Case: AMI Australia Holdings Pty Limited v Bade Medical Institute (Aust) Pty Limited [2008] FCA 1783
Outcome: referred to
hearing was initially set down for final hearing in December 2008. An application made prior to that date by the Fourth Respondent for the vacation of those dates was rejected: AMI Australia Holdings Pty Limited v Bade Medical Institute (Aust) Pty Limited [2008] FCA 1783. But the final hearing did not in any event proceed in December 2008 because of the absence of the Fifth Respondent. She was unfit to attend because she had recently undergone dental treatment. After the vacation of the December 2008 hearing dates, the final hearing of the proceeding was listed to take place on 8 and 9 April 2009. But on those dates the hearing again did not proceed due to what was said to be a " psychological disorder " of the Fifth Respondent which rendered her " unfit for court ". So much, at least, was the assertion in what could only be described as a cursory medical certificate of a medical practitioner. No further details were provided. Indeed, the Fifth Respondent was not present in Court when the matter was called for hearing. The hearing was adjourned for a short period and she ultimately appeared later in the morning. Notwithstanding reservation as to whether the hearing should nevertheless proceed on 8 and 9 April 2009, the hearing was adjourned until 1 and 2 June 2009. The Fifth Respondent was informed that no further adjournment would be entertained unless a medical certificate was provided which set forth sufficient detail such that an informed view could be formed as to her condition and the doctor providing any such further certificate was made available for such questioning as was considered appropriate. An application was made at the outset of the hearing on 1 June 2009 by Counsel then appearing for the Third Respondent by way of a Notice of Motion filed on 29 April 2009. The substantive relief sought in that Motion was to amend the Defence as filed by the Third Respondent on 1 October 2008; in particular, to amend the Defence to withdraw an admission in relation to paragraphs [3] and [4] of the Statement of Claim , which alleges: 3. At all material times, the Third Respondent (Mr Wade) and Fourth Respondent (Dr Beaini) have been the sole directors of Bade. 4. By reason of the matters pleaded in paragraph 3 above, at all material times Mr Wade and Dr Beaini have been the controlling minds of and in positions to control and/or have controlled, Bade. The identification in paragraph [3] of the two Respondents is an obvious error &#8212; it is Dr Beaini who is the Third Respondent; Mr Wade is the Fourth Respondent. But nothing turns on that error. The amendment sought to be made to the Defence was to " not admit " paragraphs [3] and [4]. The reference to " Bade " is a reference to the First Respondent, the Bade Medical Institute. There was no dispute that Dr Beaini was a director of the Bade Medical Institute from 30 May 2006 to 10 December 2007. It is the departure from the admission that Dr Beaini was a " controlling mind " of the Bade Medical Institute that Dr Beaini sought to achieve. Affidavits relied upon in support of the Motion and filed on 29 April 2009 annex correspondence dating back to December 2008. It was at that stage that those appearing for Dr Beaini first flagged a desire to withdraw the admission. The Applicants' solicitors sought particulars in December 2008 of " the basis upon which your client wishes to now be released from his admissions ". The response to that request in April 2009 was to contend " that your request for particulars is not an appropriate request ... ". Undertaking a side by side comparison, it is concluded that the marks are not " substantially identical ". The most prominent feature of the AMI trademark is the white circular disc with the centre cut out. Attention is drawn to this image because of its position and it being set against a contrasting background. Another prominent feature of the mark is the acronym " AMI " displayed directly beneath the circular disc in bold white type. The words " Advanced Medical Institute of Australia ", positioned immediately below the acronym, attract less attention because of their smaller size and compressed typeset. The Bade logo of which the Applicants complain has different salient features. In contrast to the AMI mark, in which the circular disc is a particular feature, the prominent feature of the Bade logo is the stylised text " bademedicalinstitute ". The first two words of this phrase are emphasised in bold typeface. Unlike the AMI mark, the Bade logo includes neither a circular disc image nor an acronym. Perhaps the most similar feature of the two marks is the semi-circular device in the upper left portion of each mark. In the AMI mark, the device takes the form of a series of close-set lines that appear to radiate from the circular disc at the centre of the mark. In contrast, in the Bade logo it is an elongated crescent that frames the text at the centre of the mark. In this way, each of these distinct semi-circular devices operates to accentuate the main distinguishing feature of the respective marks, serving to better distinguish each mark from that of its competitor. It is thus concluded that the marks are sufficiently distinct from one another that they cannot be said to be " substantially identical ". The manner in which the Bade Medical Institute promoted and sold its own products diverted sales away from the Applicants. The apparent similarity in the names being used was supported (in part) by some evidence of those who bought the Respondents' products. A private enquiry agent who had been retained by the Applicants thus gave evidence of a phone call made in December 2007 to the Bade Medical Institute and the following conversation: He said: Hello, Jack speaking I said: Who have I called? He said: Bade. I said: I've rung in relation to erectile problems, and am enquiring about your products. There then followed a conversation as to the product itself as follows: I said: ... What is the cost of the spray? He said: $450, and you get about fifty doses for that. I said: Are you AMI? He said: Yes, Australian Medical Institute. I said: Are you the ones that advertise AMI everywhere? He said No, that is the Advanced Medical Institute. I said: You're not the same? He said: No, we're different. Can you give me your name and address to send the spray to? Notwithstanding the acknowledgment that " we're different ", the association with " AMI " remained. As against the Second Respondent, World Wide Internet Services (Aust.) Pty Ltd, contraventions of ss 52 , 53 (a), 53 (aa), 53 (c) and 53 (d) of the Trade Practices Act were alleged. Again, it is not in dispute that the Second Respondent: was the holder, owner and operator of all domain names used by the First Respondent; and provided the website and hosting capacity for the websites used by the First Respondent in relation to its business. World Wide Internet Services (Aust.) Pty Ltd registered approximately 46 domain names, including: Another contention pursued by the Applicants was that Mr Wade and the Bade Medical Institute intentionally set out to " intercept " people searching the internet for access to the Applicants' products and to divert them to their own products. One explanation provided by Mr Wade was that the initials " AMI " stood for " acute myocardial infarction ". At one stage during the cross-examination, Mr Wade was taken to a list of searches undertaken on the internet. An exchange occurred as follows: There is not a single instance in this list where someone has looked for acute myocardial infarction?---Oh no. Whatever I ... You accept that, don't you?---Whatever I AMI, you say the word AMI. It's one of the salient acronyms for acute myocardial infarction, which is one of the cause of [impotence]. I've even put the word viagra alternatives but I wasn't selling Viagra. Mr Wade, no one would search for AMI and nasal delivery unless they intended to look for the applicant's products and understand something about them?---Ridiculous. You have an assumption of your term AMI that you own everything between here and Botswana for the word AMI. The explanation provided by Mr Wade for the acronym " AMI " is rejected. It is considered that it was used for the very purpose being suggested by the cross-examiner. Although too much reliance should not be placed upon inconsistencies in the evidence of different witnesses, such inconsistencies as do exist are not to be disregarded and serve as a source of concern as to the reliability of the balance of the evidence being given by the Respondents. One instance may be given. The name " Maxine May " appeared on innumerable emails. The evidence of Mr Wade was as follows: So who's Maxine May ? ---Nobody. ... So they were keeping records? ---No. Maxine May was like it was just another email address. I had numerous email addresses but actually there was no Maxine May as a person. But Ms Wade was questioned as to the identity of people variously described in emails and the following exchange occurred: Maxine May, was that Maxine May as well?---That is his girlfriend. Why don't you get her up? Who is Maxine May?---His girlfriend. His girlfriend was every his girlfriend ruled whatever his girlfriend said, he did. Inappropriate weight should not be given to such inconsistencies &#8212; especially in a working environment such as apparently prevailed at the Bade Medical Institute where people were known by various names and where an email may be addressed in a manner of convenience rather than specifically attempting to identify a particular person. It matters not whether the name of the " girlfriend " was " Maxine May "; that which matters is Mr Wade's assertion that she was " nobody ". Another instance is that Mr Wade maintained that he had not " worked with " his daughters, Ms Vicky Wade and Ms Patricia Wade. Yet emails in January 2007 were sent to and from Ms Patricia Wade concerning the business of the Bade Medical Institute and Mr Wade accepted that she " did graphics " for the business. Dr Beaini, like Mr Wade, maintained that Ms Vicky Wade " had no role in Bade ". Yet there was evidence of a phone-call being made to the Bade Medical Institute and the telephone being answered by a woman who identified herself as " Vicky ". Taken on its own, and given the apparent ease with which people assumed a variety of names, little weight is to be given to such an isolated telephone call. Indeed, such evidence established little. More persuasive of an involvement on the part of at least Ms Patricia Wade, however, was an exchange of emails in March 2007 when attempts were being made to establish the business of the Bade Medical Centre overseas. One email from " patriciawade " thus stated: Subject: RE: BADE MEDICAL INSTITUTE UK/EUROPE Mediserve have signed I have sent you the signed agreement in pdf form We need their site up asap. I will liase re their logos. Please print and send to Mediserve for their records. The other daughter, Ms Vicky Wade, was also " copied in " on this exchange of emails. Dr Beaini maintained that, from about March or April 2007, he no longer wanted " to deal with Bade " and from " basically around that time I was tapering off ". He continued writing prescriptions until September 2007. Certainly by late November 2007 the relationship between Dr Beaini (on the one hand) and the Fourth and Fifth Respondents (on the other) had deteriorated. On 21 November 2007, for instance, he wrote to the National Australia Bank. The subject-matter addressed in the letter was the " Bade Medical Institute " and an account held with the bank, identifying both the BSB number and the account number. Dr Beaini wrote that his " partners ", identified in cross-examination as Mr and Ms Wade, were still selling products without his involvement and this made " their action illegal ". The bank was asked to " [p]lease freeze this account as a matter of urgency ". In addition to the manner in which Dr Beaini referred to the Fourth and Fifth Respondents as his " partners ", the letter also exposed that Dr Beaini had a sufficiently detailed knowledge of the business activities of the Bade Medical Institute to know the specific details of the bank account. Notwithstanding the terms in which the letter was expressed, it is also curious to note that when asked as to the response of the bank to the letter Dr Beaini stated that he " presume[d] they froze the account. I didn't really follow it up, to be honest ". Had his intent been to sever all ties, a more immediate interest in the state of the bank account might have been expected. Notwithstanding his repeated assertions that his involvement in the business activities of the Bade Medical Institute and the promotion of the business by the Fourth Respondent was primarily confined to carrying out consultations, writing prescriptions and participating in the medical content of the advertising material contained on the internet, it is not considered that his involvement was so confined. It is not considered that Dr Beaini was as forthcoming in his dealings with the Bade Medical Institute and the Fourth and Fifth Respondents as was desirable. His repeated attempts to explain what he thought was important, as opposed to answering the questions being put to him, may be understandable. As a medical practitioner, it is suspected that he may have felt as uncomfortable in the witness box as his cross-examiner would have felt on an operating table. It may also be readily understandable that Dr Beaini saw his involvement in the business activities of the Bade Medical Institute primarily through the eyes of a medical practitioner. But such an understanding does not deny him knowledge of the more general business activities of his " partners ". An apparent failure on his part to produce such documents and records as may have supported his case only serves to reinforce a lack of confidence in accepting his account unquestioningly. It is considered that his involvement was greater than he was prepared to disclose. Considerable reservation has been previously expressed as to the medical evidence sought to be relied upon by the Fourth Respondent when seeking a vacation of the December 2008 hearing dates: AMI Australia Holdings [2008] FCA 1783 at [8] to [11]. And considerable reservation is expressed as to whether or not the Fifth Respondent was in fact " unfit for Court " in April 2009, as claimed. For whatever reason, there has been a substantial period of delay between December 2007, when the Applicants were ready to proceed, and June 2009. There was also a further, more limited delay between the conclusion of the hearing in June 2009 and the hearing of final submissions in August 2009. To a large extent that latter delay was occasioned by a desire to ensure that the case for the Applicants was outlined in a sufficiently detailed manner that the unrepresented Respondents would have an adequate opportunity to comprehend how the Applicants sought to marshal the law and the facts against them.