or where by his conduct and neglect he has, though perhaps not waiving that remedy, yet put the other party in a situation in which it would not be reasonable to place him if the remedy were afterwards to be asserted, in either of these cases, lapse of time and delay are most material. But in every case, if an argument against relief, which otherwise would be just, is founded upon mere delay, that delay of course not amounting to a bar by any statute of limitations, the validity of that defence must be tried upon principles substantially equitable. Two circumstances, always important in such cases, are, the length of the delay and the nature of the acts done during the interval, which might affect either party and cause a balance of justice or injustice in taking the one course or the other, so far as relates to the remedy.

665    Cowdroy J noted that this passage had been cited with approval in a number of Australian decisions: Winnebago (No 1) at [98].

666    At [103], Cowdroy J summarised the position as follows:

If an injunction preventing any use of the Winnebago marks by the appellants were granted, [they] would suffer severe detriment. The substantial goodwill and reputation in the Winnebago brand that the appellants had developed since 1978 would be lost. Such detriment would also extend to the dealerships with which Knott has commercial relationships. There are many thousands of vehicles which are used in Australia bearing the name Winnebago which the respondent, by its tacit acceptance of that position, had taken no steps to restrain until it instituted the present proceeding.

667    Later, at [106] his Honour concluded:

In the present circumstances, the Court considers that the granting of relief to completely restrain the appellants from the use of the Winnebago marks to be unreasonable in light of the substantial delay by Winnebago. As stated by Giffard LJ in Lee v Haley (1869) LR 5 Ch App 155 at 160, 'in cases of delay, [the Court] must consider whether the nature of the injunction is such that if it is granted the defendant will have been injured by the delay'. This is not to say however that some relief should be granted to distinguish in the future the products of the appellants from those of Winnebago.

668    Jagot J's concurring reasons emphasised the fact that the respondent had 'sat on its hands' knowing that the appellants were conducting business in Australia using the Winnebago name and logo for 25 years (at [120]). Her Honour considered that it would be plainly unjust to prevent the appellants from continuing to do so in circumstances where that would enable the respondent to enter the Australian market and, by using its name and logo, take advantage of the reputation that the appellants had built for some 30 years before the respondent took action.

669    After hearing the parties on the form of relief, the Full Court granted an injunction that only restrained the appellants from trading under the Winnebago name if they did so without making it clear in advertising or on the vehicles themselves that its vehicles 'were not manufactured by, or by anyone having any association with, Winnebago of the United States': Knott Investments Pty Ltd v Winnebago Industries, Inc (No 2) [2013] FCAFC 117 (Winnebago (No 2)). In his reasons for this second decision, Allsop CJ (Cowdroy and Jagot JJ agreeing) noted (at [3]) that since the action was for misleading conduct and passing off, and not for the enforcement of a trade mark, the central consideration was the prevention of deception, not mere confusion as to trade origin. His Honour also noted that not all of the appellants' reputation in the use of the name and logo involved taking advantage of the respondent's reputation in Australia; some of the appellants' reputation 'was the product of the development of its own goodwill and reputation' (at [3]). Thirdly, his Honour noted that 'the primary guiding principle of the injunctive relief should be, so far as possible, the protection of the public from being misled' (at [3]).

670    In Winnebago (No 2) at [4], Allsop CJ went on to say:

There appears an underlying tension inherent in any relief. On the one hand, [the appellant] Knott has built up over 25 years or more its reputation in the name and marks; on the other hand, to a degree, there has been a taking advantage of the respondent's reputation and goodwill that spilled over from overseas to Australia. The main judgment recognised a need to avoid injustice to Knott by relief that denied the legitimacy of the building of its own reputation. That said, the protection of the public and of the respondent's trade reputation requires orders to be made that will prevent any continuation of the capacity of Knott to mislead those people in Australia who have a familiarity with the respondent's reputation and who are likely to be misled by the use of the name and logo. Thus, the apparent underlying tension is resolved by keeping firmly in mind, at all times, these guiding considerations.

671    The case of Turner v General Motors Australia Pty Ltd (1929) 42 CLR 352 cited by Allsop CJ in Winnebago (No 1) is also instructive. There, it was found that the appellant had fraudulently traded on the reputation of the respondent (a subsidiary of the American General Motors Corporation). But the respondent, despite knowing of the appellant's actions, abstained from taking action 'for a considerable time' (at 366 ( Isaacs J)). It appears that the respondent thought or hoped that the appellant's business would die out of its own accord. In fact, the delay was between June 1926, when the appellant set up a business called 'General Motor's Resale Depot' and December 1927, when the respondent commenced the proceeding (the respondent having complained to the appellant as early as July 1926). The Supreme Court of New South Wales granted an injunction preventing the appellant from using the words 'General Motor' or 'General Motors' without adding a disclaimer of association with the respondent.

672    Justice Isaacs (as he then was) quoted the passage from Lindsay Petroleum set out above and affirmed the judgment below. His Honour did so on the basis of what he called 'the balance of justice or injustice' (at 366-367). Dixon J also referred to Lindsay Petroleum (at 369), albeit in the context of Lord Blackburn quoting it in Erlanger v New Sombrero Phosphate Co (1878) 3 AC 1218 after which his Lordship added the following (at 1279):

I have looked in vain for any authority which gives a more distinct and definite rule than this; and I think, from the nature of the inquiry, it must always be a question of more or less, depending on the degree of diligence which might reasonably be required, and the degree of change which has occurred, whether the balance of justice or injustice is in favour of granting the remedy or withholding it. The determination of such a question must largely depend on the turn of mind of those who have to decide, and must therefore be subject to uncertainty; but that, I think, is inherent in the nature of the inquiry.

673    In Turner, Dixon J applied these words to reject a complete defence of laches and acquiescence, in view of the intentional nature of the appellant's conduct. His Honour upheld the conditional nature of the injunction (with a change to the wording that was proposed by Knox CJ).

674    Harcourts is another example of a case where the effect of delay on injunctive relief was an issue. There, due to miscommunication between staff members of the successful applicant, the applicant delayed taking action for some four years. Justice McKerracher did not consider that this disqualified the applicant from obtaining an injunction preventing the respondent from using the contested name.

675    But there were material differences between Harcourts and the present case. In that case, the applicant had sent five letters of demand immediately on learning of the respondent's use of the name. That led to a finding that the relevant officer of the respondent 'took a calculated risk in the face of Harcourts WA's assertion of rights' (at [44]). Also, McKerracher J considered that in the circumstances of the case, if the respondent were required to use words disassociating itself from the applicant, that may itself cause confusion, since the parties by then had different names, and words of disassociation may (at [48]):

more importantly, be interpreted as being disparaging of Harcourts more broadly. An injunction permitting use of the trade name or mark provided it is coupled with words of disassociation has been refused where it can be regarded as being a way in which the infringer inappropriately distances itself from the innocent party: Bridge Stockbrokers Ltd v Bridges (1984) 4 FCR 460 (at 469 and 472).

676    The relevant reasoning in that latter case is best understood from the following passage from the judgment of Lockhart J in Bridge Stockbrokers Ltd v Bridges (1984) 4 FCR 460 at 472 who, after referring to Turner said (at 472):

The imposition upon a defendant of the requirement that it disclaim connection with the plaintiff or its business is not a course that has been generally followed in recent times. It may be appropriate in a case such as the General Motors case where a small and recently established organization was required to distinguish its business from that of a large international organization whose name was a household word. But where two organizations are engaged in the same industry, and neither of them is a commercial giant, it may be counter productive to require the newcomer to expressly disassociate himself from the business of the older established enterprise. It may suggest that there is something disreputable or undesirable about the firm from whose business the newcomer is seeking to distinguish himself. Also courts cannot control the way in which people other than the parties will refer to the company, so that the extent to which a disclaimer would serve any useful purpose is, I think open to serious question. I would, therefore, vary the orders of the trial judge to the extent necessary to remove the disclaimer.

677    However that was not a case involving delay, and these concerns did not trouble the Full Court more recently in Winnebago (No 1).

Knowledge

678    Senior counsel for JDS submitted that, in order for any delay by JDS to defeat its claim for injunctive relief, it was necessary for JAS to establish actual knowledge of its activities on the part of JDS although, as I have said, in response to questioning he seemed to accept that this was not an invariable requirement. In any event, senior counsel did not cite any authority in support of his primary proposition.

679    As to the respondents, their senior counsel appeared to submit (in passing) that delay could be an impediment to a grant of injunctive relief regardless of whether JDS knew of JAS's trading in Australia or not. Once again, no authority was cited.

680    There can be little doubt that JDS's actual knowledge of JAS's conduct in Australia from May 2019 is a relevant factor in determining the extent to which JDS's delay from that time should disentitle it to relief, as a matter of discretion. It does not follow, however, that a lack of actual knowledge before that time means that the longer delay is to be disregarded. The following points should be borne in mind.

681    First, to take into account a period where an applicant did not have actual knowledge is consistent with the breadth of the discretion to grant a statutory injunction. It is unconstrained, save by the need to exercise it judicially in accordance with the subject matter and the scope and purpose of the statute: see [651] and [654] above.

682    Second, to the extent that the Court is considering the grant of an injunction in its equitable jurisdiction, and to the extent that the equitable jurisdiction provides helpful guidance in the exercise of the statutory one, the parameters of potential relief are also flexible. That appears clearly from the passages from Lindsay Petroleum and Erlanger quoted at [664] and [672] above. The ultimate question is 'whether the balance of justice or injustice is in favour of granting the remedy or withholding it': Erlanger at 1279.

683    Third, the observations of the Court in Winnebago (No 1) do not impose actual knowledge as an essential precondition to the exercise of the discretion against the appellants. Of course, that was not an issue; by the time of the appeal it was not in dispute that the appellants had actual knowledge of the respondent's activities for 25 years. Nevertheless, at [57] Allsop CJ focussed on the fact that the respondent 'had considerably increased the size of its business through concurrent use' and took into account '32 years of sales and conduct by Knott (25 years of which was with the knowledge of Winnebago)'. This suggests that the period before the commencement of that 25 years could still be taken into account. While later (at [67]) the Chief Justice referred to the 25 years during which the appellants had stood by 'informed of the position', it does not appear that his Honour considered that only this period was relevant to the exercise of the discretion. Similarly, at [103] Cowdroy J took into account the full 32 years.

684    Fourth, also relevant is the principle distilled in the equitable maxim that 'equity assists the diligent and not the tardy'. While it would be wrong to apply that broad maxim directly, it finds its modern expression in the operation of the equitable defences of laches and acquiescence and the analogies which equity draws to the statute of limitations: Beamer Pty Ltd v Star Lodge Supported Residential Services Pty Ltd [2005] VSC 236 at [468] (Hollingworth J).

685    Fifth, in equity, the kind and level of knowledge necessary to require diligence in this sense is not fixed. In Erlanger at 1279, Lord Blackburn observed that 'a Court of Equity requires that those who come to it to ask its active interposition to give them relief, should use due diligence, after there has been such notice or knowledge as to make it inequitable to lie by'. In Crawley v Short [2009] NSWCA 410 Young JA (Allsop P and Macfarlan JA agreeing) said (at [180]) that it was 'an unrewarding task to search for some formula as to just what degree of knowledge must exist in any particular case'.

686    Thus, in Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International BV [2024] FCAFC 152 at [23], Jackman J (Markovic and Rofe JJ agreeing) put it this way:

[O]rdinarily (but not invariably) there must be knowledge of the facts giving rise to the remedy to constitute a defence of laches, but … the kind of knowledge which is necessary is that which would make it inequitable for the plaintiff now to assert the claim, and it depends on the facts of the particular case as to the level of knowledge which might give rise to inequity. A similar point was made by Young JA (with whom Allsop P and Macfarlan JA agreed) in Crawley v Short [2009] NSWCA 410; (2009) 262 ALR 654 at [180]. As FKP submits, in Twigg v Twigg [2022] NSWCA 68; (2022) 402 ALR 119 at [86], Brereton JA (with whom Bell CJ and Payne JA agreed) said that for laches to bar an equitable claim, the plaintiff must first possess sufficient knowledge of the facts constituting the title to relief. The use of the adjective 'sufficient' leaves open the requisite degree of knowledge, which in my view is to be determined in the circumstances of the particular case.

687    In light of these matters, I do not accept that it is necessary to find that, at any given time, JDS had actual knowledge that JAS was selling to Australian customers in order for it to be open to the Court to decide, in its discretion, that JDS's delay from that time warrants the denial of injunctive relief. Whether it is unjust or inequitable to grant an injunction in favour of JDS depends on all the relevant circumstances. Those circumstances include here the fact that JAS had been using the name 'Jackson's' to sell art supplies in Australia since at least 2005, and that it had been doing so openly and in a manner that could have been discovered by spending a few minutes searching the web. I will have more to say about that when I come to exercise the discretion below.

Matters to be taken into account

688    In that context I turn to the question of what JDS knew about JAS's activities, and when.

JDS's awareness of JAS's trading in Australia

689    The respondents plead that JDS has been aware of JAS's business in Australia and the JAS Website since 2010, alternatively 2015, alternatively 2019. And yet it did not object to JAS's conduct or take action or seek redress until 2022.

690    JDS's awareness of those matters since 2010 is said to have been based on the controversial email Mr Thompson is said to have sent to Mr Boercamp in that year, already mentioned in Section II above. The date of 2015 is based on Mr Boercamp's admitted registration of the Contested Domains in that year, which according to JAS bespeaks awareness of its business in Australia. I have already canvassed the evidence on that point in Section IX above. The date of 2019 is based on evidence in Boercamp II.

691    JDS joins issue with this in its reply but does not plead specifically to these allegations of fact.

Mr Boercamp's evidence about his awareness of JAS

692    In Boercamp II, Mr Boercamp gives evidence about his awareness of JAS. He says that he first became aware of JAS in the early 2000s, when Kevin Jackson mentioned to him that there was an art supply business in the United Kingdom using the name 'Jacksons'. However, according to Mr Boercamp, 'I was not aware that JAS was targeting the Australian market': Boercamp II para 8.

693    Mr Boercamp's evidence is that he first became aware of that in 2019. Upon returning to work in May 2019 after contracting a severe illness in January 2019, Mr Boercamp was told by staff members that they had received complaints from customers concerning JAS's business. It was then, according to Mr Boercamp, that he visited the JAS Website and he found the JAS AU Site which 'recognised that I was visiting the website from Australia and had pricing in Australian dollars': Boercamp II para 11. On Mr Boercamp's evidence, that was when he first became aware 'that JAS was targeting Australian consumers by offering to supply products to them in Australian dollars': Boercamp II para 11. There was, however, 'no indication on the JAS Website at the time that JAS had an Australian warehouse or physical presence': Boercamp II para 11.

694    Senior counsel for JAS criticised this evidence in opening submissions, on the basis that the term 'targeting' has no currency in the law concerning misleading or deceptive conduct, and it appeared to be a colourable word more suitable to advocacy than to evidence. In cross-examination, Mr Boercamp clarified the effect of this evidence by saying that before 2019, he had heard of JAS 'but had no knowledge of them selling into Australia' (ts 117). He later confirmed that by 'targeting' he meant 'offering product for sale to Australian consumers using Australian dollars' (ts 118). He confirmed that he had no knowledge of JAS doing that before 2019. He had not visited the JAS Website before then because 'I had no reason to visit it before' (ts 117).

695    Also in cross-examination, Mr Boercamp said that while he performed Google searches of 'Jackson's Drawing Supplies' before May 2019, he did not notice JAS in the search results. Nor did he conduct any Google search for JAS before May 2019.

The alleged email exchange between Mr Thompson and Mr Boercamp in 2010

696    One of the most controversial areas of the evidence concerned the email exchange which, according to Mr Thompson, he had with Mr Boercamp in 2010. If it did take place as Mr Thompson said it did, it would indicate that Mr Boercamp was aware of at least the possibility that consumers were confusing JAS and JDS from that earlier time.

697    Mr Thompson's evidence in his affidavit dated 3 October 2023 (Thompson I) was that in about 2010 he became aware that JAS had received some emails asking whether it had shops in Perth. His evidence was that he undertook investigations into JDS and became aware that Mr Boercamp had purchased it and was its director.

698    According to Mr Thompson, in mid to late 2010 he emailed Mr Boercamp from his JAS email account. The email was to the effect that he acknowledged that some customers had contacted JDS to enquire whether it had stores in Perth 'as they were unsure if we were the same as JDS' (Thompson I para 50(a)) and he asked whether there was a way that JAS and JDS could work together. Mr Thompson recalls obtaining Mr Boercamp's email address 'from the domain name registry' but cannot remember what address was used to contact him (Thompson I para 51).

699    Mr Thompson's evidence is that he received a response from Mr Boercamp asking him what he had in mind in regard to working together. According to Mr Thompson, he replied with the suggestion that JDS might stock JAS's range of 'Jackson's' branded paints.

700    Mr Thompson does not recall receiving a response to that email, and he took no further action.

701    Despite that evidence, Mr Thompson has not been able to locate any copies of the emails from 2010 which he describes. His evidence was that he has had four computers since then and, although his emails were saved in Microsoft Outlook .pst files, they became corrupted and no emails from before 2017 can be recovered. This has been confirmed by advice from a data recovery firm.

702    In cross-examination Mr Thompson accepted, inevitably, that he had sent and received at least thousands of emails between 2000 and 2017, but he did not accept the suggestion that he had misremembered the email exchange just described. His evidence in that regard was, however, qualified to the effect that it was what he thought and what he believed. He also, appropriately, accepted that he could not recall the precise wording of the email.

703    Mr Thompson was not able to support the evidence by reference to any other objectively verifiable fact or circumstance, other than certain discussions that he had more recently with Mr Venus. But these occurred after the litigation commenced, and I place no weight on the evidence about them.

704    Mr Venus also gave evidence about the alleged email exchange of 2010. It was to the effect that in 2010, he and Mr Thompson had a conversation in which Mr Thompson indicated that JDS's ownership had changed and asked whether Mr Venus thought that it 'might be an opportunity for him to reach out to them to ask if they wanted to collaborate in some way' (Affidavit of Michael affirmed on 27 September 2023 (Venus) para 12). Mr Venus agreed that it would be.

705    Mr Venus further recalls Mr Thompson later informing him that he had emailed Mr Boercamp, and had received a response. Mr Thomson further informed Mr Boercamp that 'the email exchange had been friendly and was about how the two businesses could co-operate' (Venus para 13). But later, Mr Thompson told Mr Venus that he had received no further response after the initial exchange of emails. Mr Venus does not recall exactly when this occurred.

706    Mr Venus was cross-examined at some length about the alleged email exchange, but it is not necessary to describe that cross-examination in any detail. In sum, it was put to Mr Venus that he could not remember a conversation about emails that, at the time of trial, had taken place 14 years ago. Mr Venus accepted that he could not recall the detail of the conversation, but maintained that he did recall the substance of it, as set out in his affidavit.

707    Mr Boercamp's affidavit evidence about these alleged emails was (Boercamp I para 16), 'I do not recall ever receiving any email from Mr Thompson, either in the terms described by Mr Thompson or at all'. He has conducted a search of his email inbox and JDS's business records and has not located any email from Mr Thompson.

708    In cross-examination, however, the evidence became ambiguous. The relevant passage was as follows (ts 121):

When you say you don't recall, it's possible that you did, but you don't recall receiving it?---No, I confirm I did not receive it.

Well, why don't you say in your evidence that you don't recall, and now you say you affirmatively did not receive it? What's the truth?---I thought they were exactly the same wording.

No?---Sorry. I can't recall ever receiving. I've since checked, and I confirm I've never received an email.

You don't give that evidence. You've not sought to correct the evidence in [paragraph] 16 to state that you've now checked and found that you haven't received it---I don't ever recall receiving such an email.

That means you might have received it. You don't recall receiving it?---No.

When you say 'no', do you mean my proposition is incorrect?---I don't ever remember receiving such an email.

So, no, but you could have received it?---I doubt that very much.

Why? You just don't recall it. How do you have a recall of likely not receiving it when you can't recall whether you received it or not?---Sorry. I think I've got a very good memory for those. In 2010, I would have very clearly remembered receiving such an email. 2010 was a very important date in - - -

Mr Boercamp, here's the chance for you to give accurate evidence about this email and the evidence you give to his Honour in writing is 'I do not recall ever receiving any email'.

709    Then after an objection, Mr Boercamp continued as follows (ts 122):

In 2010 basically were very critical times for me. I purchased the - was negotiating with Kevin Jackson in private early 2010 to buy the company. Basically we undertook an independent valuation to find out who was in the market, who was doing things. I was negotiating fair and reasonable price. If after 2010, Mr Thompson - the letter had come to me saying he was trading, that certainly would have undervalued the amount of money I would have paid for the company. That would have raised a red flag to me and go, 'Wow, what did I just buy'.

Mr Boercamp, you don't choose to give that evidence in the context of paragraph 16. Your best evidence, I assume, you've given in writing, is you don't recall ever receiving an email?---I agree, I don't ever recall.

710    In the end, the respondents' submission about all this rose no higher than to say that 'the evidence suggests that there was communication as alleged by JAS' (RCS para 46). It submitted that Mr Thompson's and Mr Venus's evidence should be preferred to that of Mr Boercamp, drawing what is submitted was a contrast between the relative constancy of the evidence of the JAS directors under cross-examination and the changeability of Mr Boercamp's. The respondents submit that it is very likely that an email was sent in 2010 which drew Mr Boercamp's attention to some confusion occurring, and he chose to do nothing about it.

711    I do not accept that submission. I have said that I consider that each of Mr Thompson, Mr Venus and Mr Boercamp gave their evidence honestly. But the fallibility of human memory is such that, 14 years later, and in the absence of any documentary record, it is impossible to have any confidence that an email was sent to Mr Boercamp that alerted him that consumers were confusing JAS and JDS. Any confidence that I might have had in the accuracy of Mr Thompson's recollection is eroded by the fact that Mr Venus's recollection does not include the crucial point about confusion.

712    I am, however, prepared to put some weight on Mr Boercamp's evidence to the effect that, so soon after buying JDS, he would have recalled it had a person, trading in Australia under the 'Jackson's' name, told him that customers had been confused. That has the ring of truth. It is much more likely that Mr Boercamp would have recalled such an email, given its significance to an event of great importance to him - his purchase of JDS - than it is that Mr Thompson would accurately recall a communication which, in a business sense, led nowhere.

713    I place no importance on the inconsistencies in Mr Boercamp's evidence on the point which emerged in cross-examination. It is commonplace for non-lawyers to fail to appreciate the distinction between not recalling an event, and knowing that the event did not occur. Mr Boercamp's wavering on the point reflects nothing more than the pressure of being under cross-examination on a distinction that lay persons often find to be obscure.

714    In the result, I place no weight on Mr Thompson's evidence about the content of the alleged email exchange in 2010, and will take no further account of it.

Mr Boercamp's registration of domain names

715    There is, finally, the evidence about Mr Boercamp's registration of various domain names, and the institution of redirects from those domains to the JDS Website, which is described in Section IX above.

716    The first point that can be made in relation to this evidence is that in 2015, a time when Mr Boercamp says he was unaware that JAS was 'targeting' Australian consumers, he registered several domain names that included the words 'art' and 'supplies'. This is said to be because he was advised by the domain name vendor Melbourne IT to acquire domain names that were similar to that of the JDS Website or that people may use when thinking of JDS. Mr Boercamp says that he knew that people referred to JDS as 'Jacksons Art' (recalling that this evidence was admitted solely in relation to Mr Boercamp's state of mind).

717    There is no reason to disbelieve Mr Boercamp's evidence in this regard. In 2015, he registered names that also included the words 'drawing' and 'supplies', which appear in JDS's actual trading name. That is consistent with his evidence as to why he registered all the domains. And although in Section IV above I have found that consumers and others only referred to JDS as 'Jacksons Art Supplies' or similar by mistake, it was a mistake that did happen from time to time, so that Mr Boercamp could well have been motivated to register domain names including those words for the reasons he gives.

718    Further, Mr Boercamp said that Melbourne IT advised him that new 'sub-domains' with suffixes like .supply and .supplies had become available, and consistently with that some of the domains registered had such suffixes: see [586]-[587]. Similarly, there is no reason to disbelieve Mr Boercamp's evidence that the domains he registered had redirects to the JDS Website because he had been advised that the websites needed to be active. I accept Mr Boercamp's evidence about all of these things.

719    As for knowledge of JAS, Mr Boercamp's evidence was that before May 2019, he knew that there was a business in the United Kingdom trading as 'Jackson's Art', but he had no knowledge of them trading in Australia. When it was put to him that he could easily have found that out to avoid risk in relation to that, he did not demur from that proposition, but only said (without explanation) that he did not think he needed to at the time: see [595] above. His evidence was also that, even when, in 2015 he found that the domain name jacksonsart.com was not available, he did not look it up on Google.

720    That last point is the respondents' strongest point about Mr Boercamp's evidence in relation to these matters. It is surprising that a business person in the 21st century would be so passive and incurious as not to investigate further, even when alerted to the possible existence of a competitor who might be trading online. Mr Boercamp's only explanation was that he registered a lot of other domain names at the time: see [599].

721    However as surprising as it may seem when viewed from the current perspective, I am not persuaded that Mr Boercamp was lying under oath. I have already explained that I formed the impression that Mr Boercamp was relatively uninterested in the internet and commerce on it, at least in 2015. His earlier evidence about Melbourne IT, which I have accepted, indicates that he was passively following advice, and was not taking an active part in determining anything that could be viewed as an internet strategy. It is therefore plausible that in 2015, when told that a number of domains were available, but that one was not, he passed the latter point over. It is no more surprising than the proposition that the respondents effectively put: that in 2015, Mr Boercamp was aware that JAS was selling art supplies to Australian consumers under the names 'Jackson's' and 'Jackson's Art' and yet did not look into it for another seven years.

722    As for JDS's essentially unexplained omission to call Ms Burstein or any other staff member with specific knowledge of these matters, I accept that it gives rise to a Jones v Dunkel inference that the evidence of those persons would not have assisted JDS. But it does not follow that the evidence of those persons would have contradicted Mr Boercamp's - for all the Court knows, they might have been as unversed in contemporary e-commerce as Mr Boercamp appeared to be.

723    Nevertheless, JDS's omission to call such witnesses makes me more willing than I would otherwise be to accept an inference that Mr Boercamp did know that JAS was selling to Australian consumers in 2015: see e.g. Jones v Dunkel at 308 per Kitto J. But even so I do not make an such inference. Mr Boercamp's evidence is plausible for the reasons I have given and, having had the benefit of observing him give that evidence, he struck me as an honest witness. I am not persuaded that he was doing anything other than telling the truth under oath.

Findings about the extent of JDS's knowledge of JAS's activities

724    On the basis of the above, I find that shortly before May 2019, it came to the attention of JDS employees that Australian consumers were dealing with an online art supply business called 'Jackson's' or 'Jackson's Art' and, at least, confusing it with JDS. I note that this is broadly consistent with the consumer confusion evidence that is canvassed in Appendix 4, the first instance of which dates from July 2019. If either party's discovery showed that JDS became aware of that confusion at an earlier time, it could be expected that would have been put before the Court.

725    Those staff members brought the confusion to Mr Boercamp's attention in May 2019, on his return to work from illness. It was at that time that he, and so JDS, gained actual knowledge that JAS was offering and selling art supplies to Australian consumers under the JAS Names. With respect it is not helpful in this context to adopt characterisations used by Mr Boercamp and counsel for JDS, that it was not known that JAS was 'targeting Australian consumers' or operating 'an Australian consumer facing website'.

726    In any event my findings about JAS's presence on the web and its sales and reputation in Australia also indicate that, before May 2019, it was no secret that JAS was selling art supplies to Australian consumers. JDS could readily have discovered that with a simple web search. Had it done such a search at any time after 2005, it could have easily discovered that JAS shipped to Australia, and any time after 2013 it could have easily discovered that JAS was offering sales in Australian dollars. From October 2018, JDS would have been confronted with the AU Pop Up.

727    Viewed in that light, the criticisms implicit in the following passage from Mr Boercamp's cross-examination are, with respect, well made (ts 127):

Mr Boercamp, have you failed - in accepting for a moment the proposition that you didn't check, do you accept that you've failed to properly protect your interests by seeking to check the potential conflict that might occur with another business with the name Jackson's Art Supplies - - -?---No.

- - - in registering Jacksonsartsupplies.com?---At the time, no.

You're running a business trading in the millions of dollars by this time in 2015?---Correct.

There are no other Jackson's companies that are in the competitive market against you in Australia, are there?---In Australia, no.

You know there's one in the UK. You know there's a company called Jackson's Art in the UK?---No. I know of the company that was calling itself Jackson's.

You don't even accept that you know it to be called Jackson's Art UK?---I was not aware at the time. I knew it was called Jackson's.

And it didn't occur to you to go and look to see what jacksonsart.com was doing to work out this strategy that you're implementing about registering as many domains as you could?---No.

Whether the lapse of time should disentitle JDS to injunctive relief

When did JDS take action

728    Mr Boercamp's evidence was that in around May 2022, he became aware that JAS and companies operating as 'Jacksons Art' had established a physical presence in Australia through the warehouse in Adelaide. That is essentially at the same time at which JAA's operations did commence, so I accept that evidence.

729    Lawyers acting on behalf of JDS sent JAS and other respondents a letter of demand on 1 June 2022. It was addressed to JAA, JAS and JAH. It alleged that by acting under the names 'Jacksons Art', 'Jacksons Art Australia' and/or 'Jacksons Art Supplies', the addressees had breached s 18 and s 29 of the ACL. It also alleged that they had committed the tort of passing off. The letter threatened proceedings seeking injunctive relief if the recipients did not immediately cease to use those names. It appeared to seek some sort of written undertaking within seven days of the date of the letter. No response from the recipients of the letter is in evidence.

730    In cross-examination, Mr Boercamp gave the following explanation for the lapse of time between May 2019 and the sending of that letter (ts 120):

There were certain dates and things that occurred in between. Obviously COVID occurred in early 2000, which changed our priority on what we needed to do. In 2022, they registered a business name and actually started operating. That's when we became alarmingly concerned about what they were doing in regard to it.

731    This proceeding was commenced on 9 December 2022.

The parties' submissions about delay

732    As has been explained the respondents rely on the delay as a discretionary reason to refuse relief. Their primary submission is that the delay should be counted from 2010, alternatively 2015. I have found that it has not been established that JDS had actual knowledge that JAS was selling art products to Australian consumers under the JAS Names at those times. But the respondents submit that the delay should disqualify JDS from relief, even if the delay is timed from May 2019, when JDS admits that it had actual knowledge of those matters.

733    The respondents submit that it is problematic that JDS has sued as late as it has, while JAS has continued to grow its reputation and trade in Australia including, most significantly, from 2018 on. I have made relevant findings about that reputation, including sales from 2018 to 2022, at [300]-[301] above. The respondents accept that in consumer protection cases such as the present, delay can last for quite a long time and delay, per se, is not a complete answer to the case. But they submit it still goes to the Court's discretion in the circumstances of this particular case. They also submit that JDS has been sleeping on its rights in a way that constitutes a form of laches and acquiescence.

734    Putting those submissions together, I understand the respondents to be saying, in effect, that while laches or acquiescence are not a complete defence to the claim (as they might be if it were purely equitable), the fact that JDS did nothing to oppose JAS and then also JAA operating in Australia for several years is a reason why, in the exercise of its discretion, the Court should not grant any injunction restraining them from trading in Australia or requiring them to modify the JAS AU Site in any way.

735    This overlaps significantly with submissions by the respondents about what they describe as the parties' side-by-side trading for many years during which JDS had done nothing. They appear to submit that this is an impediment to a grant of injunctive relief, regardless of whether JDS knew of JAS's trading in Australia or not. The respondents refer to it as 'permissible side-by-side conduct (including trade in WA and NT) selling art supplies under the "Jackson" name under AUD' (RCS p 2 para 7). They rely on JAS's unimpugned trading for many years in Australian dollars. This, they say, is compounded by JDS having done nothing about JAS until 2022, despite having known about JAS since 2019 (on its own case) and likely much earlier. It is further compounded, JAS says, by JDS's own misleading conduct in directing potential customers of JAS to its website.

736    JDS submits that the public interest in preventing consumers from being misled should be at the forefront of the Court's consideration, and relies on Winnebago (No 1) in that regard. It notes that injunctive relief was granted in that case even though the respondent's delay was both extraordinary and informed for 25 years.

737    JDS further points out that JAS and JAA have not been encouraged to believe that their conduct from late 2018 onwards and then from mid-2022 onwards was accepted by JDS. No witness on behalf of the respondents gave evidence to that effect.

738    As for the lapse of time between May 2019 and mid-2022 when the letter of demand was sent, JDS submits that this does not justify the refusal of injunctive relief. It was well within the six-year limitation period, JAS and JAA's conduct 'expanded' in mid-2022 with the establishment of JAA's operations out of the Adelaide facilities, and account should be taken of the turmoil and distraction of the COVID-19 pandemic.

739    I accept that the COVID-19 pandemic is likely to have distracted JDS from matters such as its concerns about JAS for a time. No doubt the increase in demand for JDS's products that it caused kept JDS busy, and the pandemic itself was distracting for everyone. But this is far from a complete explanation for the delay. For one thing, over six months passed between May 2019 and when the pandemic commenced. For another, it is notorious that in Western Australia, where JDS is headquartered, the relative success of quarantine measures kept disruptive lockdowns to a minimum. Some 2½ years elapsed between the commencement of the pandemic and the sending of the letter of demand. Some three years elapsed until the proceeding was commenced. The delay of 3½ years between May 2019 and December 2022 has not been adequately explained.

The changes in the respondents' conduct in 2018 and 2022

740    In connection with the question of relief, senior counsel for JDS submitted in relation to the configuration of JDS's website before October 2018, including the option to buy in Australian dollars (ts 402):

But, your Honour, we don't consider that conduct to amount to a representation. I mean, there's a drop-, there's a whole drop-, it's a UK website with a UK default currency, and if one actually finds it and presses on it, there's about 10 different currencies there. How on earth is that conveying messages to the Australian consumers, that Mr Thompson accepted he is conveying in relation to the Australian online store, which has a whole lot of things, your Honour, which that website's not - that's a UK website. It's not an Australian website; it's not focused to Australian consumers; it's not focused to Norwegian consumers, either, or Canadian consumers. It's a UK website.

741    He thus appeared to submit that it would not be misleading or deceptive if JAS were to continue to sell art products to consumers in Australia via its main website (the JAS Website as distinct from the subdirectory that is the JAS AU Site), with its drop down currency selection but, presumably, dispatch of goods from the United Kingdom and not from an Australian warehouse, that would not be misleading or deceptive.

742    According to senior counsel for JDS, although there had been an option to select Australian dollars before October 2018, this was simply one among many currencies offered via an inconspicuous drop down menu on the JAS Website, so that the site was not 'targeting Australian consumers' and was not 'an Australian consumer facing website' (ts 18). Senior counsel for JDS made it clear that his client does not complain about that conduct and submitted that it 'is not a continuation of the pre-October 2018 conduct' (ts 22) It would be fair to say that he would not commit to saying whether the conduct before that time was misleading at all; he said (ts 381), 'If it was misleading before 2018, then of course it's nowhere near as misleading as the conduct which commenced and continued as at October 2018, when the Australian consumer opened, for the first time, the Australian online store with Jackson's'. JDS submits that even if JAS had a reputation in Australia before October 2018, that would not prevent consumers from being misled or deceived because the conduct from that time was different.

743    Senior counsel for JDS thus embraced as his client's submission that JAS's conduct became qualitatively different in 2018, such that whatever the conduct was before that time, it is not a good discretionary reason to deny JDS relief. According to JDS, even if it is established that Mr Boercamp knew that JAS was making sales to Australian consumers before May 2019, this does not matter, because JAS's conduct changed materially in October 2018 when the AU Pop Up and the JAS AU Site came into effect.

744    The respondents criticise JDS's case as seeking to identify a 'line' that was crossed in 2018 and criticises this line as 'an artifice constructed for the litigation (RCS para 3). They attack what they say is the artificiality of the way that JDS has constructed its case, so as to present JAS's conduct from October 2018 onwards as qualitatively different to its conduct beforehand.

745    The respondents submit that a drop down currency menu allowing the selection of AUD was available from 2013 to 2018, so nothing of material difference happened in 2018. They say that this has amounted to using a tailored website for Australian users since 2013, and that this conduct 'has been at the heart of JAS trading with Australian consumers, including in Western Australia and the Northern Territory, for in excess of 10 years' (RCS para 6).

746    The respondents submit that the changes to JAS's conduct in 2018 made no material difference to what consumers perceived. JAS had been trading in Australia for at least 13 years at that point (this appears to date from the first sales records in evidence, from 2005, which as has been explained may not in fact reflect the first sales). For five years it had been offering Australian dollars as a currency. So Australian consumers were able to buy from JAS well before October 2018. In opening senior counsel for the respondents emphasised that when the Australian dollars option was chosen, it stayed as the default currency for the user on subsequent visits.

747    Similarly, senior counsel for the respondents submitted that nothing material changed in mid-2022. Both before and after the references to the Australian operations were added to the JAS AU Site, the site was presenting JAS as a United Kingdom London based company offering product to Australia, albeit now also giving an address in Adelaide.

Other discretionary factors

JAS's state of mind

748    JDS further submitted that JAS's own conduct and state of mind during the period of the alleged delay are relevant to the exercise of the discretion. According to JDS, the cross-examination of Mr Thompson showed that he, and therefore JAS, adopted a 'flippant' attitude to the misleading of Australian consumers.

749    That criticism was based in particular on the following passage from Mr Thompson's cross-examination, after examples of the consumer confusion evidence canvassed in Appendix 4 were put to him (ts 201-202):

Now, it's the case, isn't it, that … as at mid-2022, you had not investigated, or caused to be investigated, the extent of the emails and messages that Jackson's UK had received through its Australian online storefront, which contained instances of apparent confusion with Jacksons Australia?---I was happy that the customer service team were dealing with them appropriately.

Was that a serious answer, after the emails that I've just shown you?---Yes.

So your answer to his Honour is you're happy with the fact that the Australian - your customer service team didn't even tell you about those examples. Were you happy with that?---Why would they give me every - you know, come to me with every case of a confusion?

Do you - - -?---As I say, there's 3000 emails. I couldn't - no one is going to bring every customer service email to me.

So is your evidence to his Honour that you think it's a satisfactory state of affairs that you weren't - those emails weren't drawn to your attention? Is that your evidence to his Honour?---I'm made aware of things in general. The customer service team knew that I was aware of the occasional emails coming through. And looking at those, I think they dealt with them fairly.

Do you think those instances were - confusion were perfectly acceptable, do you?---It's unfortunate.

Now, before you incorporated JAA and decided to have a warehouse in Australia, wouldn't it have been sensible to investigate the extent to which Jackson's UK Australian online store have been causing confusion amongst Australian consumers?---I don't think opening in Adelaide would cause any - yes, how can I put it? In answers to your question, no, I don't think so. I don't think it would have changed the way we did things.

So, you thought it was perfectly acceptable to turn a blind eye to whether or not that was happening in the context of you setting up the Australian warehouse?---I wouldn't say I've turned a blind eye to it. I believe our brand is very different toJackson's Drawing Supplies. And yes, there are some people that get confused, but not very many.

750    I do not accept that this shows a flippant or cavalier approach on Mr Thompson's part to the prospect of Australian consumers being misled. It simply shows a realistic appreciation of the limited extent to which every instance of confusion known to JAS's customer service team would need to be elevated to the attention of the Executive Director. Mr Thompson's reference to 3,000 emails is a reference to 3,000 emails per month being received by that team, and he was entitled to leave it to that team to deal with the very small percentage of those emails that may have evinced confusion or error in relation to JDS on the part of those consumers.

751    JDS also relies on instances of what it said was JAS staff not clarifying confusion. JDS observes that after these instances were put to Mr Thompson in cross examination, he said that the issue had not been 'high on everyone's agenda' at JAS: ts 196. But the instances put to Mr Thompson did not show that JAS was indifferent to customer confusion. In one, the staff member did refer the consumer to the JDS Website, albeit saying 'I wondered if this other Jacksons Art Supply store is the one you're after?' (Appendix 4 at [31]). In another instance the customer was told 'We are aware of an Australian store called Jackson's, who are in no way affiliated with us. We do state on our headers and footers that we are in London, UK and use terms like 'International post' to make this clear' (Appendix 4 at [42]). In a third instance, the JAS staff member said to the customer 'Having looked online, I can see that you have a 'Jacksons Drawing supplies' in Australia, so it's possible that you have us confused' (Appendix 4 at [16]-[19]). Another instance involved a staff member who had been asked by a customer whether they would get loyalty reward points 'when I buy in store as I have visited your Store in Balcatta Perth and done a purchase' (Appendix 4 at [27]). The staff member replied that JAS did not have a store in Balcatta but did not mention JDS.

752    There was, therefore, one isolated instance in evidence where the JAS staff member did not refer the confused customer to JDS (see Appendix 4 at [86]). That occurred on 7 June 2022, which was so soon after the letter of demand of 1 June 2022 as to mean that the staff member was unlikely to have been aware that the issue had been raised by JDS in legal correspondence, for the first time. All the other instances occurred before JDS had raised any issue with JAS.

753    In all that context, Mr Thompson's explanation that the matter was not 'high on everyone's agenda' was both honest and appropriate. He was entitled to believe that confusion was being cleared up by his staff members and for the most part, it was. There is no reason to expect that every instance of confusion were to be elevated to him. The descriptions of Mr Thompson's approach as 'flippant disregard' or 'insouciant' (another word used in JDS's submissions, ACS para 100(d)) are inapt. The criticisms made of him in JDS's submissions do not strengthen JDS's case for discretionary relief.

JDS's state of mind

754    Conversely, the respondents submitted that by the conduct that is the subject of the cross-claim, Mr Boercamp intentionally misled consumers and this is a discretionary factor against granting JDS relief. But in Section IX I have concluded that the respondents have not established that consumers were misled by JDS's conduct.

755    It only remains to say that the respondents have also not established that Mr Boercamp engaged in the conduct with the intention of misleading consumers (or while wilfully blind to the fact that they would be). It is true that in Section IV, I have found that consumers only referred to JDS as 'Jackson's' or 'Jackson's Art Supplies' in error; it did not mean that JDS had a reputation for trading under those names. But the fact that consumers did occasionally make that error provides a reasonable explanation for why Mr Boercamp sought to register the Contested Domains, at least before mid-2022 when, on his own evidence, he became concerned about the respondents trading in Australia: see [589] above. As for his state of mind after that time, there is no reason on the evidence why the Court would not accept that, as he said, he was concerned to ensure that JAS did not acquire the domain names: see [593] above.

756    The respondents made it clear that their primary submission was that Mr Boercamp's conduct was engaged in with an intention to mislead in the sense meant in Australian Woollen Mills Limited v F. S. Walton and Co Limited (1937) 58 CLR 641. By that, presumably, they meant that Mr Boercamp engaged in the conduct with the intention of appropriating part of their trade or reputation: see at 657. They have not established that. Mr Boercamp's state of mind when he engaged in the conduct that is the subject of the cross-claim does not provide any reason to exercise the discretion to grant injunctive relief against JDS.

The form and utility of relief

757    The wording of the injunctions sought by JDS is set out at the beginning of this Section X. JDS seeks an injunction that will prevent the respondents from offering or selling art supply products under the JAS Names in conjunction with a website that has the Australian characteristics or refers to the Australian operations. Further, it seeks to restrain the respondents from selling art products under those names in conjunction with an Australian physical presence; such as a warehouse or distribution facility or in conjunction with an Australian telephone number. In addition, it seeks an injunction prohibiting the respondents from making the Representations in Australia.

758    Senior counsel for the respondents made detailed criticisms of the form of this relief in oral opening. He pointed out that on JDS's case, it does not complain of JAS's conduct before October 2018, that is, the conduct of using a website to sell art products under the JAS Names. If that conduct is not impugned, it would be necessary to limit any injunction so that it did not prohibit that conduct.

759    The respondents also made a submission which I understood to be to the effect that the injunctions sought would have no utility. Senior counsel submitted that if JAS were to comply with them by removing the JAS AU Site from the internet, and no longer shipping from Adelaide, it would remain free to sell art products online in Australia using the JAS Names. 'Where's that going to get anybody?', he asked rhetorically (ts 332). According to the respondents, JDS faces a problem having accepted that JAS's pre-2018 conduct, including with offering purchases in Australian dollars, was not unlawful. For JDS now seeks the shutting down of conduct that is on the periphery of what the respondents call 'the dominant conduct - selling under the Jacksons name to Australian customers in AUD': RCS p 12 para 47. If that 'dominant conduct' is acceptable then it must be outside the scope of any injunction that is to be ordered.

760    In that regard, the respondents relied on JDS's consumer confusion evidence to this extent: none of it shows that any of the particular aspects of JAS's conduct now complained of was the cause of any confusion or error. So it was not a subdomain with the Australian characteristics that caused consumers to mistake JAS for JDS, and it was not a warehouse and contact details in Adelaide. The discussion of the evidence in Appendix 4 bears this out. So according to the respondents, any problem arises from the similarity in names. Their senior counsel submitted that from the point of view of consumer protection, it would not be meaningful to enjoin the other peripheral aspects of JAS's conduct.

761    Senior counsel for the respondents also criticised specific aspects of the injunctive relief sought. It seeks to prohibit a website with 'content specific to Australian users' (ts 61). That is difficult to define. It would also be unusual to prohibit the use of an Australian warehouse or distribution facility, which would be to limit operations that are in the background from the consumer-facing aspects of the respondents' business. And the 'physical presence' to be prohibited is also ambiguous. Senior counsel queried, for example, whether that would prohibit JAS from having a stall at an art fair in Australia. He also criticised the idea that JAS could be prohibited from operating an Australian telephone number. And to prohibit conduct 'otherwise targeted at Australian consumers' is broad and vague (ts 62). It seemed, then, that JDS wanted the Court to direct JAS to return to the form of website that was operating over six years ago. He submitted that the Court was being 'invited to, as it were, craft the way in which we're to market ourselves' (ts 61).

762    Senior counsel for JDS submitted, in contrast, that the form of relief sought gave certainty to the parties. JAS is free to trade via its main United Kingdom based website in Australia. His submission appeared to be that it was acceptable and conventional to enjoin a party from trading under contravening brand names, albeit here it was being done in connection with the operation of 'an Australian online store' and 'in relation to an Australian physical presence'.

763    JDS submits that the wording of its proposed injunction is sufficiently precise to indicate the conduct that will be prohibited. It does, however, concede that the words 'otherwise targeted at Australian consumers' can be deleted without any need to modify the balance of the injunctions (ACS para 121).

764    As for the geographical extent of the injunction, both parties submitted that it would not be appropriate to grant injunctive relief that was confined to Western Australia and the Northern Territory. JDS relied on Pham to say that the relief should be national and the Court should be very slow to carve any part of Australia out of it. The respondents agreed that any order to restrain conduct in that territory in the modern age of the internet would be unusual. But they have pointed out that JDS has not established a single sale outside its core markets. They also submitted that JAS's trading in its core markets has been as long standing as it has been everywhere else, and submitted that they should not be prevented, somehow, from continuing to trade in those areas.

765    The parties were also in agreement that a 'disclaimer', that is, requiring JAS to publish words disassociating it from JDS, would have no utility. The respondents criticised the idea on the basis of the focus of JDS's case on the conduct 'on the periphery', that is, the Australian characteristics and the references to the Australian operations on the website (RCS para 47). They submitted that there would be no utility in requiring them to say something about those matters where the use of the JAS Names could continue.

766    JDS agreed that a disclaimer would not work because, its senior counsel submitted, Australian consumers would already be caught 'in the marketing web' when they get on to the Australian online store.

Exercise of the discretion

767    On the basis of the matters above, I consider that the remedial discretion should be exercised so as to refuse injunctions in the terms sought by JDS. Rather, a more limited form of injunction should be ordered, to require JAS to use words on the JAS AU Site that will distinguish it and JAA from JDS.

768    I have reached that conclusion because JDS has delayed taking action to enforce and protect its rights in connection with the JDS Names, while JAS and JAA have expended resources to grow their Australian business, goodwill and reputation in connection with the JAS Names.

The delay

769    The length of the delay is to be measured from the time when JDS was fixed with 'sufficient knowledge' that JAS was promoting its art supplies business to Australian consumers and selling art supplies to them using the 'Jackson's' name: see Federal Treasury Enterprise at [686] above.

770    It is arguable that JDS had such knowledge well before the earliest time nominated by the respondents, namely 2010. After all, JAS's business was not conducted surreptitiously, and nor was it confined to any particular part of the world. It was being conducted by means of a website that was available to all the world. An approach to the issue that may have been suitable during the 19th or 20th century to the very different retail environment of the 21st.

771    In that environment, JDS could have investigated JAS's activities thoroughly with a simple web search, and a few minutes of browsing of the JAS Website: see [726]-[727] above. Had it conducted that simple investigation in 2010 or earlier, it would have ascertained that an art supplies business was selling to consumers in Australia (including JDS's core markets) under the name 'Jackson's'. Had it conducted it in 2013, it would have ascertained that the business was offering to sell in Australian dollars.

772    In that context, consider what Mr Boercamp did know, or should have known (see [181]-[184] and [692]-[695] above). He knew from the early 2000s that there was an art supply business in the United Kingdom called 'Jackson's'. By then, his own locally based brick-and-mortar business had been running a website for at least three years. That website had online ordering capability from 2006. There was a reasonable likelihood that the 'Jackson's' art supply business in the United Kingdom also had a website with such capability. By 2010 (at least) it was notorious that online retail businesses were selling products worldwide. It would have been easy to look into JAS's activities in that regard.

773    Against that background, in 2015 Mr Boercamp found out that the domain name jacksonsart.com was not available. But he made no attempt to investigate who held the site or whether it was active. His evidence was that he performed Google searches of 'Jacksons Drawing Supplies' before 2019; it may be inferred that he was doing so at least as early as 2015. On Mr Jones's evidence, the JAS Website was the second ranked search result for that search. And yet Mr Boercamp appears not to have noticed that another trader was turning up near the top of the search results for his own business name.

774    When it was put to Mr Boercamp that he could have easily discovered JAS's activities before May 2019, he did not demur from that, and gave no persuasive explanation of why he did not: see [719]. I have accepted that Mr Boercamp gave all this evidence honestly, and have suggested reasons why he was so incurious about the online business operations of a competitor (see [607] and [721] above). I have also set out above why actual knowledge of a competitor's activities is not an invariable pre-requisite for the denial of injunctive relief due to delay.

775    In this case, I consider that in view of the knowledge and means of knowledge that JDS did have, its conduct in not enforcing its rights can be described as a 'want of diligence or neglect' of the kind referenced in the authorities (see [672]-[686]). To give JDS the benefit of the doubt, it had sufficient knowledge for that purpose from May 2015, when Mr Boercamp discovered that the domain name jacksonsart.com was not available, but took no steps to discover who owned it or what they were doing with it.

The delay should not be measured from October 2018 or mid-2022

776    JDS's case, of course, is that it only impugns conduct from October 2018 and then from mid-2022, so that any delay should only be measured from then. In effect, its position is that the changes in conduct in 2018 and 2022 were of such significance to mean that the parties' conduct before those times is to be disregarded in the exercise of the discretion.

777    None of the parties propose a test for determining when changes in conduct would 'start the clock afresh' for the purposes of the remedial discretion. And since the Court is exercising a broad discretion, it would not be appropriate to formulate one (see Erlanger at [672] above). I also agree with senior counsel for the respondents that verbal formulations such as 'targeting Australian consumers' or running 'an Australian consumer facing website' are unhelpful. For that matter, so is the respondents' description of the JAS Website as 'a tailored web site for Australian users' (RCS para 6).

778    To the extent that any sensible discrimen for dividing the conduct into two periods was implicit in JDS's case, it is found in JDS's (qualified) assertion that JAS's conduct before October 2018 was not misleading or deceptive, but its conduct after that time was. But I do not accept that. It is understandable that the respondents did not press for any finding that their conduct before that time was misleading. But the conclusion that it was misleading is inherent in the reasons I have given in Section VI for concluding that JAS and JAA's conduct did convey the misleading Representations.

779    It was an essential and dominant aspect of JAS's conduct at all times was that it was an art products retailer with the name and prominent brand of 'Jackson's'. JDS was an art products retailer with the name and prominent brand of 'Jacksons'. The potential for this to mislead consumers is obvious. I have rejected the respondents' attempts to establish that the businesses were sufficiently distinctive in the eyes of consumers to mean that they would not be misled. So the obvious similarity in names and product lines was the dominant reason why the misleading representations were conveyed. It is unreal to suggest the contrary. It follows that the particular characteristics of the JAS AU Site introduced in 2018 and later in 2022, while relevant, are properly described as peripheral.

780    Although expressed in a different context, I take into account Goodman J's observations in Los Carnales that the question is one of substance rather than form and cannot be defined by the manner in which an applicant presents its case: see [142] above. And, while also expressed in a different context, in my view the following reasoning of Yates J in Optical 88 Limited at [333] is relevant:

If, in the present case, the applicant can establish that, as at the date of commencement of the impugned conduct (August 1993), it had a sufficient reputation to sustain its claim that the first respondent has contravened s 52 of the Trade Practices Act, it does not need to rely on any intervening strengthening of that reputation in the period before the commencement of proceedings, although any strengthening of its reputation may be a matter that is relevant to the question of relief: [Nature's Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198] at [13]. If, on the other hand, the applicant cannot establish that, as at the date of commencement of the impugned conduct, it had a sufficient reputation to sustain its claim, I cannot see how any after-acquired reputation can assist it in the face of what would otherwise have been the legitimate commencement and continued conduct of the first respondent's business.

781    This is relevant because it shows that the essence of an action of this kind is the conduct of the respondent in trading on the applicant's reputation. That is not to state a test of how s 18 of the ACL should be applied in this case. It is to identify the time at which JDS's true complaint commenced. It commenced when JDS had developed a reputation as a supplier of art products in connection with the JDS names and when JAS began trading in Australia under the similar JAS Names.

782    In JDS's core markets, those events preceded October 2018 by a long way. In the rest of the country, the JDS Google Analytics figures at [205] above show that JDS's web presence, which I have found was sufficient to establish a reputation as at 2018, was fairly constant from 2015, being the time from which figures are available. It likely preceded 2015. The other factors arising from Pham which help to establish the reputation outside JDS's core markets also likely preceded 2015. It is not possible to say by how much, and nor is it necessary. It is enough that the essential components of JDS's complaint were in place, throughout Australia, from at least 2015. The development of the JAS AU Site was peripheral to those components.

783    I appreciate that this involves a broad evaluative judgement. But when it comes to the exercise of the discretion to grant relief, that is all that is required, and all that is possible. I do not accept that only the conduct of the parties since October 2018 (or mid-2022) is relevant to that exercise.

JAS's activities during the period of the delay

784    The evidence establishes that from 2015, JAS considerably increased the size of its business through concurrent use (to adapt the words of Allsop CJ in Winnebago (No 1) at [57]). Refer to the table at [300] above. It would be fair to say that in the first 10 years in which there are sales figures, the increase was modest in absolute terms, although even then it was an increase in many orders of magnitude (from about £1,000 in 2005 to just under £63,000 in 2015). But from 2015, and even before the specifically impugned conduct commenced, significant increases were seen (from £63,000, to about £291,000 by the end of 2018). Then, the pace of increase picked up, from about £660,000 in 2019 to nearly double that number in the last full year for which figures were in evidence, 2022. If JAS were to be prevented from trading in Australia under the JAS Names, it would suffer significant detriment because the substantial goodwill and reputation that it has developed since the early 2000s would be lost.

785    I have already held that JDS has not established that a roughly corresponding increase in web traffic over those last four years was the result of the impugned conduct. Similarly, there is no basis to include that the increased sales was the result of that conduct. It is impossible to know how much is attributable to it and how much is attributable to conduct of which JDS does not complain: see [513]-[516] and [625] above. So as in Winnebago (No 1), it is difficult to disentangle the extent to which JAS has been advantaged by any misleading association with JDS.

786    It will also be recalled that JDS's reputation outside its core markets, while substantial enough to provide a context for JAS's conduct to mislead, was still not extensive: see [280]-[292] above. So it cannot be said that the greater part of JAS's building of its reputation in Australia is attributable to that association. It can be concluded that JAS built its business largely on the basis of its own efforts, and not by appropriating JDS's reputation.

It would be unjust to restrain JAS and JAA from continuing to carry on business in Australia

787    That JAS has been suffered to build its Australian business in that way from 2015 to 2022 means that it would be practically unjust to prohibit it from continuing to conduct that business under the JAS Names. The balance of justice and injustice does not favour depriving JAS of the benefits of the business it has built up in Australia over that period. That is so even though JAS was aware of JDS and, as JDS says, it did not do anything to encourage JAS to believe that it accepted its conduct. The degree of diligence reasonably required of JDS was not met; the degree of change to JAS's business over the period was significant.

Delay measured from 2019

788    I would reach the same conclusion even if the period were to be measured only from May 2019, when Mr Boercamp became aware that JAS was selling to Australian consumers in Australian dollars. The explanation he has given for doing nothing for another three years is unsatisfactory (see [693]-[695] above). The length of the delay is still significant (in Turner a delay of less than 18 months justified the grant of lesser relief). And that same period saw the greatest increase in JAS's business and reputation in Australia.