Federal Court Rejects Trade Mark Claims Against Union During Industrial Campaign

OUTCOME: Dismissed

FEDERAL COURT OF [COMPANY] v Construction, Forestry, [NAME] [2019] FCA 1491 File number: NSD 1065 of 2019

Judge: GRIFFITHS J

Date of judgment: 11 September 2019

Catchwords: [NAME] – infringement proceeding under ss 120(1) and (3) of the [NAME] 1995 (Cth) – where a [NAME] is using a sign depicting the applicant's brand or logo as part of an industrial campaign against the employer – where the employer is a wholly owned subsidiary of the applicant – whether the union's sign is being used as a [NAME] – no use of the sign as a [NAME] – claims of misleading or deceptive conduct arising from representations made during the course of an industrial campaign – whether impugned conduct is "in trade or commerce" – principles derived from [COMPANY] v [NAME] (1990) 169 CLR 594 considered – conduct not "in trade or commerce" TORTS – claims of injurious falsehood arising from statements and representations made during an industrial campaign – malice – necessity to establish actual damage – no malice or actual damage

Legislation: [NAME] Act 2010 (Cth) ss 4, 6, Sch 2 ss 2, 18 and 29 Fair Work Act 2009 (Cth) ss 345 and 349 Fair Work ([NAME]) Act 2009 (Cth) Judiciary Act 1903 (Cth) s 78B [NAME] 1995 (Cth) ss 10, 17, 120 and 185 Trade Practices Act 1974 (Cth) ss 4 and 52 Work Health and Safety Act 2011 (Cth) Fair Trading Act 1987 ([NAME]) Fair Trading Act 1999 (Vic) s 9 First Council Directive 89/104/EEC art 5 European Parliament and Council Directive 2015/2436 art 10 [NAME] of 1946 s 43, 15 U.S.C. § 1125(c)(1)(2012) Marrakesh Agreement Establishing the World Trade Organization. Opened for signature 15 April 1994. 1867 UNTS 3 (entered into force 1 January 1995). Annex 1C ('Agreement on Trade-related Aspects of Intellectual Property Rights') art 16 Paris Convention for the Protection of Industrial Property. Opened for signature 20 March 1883 (entered into force 7 July 1884) art 6bis

Cases cited: [NAME] & [COMPANY] v [COMPANY] [2017] FCAFC 56; 345 ALR 205 AMI Australia [COMPANY] v [NAME] [COMPANY] [2010] NSWSC 1395; [2011] Aust Torts Reports 82-077 [COMPANY] v [COMPANY] [2018] FCAFC 6; 259 FCR 514 [COMPANY] v [COMPANY] of [NAME] [2005] HCA 44; 224 CLR 322 [NAME] [COMPANY] v [NAME] [COMPANY] [2016] FCAFC 22; 329 ALR 522 [COMPANY] v [NAME] [COMPANY] [2012] FCA 1061 Australian Securities and Investments Commission v [NAME] [COMPANY] [2012] FCA 1164 [COMPANY] v [COMPANY] (1937) 58 CLR 641 [COMPANY] v [COMPANY] [2004] FCA 1335; 64 IPR 45 [COMPANY] v [NAME]-[COMPANY] [2005] FCA 838; 66 IPR 254 [NAME] v [COMPANY] [2000] FCA 1539; 52 IPR 42 [COMPANY] v [NAME] [COMPANY] [2013] FCA 8; 299 ALR 752 [COMPANY] v [NAME] (1994) 120 ALR 495 Clubb v Edwards [2019] HCA 11; 366 ALR 1 Commonwealth Bank of Australia v Kojic [2016] FCAFC 186; 249 FCR 421 [COMPANY] v [NAME] (1990) 169 CLR 594 [NAME] v [NAME] (1997) 70 FCR 489 [NAME] [COMPANY] v Country Fire Authority [1999] FCA 761; 93 FCR 520 [NAME] [COMPANY] v [NAME] and [NAME] Commission [1998] FCA 1560; (1999) ATPR 41-669 [COMPANY] v [NAME] and [NAME] Commissioner [2013] HCA 1; 249 CLR 435 [NAME] v [NAME] (1995) 43 NSWLR 404 [NAME] v [NAME] [2006] HCA 59; 225 CLR 553 [COMPANY] v [COMPANY] (1991) 30 FCR 326 [NAME] v [NAME] (1959) 101 CLR 298 Knight v Victoria [2017] HCA 29; 261 CLR 306 Madden v [COMPANY] [2014] FCAFC 30; 313 ALR 1 [COMPANY] v [NAME] [COMPANY] [1976] 2 NSWLR 124 [NAME] v [NAME] [2015] HCA 34; 257 CLR 178 [COMPANY] v [COMPANY] (1994) ATPR (Digest) 46-130 [COMPANY] v [COMPANY] (1998) 90 FCR 236 [NAME] v [NAME] [COMPANY] [2012] NSWSC 651; 96 IPR 547 [COMPANY] v Royal Society for the Prevention of Cruelty to Animals ([COMPANY] [2002] FCA 860; 120 FCR 191 [NAME] & [COMPANY] v Parsons [2001] HCA 69; 208 CLR 388 [COMPANY] v [COMPANY] [1982] HCA 44; 149 CLR 191 [COMPANY] v [NAME] [COMPANY] [2017] FCAFC 83; 251 FCR 379 [NAME] v [NAME] (1997) 80 FCR 303 [NAME] [COMPANY] v [COMPANY] [2011] FCA 1347 Ratcliffe v Evans [1892] 2 QB 524 Re application by [COMPANY] [2004] ATMO 25; 61 IPR 165 [NAME] v [COMPANY] [1999] FCA 1020; 93 FCR 365 [NAME] v [NAME] [2002] HCA 57; 212 CLR 1 [COMPANY] v [NAME] [COMPANY] [2000] FCA 1842; 50 IPR 321 [COMPANY] v Madden [2012] FCA 1346; 297 ALR 337 [COMPANY] v [COMPANY] [2008] NSWCA 9; 71 NSWLR 523 [COMPANY] v [NAME] 33 F. Supp. 3d 588 (D. Md. 2014) [COMPANY] v [NAME] (Australia) [COMPANY] [1963] HCA 66; 109 CLR 407 [NAME] [COMPANY] v [NAME] (1993) 32 NSWLR 559 [COMPANY] v Kerin [1992] FCA 211; 35 FCR 272 [COMPANY] v [NAME] (1927) 40 CLR 333 [COMPANY] v [NAME] 605 F. 3d 382 (6th Cir. 2010) [COMPANY] v [NAME] [COMPANY] [2004] FCA 133; 134 FCR 422 [COMPANY] v [COMPANY] [2012] FCAFC 159; 294 ALR 661 [NAME] v Wittenberg [2016] FCAFC 33; 242 FCR 505 [COMPANY] v [NAME] (1994) 49 FCR 89 [COMPANY] v [COMPANY] (No 2) [2006] FCAFC 132; 154 FCR 97 [NAME] v State of Queensland [2012] HCA 2; 246 CLR 1 [NAME], "The Rational Basis of [NAME] Protection" (1927) 40 Harvard Law Review 813 [NAME] and [NAME] of [NAME], 6th ed, 2016 [85.800], [85.795] [NAME] and [NAME], "Dilution Down Under: The Protection of Well-[NAME] in Australia" [2006] European Intellectual Property Review 174 [NAME], "[NAME] in Australia?" [2007] European Intellectual Property Review 307 [NAME]'s Laws of Australia vol 10 [145-835]-[145-845]

Date of hearing: 2, 5 and 6 August 2019

Registry: [NAME]: [NAME]

National Practice Area: Commercial and Corporations

Sub-area: [NAME] Protection

Category: Catchwords

Number of paragraphs: 221

Counsel for the Applicant: [redacted]

Solicitor for the Applicant: [redacted]

Counsel for the Respondent: [redacted]

Solicitor for the Respondent: [redacted]

BETWEEN: [COMPANY] (ACN [PHONE]) Applicant

AND: CONSTRUCTION, FORESTRY, [NAME] Respondent

JUDGE: GRIFFITHS J DATE OF ORDER: 11 SEPTEMBER 2019

THE COURT ORDERS THAT:

1. The originating application dated 5 July 2019 be dismissed. 2. The applicant pay the respondent's costs, as agreed or taxed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

TABLE OF CONTENTS A. INTRODUCTION [1] B. SOME

BACKGROUND MATTERS [3] C. [COMPANY]'S CASE SUMMARISED [12] (a) [NAME] infringements [15] (b) Elements common to both ss 120(1) and (3) of the TM Act [18] (i) Substantially identical with or deceptively similar to the [NAME] [19] (ii) Use of the Offending Logo "as a [NAME]" [20] (iii) [NAME] infringement under s 120(1) [30] (iv) [NAME] infringement under s 120(3) [31] (v) The criteria for the application of s.120(3) [34] Section 120(3)(a): the [COMPANY] trade [NAME] are well-known in Australia [34] Section 120(3)(b): [NAME] uses as a [NAME] a sign which is substantially identical with, or deceptively similar to, the [COMPANY] trade [NAME] in relation to unrelated goods or services [35] Section 120(3)(c): because the [NAME] is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the [NAME] of the [NAME] [38] Section 120(3)(d): for that reason, the interests of the [COMPANY] are likely to be adversely affected [47] (b) Misleading or deceptive conduct [49] (i) Is the conduct in trade or commerce? [50] (ii) The safety representation [52] (iii) The non-permanency representations [56] (iv) The wages representation [61] (v) The derogatory representations [62] (vi) The licence representation [63] (c) Injurious Falsehood [65] Malice [68] Actual damage [74] (d) [NAME] [83] D. [NAME]'S CASE SUMMARISED [87] E. CONSIDERATION AND DETERMINATION [92] (a) [NAME] infringements [93] (b) Elements common to both ss 120(1) and (3) of the TM Act [96] (i) Substantially identical or deceptively similar [97] (ii) Use of the Offending Logo "as a [NAME]" [111] (iii) [NAME] infringement under s 120(1) [115] (iv) [NAME] infringement under s 120(3) [116] (b) Misleading or deceptive conduct [130] (i) Is the conduct in trade or commerce? [131] (ii) Some other matters concerning the [NAME] [155] A. The safety representation [159] B. The non-permanency representations [170] C. The wages representation [173] D. The derogatory representations [177] E. The licence representation [181] (c) Injurious Falsehood [182] (i) Malice [191] (ii) Actual Damage [209] (d) [NAME] [220] F.

CONCLUSION [221]

GRIFFITHS J:

A. Introduction 1 These proceedings, which came on urgently, arise in the context of a lengthy industrial dispute between the parties. The [COMPANY] ([COMPANY]) claims that the Construction, Forestry, [NAME] ([NAME]) (principally via its [NAME], the [NAME] ([NAME])), has engaged in [NAME] infringements, misleading or deceptive conduct and committed the tort of injurious falsehood. The industrial dispute relates to the wages and conditions of employees of the [NAME] ([NAME]) (previously named [NAME]). The [COMPANY] acquired [NAME] in early January 2018. The business is operated by a wholly-owned subsidiary of the [COMPANY], [COMPANY] ([NAME]). 2 By consent, the Court heard and determined as a separate and preliminary matter the issue of liability, leaving to another day, if necessary, the issue of damages and any other relief.

B. Some background matters 3 The [COMPANY] is a mutual, being a company entirely owned by its members. From its establishment, one of the core values associated with the [COMPANY] brand has been safety. 4 The [COMPANY], including through its subsidiaries, presently provides services in the following broad areas: membership and motoring services, including the core offering of roadside assistance; transport services, including the operation of [NAME]; tourism services, including the operation of holiday parks and resorts across Australia; and marine services, including the [NAME]. [COMPANY] has a particular reputation for promoting and being associated with safety, traditionally road safety, but has more recently been able to diversify beyond its core motoring business to deliver and develop tourism and transport assets. 5 The [COMPANY]'s brand reputation (as independently measured by the [NAME]) is formidable; the brand is consistently in the top 10 most trusted brands in Australia in the [NAME] [NAME] survey and as at October 2018, is rated as Australia's seventh most trusted brand. 6 As part of the [COMPANY]'s acquisition of the [NAME], it acquired [NAME]'s interest in a seven year contract signed on 1 April 2015 between Transport for [NAME] and [COMPANY] to provide a high-speed ferry service between Circular Quay and Manly and vice versa. The [NAME] Government plays a significant role in regulating the route, the timetable requirements of the service, its fare structure (including capping the fares) and access to wharf arrangements. The [NAME] also operates a range of sightseeing, whale watching and special event cruises around [NAME]. Vessels in the fleet are branded with the [COMPANY] device mark, which is a [NAME] [NAME]. 7 The [NAME] is a [NAME] organisation under the Fair Work ([NAME]) Act 2009 (Cth). On 27 March 2018, [NAME] amalgamated with the [NAME] and effectively became [NAME] of the [NAME]. For convenience, in the main I will simply refer to [NAME]. [NAME] [NAME] has been [NAME] to [NAME] since 2003. 8 Since around September 2018, the [COMPANY] (via [NAME]) and [NAME] have been in dispute about the wages and conditions upon which, in particular, the "on water" staff of [NAME] are engaged. 9 The [COMPANY]'s claims include that [NAME] has used the [COMPANY]'s word mark, one of the [COMPANY]'s device [NAME], and a logo that incorporates it, and made false or misleading statements which are detrimental to, and designed to injure, the [COMPANY] and its brand. The negative publicity campaign includes express statements and imagery which the [COMPANY] claims convey the representation that it is an unsafe ferry operator, as well as other allegedly false or misleading statements relating to various aspects of the employment conditions of [NAME] and their treatment by the [COMPANY]. On 2 November 2018, at the [COMPANY]'s [NAME] ([NAME]), [COMPANY] members were handed pamphlets by members of [NAME] containing statements criticising [COMPANY], and also bearing the [NAME] positioned to form the hull of a sinking ferry (the Offending Logo). The [COMPANY] device mark and the Offending Logo are as follows: As will shortly emerge, the Offending Logo has usually been accompanied by text which includes the words "Don't let wages sink to the bottom of [NAME]". The [COMPANY]'s claims under the [NAME] 1995 (Cth) (TM Act) include claims of infringement by [NAME]'s use of the word mark "[COMPANY]" in the Offending Logo. One of the important [COMPANY] word [NAME], is the following [NAME] (the [COMPANY] 437 TM Registration): 10 The Offending Logo also appeared on placards and pamphlets which were carried or handed out by [NAME] during further industrial action taken by [NAME], as well as on black T-shirts worn by [NAME] and on an online petition. 11 In June 2019, [NAME]'s negative publicity campaign against the [COMPANY] escalated. In late June 2019, following the wearing of the black T-shirts and the handing out of pamphlets bearing the Offending Logo, [NAME] [NAME] [NAME] ([COMPANY]'s CEO) received emails from some [NAME] customers (including an [COMPANY] member) and communications from some [COMPANY] board members evidently elicited by [NAME]'s activities.

C. [COMPANY]'s case summarised 12 On 5 July 2019, the [COMPANY] commenced these proceedings by originating application and statement of claim. The proceedings were returnable before the Court on 11 July 2019 for the hearing of the [COMPANY]'s claim for interlocutory relief. On that day, the Court listed the matter for an urgent final hearing on 5-6 August 2019. Before then, the [COMPANY] filed an amended statement of claim (ASOC). It should be noted that because [NAME] raised the [NAME] in its defence, notices were issued under s 78B of the Judiciary Act 1903 (Cth), but no notice of intervention was received. 13 The [COMPANY] filed affidavits by [NAME] [NAME], [NAME] [NAME] ([NAME] Manager, [NAME] [NAME] (Corporate)), [NAME] [NAME] ([NAME] Manager – Safety, Operational Risk and Quality), [NAME] [NAME] [NAME] (HR Consultant), [NAME] [COUNSEL] (an [NAME]), [NAME] [COUNSEL] ([NAME] Counsel and Company Secretary) and [NAME] [COUNSEL] [NAME] (Solicitor). All but [NAME] [COUNSEL] and [NAME] [COUNSEL] were cross-examined. [NAME] [NAME] was cross-examined at some length. 14 It is convenient to outline each of the three causes of action raised by the [COMPANY].

(a) [NAME] infringements 15 In its ASOC the [COMPANY] identified the following instances of use of the Offending Logo by [NAME] for the purposes of the trade [NAME] infringement causes of action: (a) on pamphlets (the Pamphlets) as follows: Pamphlet 1 – circulated at the [COMPANY]'s [NAME] on 2 November 2018; Pamphlet 2 – circulated at holiday parks owned by the [COMPANY] in December 2018; Pamphlet 3 – circulated on [NAME] vessels from on or around 1 April 2019; Pamphlet 4 – circulated on [NAME] vessels around 2019; Pamphlet 5 – circulated on [NAME] vessels around 14 June 2019; (b) on placards (the Placards) by members of [NAME] on the following occasions: 6 March 2019 strike – Offending Logo used on placards as shown in [NAME] clip; 3 April 2019 strike – Offending Logo used on placards as depicted in [NAME] live stream; 14 June 2019 strike – Offending Logos used on placards as depicted in a video on [NAME]'s [NAME] page; 20 June 2019 strike – [NAME] article dated 26 June 2019 referring to strike showed the Offending Logo used on placards; and 29 June 2019 strike – Offending Logo used on placards carried by [NAME] during the strike action; (c) on T-shirts: on or around 14 June 2019, [NAME] wearing T-shirts bearing the Offending Logo (Logo T-Shirts) were working on the [NAME] vessels; and on or around 11 June 2019, pamphlets containing the Offending Logo were placed on seats and tables in [NAME] vessels presumably by employees wearing Logo T-Shirts; on 13 June 2019, [NAME] account retweeted a photo of individuals wearing T-shirts bearing the Offending Logo; at the 14 June 2019 strike, [NAME] wore Logo T-Shirts; at the 20 June 2019 strike, [NAME] wore Logo T-Shirts, as shown in a [NAME] article dated 25 June 2019; and at the demonstration at the [COMPANY]'s offices at [NAME] on 20 June 2019, demonstrators wore Logo T-Shirts; and (d) on an online petition hosted on a website located at the URL https://www.[NAME] (the [NAME]). 16 [COMPANY] puts its [NAME] infringement case in two ways: under ss 120(1) and 120(3) of the TM Act. Section 120(1) covers "traditional" or "historical" [NAME] infringement. It involves use of a sign as a [NAME] that is, or is substantially identical with or deceptively similar to, the [NAME]'s mark, on goods or services explicitly covered by the registration. There is a single, narrow claim by the [COMPANY] of s 120(1) infringement. It involves the question of whether [NAME], through its members handing out Pamphlets and wearing Logo T-Shirts, engaged in the provision of "services consisting of information about journeys", thereby infringing the [COMPANY] 437 TM Registration word mark which registers the letters "[COMPANY]" in relation to the provision of "Class 39: Travel agency, services consisting of information about journeys, vehicle towing service, vehicle pilot service" (emphasis added). 17 The [COMPANY]'s broader and alternative s 120(3) claim, raises different considerations, some of which are relatively untested (see further below). The s 120(3) involves claims of infringement of both the [COMPANY]'s word [NAME] and the [COMPANY]'s device mark (above at [9]). The difference between the ss 120(1) and 120(3) claims is that the former requires use of the infringing sign or mark in relation to goods or services in respect of which the [NAME] is [NAME]. The latter, on the other hand, only requires that the interests of the [NAME] are likely to be adversely affected.

(b) Elements common to both ss 120(1) and (3) of the TM Act 18 In either case, the impugned use has to be: (a) use of a sign that is substantially identical with, or deceptively similar to, the [NAME]; and (b) use of the sign "as a [NAME]".

(i) Substantially identical with or deceptively similar to the [NAME] 19 The [COMPANY]'s position on this requirement may be outlined as follows. (a) For the purposes of s 120(1), the Offending Logo is substantially identical with or deceptively similar to the [COMPANY] word mark – it incorporates the [COMPANY]'s word mark in its entirety and has no other words, and thus the [COMPANY] word is the "dominant cognitive cue" in each mark ([COMPANY] v [NAME] [COMPANY] [2017] FCAFC 83; 251 FCR 379 at [56]) , and a total impression of similarity emerges from a comparison between the two [NAME], indicating that the [NAME] are "substantially identical" ([COMPANY] v [NAME] (1994) 120 ALR 495 at [62]). At the very least, they are deceptively similar, in that the Offending Logo so nearly resembles the other mark that it is likely to deceive or cause confusion (see s 10 of the TM Act). (b) For the purposes of s 120(3), the Offending Mark is substantially identical with or deceptively similar to the [NAME] word [NAME] and device [NAME] (which are set out in Sch 1 to the ASOC). It points in particular to the device mark which appears on [NAME] vessels (a copy of which is at [9] above). In support of this contention, the [COMPANY] highlights the following aspects of the Offending Logo: the font-style of the letters; the joining of the letters "M" and the "A" at their base; "smoke" coming out of the smoke stack which is reminiscent of, and evocative of, the wings of the [COMPANY] device; and the overall interlineation of the letters [COMPANY] in the stylised font within a broader logo, including a semi-circle at the bottom.

(ii) Use of the Offending Logo "as a [NAME]" 20 The [COMPANY] identifies [NAME]'s activities in handing out Pamphlets, which purport to be information to the [NAME] about [NAME]'s industrial action in relation to the [NAME], as use of the Offending Logo as a [NAME]. The [COMPANY] contends that [NAME] has chosen not merely to use its own logo on those Pamphlets, but to place the Offending Logo in an equally or more prominent position. The [COMPANY] submits that the Offending Logo is effectively the "brand" of [NAME]'s campaign. The [COMPANY] relies on two authorities in support of this submission. 21 In [COMPANY] v [COMPANY] (No 2) [2006] FCAFC 132; 154 FCR 97, the [ADDRESS] ([NAME], [NAME]) said at [77]: Whether or not there has been use as a [NAME] involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a [NAME] if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin… 22 [COMPANY] v [NAME]-[COMPANY] [2005] FCA 838; 66 IPR 254, Emmett J said at [48], when determining that [NAME] had been used as a [NAME]: The prominence and positioning of the [NAME] sign on the packaging of the toothbrush and in promotional material, together with the font size, styling, colour and shading of the [NAME] sign, suggests even greater significance than the "[NAME]" brand. Other products, of both [NAME] and its competitors, position distinguishing names that are properly characterised as sub-brands in the same place as the [NAME] sign appears in relation to [NAME] on the packaging and leaflet. The distinctive styling, colouring and shading has a graphic element akin to a logo. The distinctive blue and white colouring, with a halo effect of white shading around the words, is also indicative of use as a [NAME], rather than as a merely descriptive phrase. Although the "C" appears in upper case, there is no space between the "X" and the "C". That suggests an invented word intended for use as a [NAME]. 23 The [COMPANY] submits that the following are strong indicia that the Offending Logo is being "used as a [NAME]" on the Pamphlets: (a) The Offending Logo is extremely prominent on the Pamphlets. Prominence is a factor indicative of [NAME] use ([COMPANY] v [NAME] [COMPANY] [2013] FCA 8; 299 ALR 752 at [33]). (b) The Offending Logo is not merely words, but is (in the words of [NAME[NAME] in [NAME] at [48]), a "graphic element akin to a logo", which is strongly indicative of [NAME] use. (c) Strong elements of the [COMPANY] device [NAME], themselves well-known trade [NAME], are deliberately distorted and used in the Offending Logo. This is indicative of [NAME] use. It shows that the [COMPANY] device [NAME] were likely deliberately copied, and distorted, to form the Offending Logo—that is, [NAME]'s intention to use the Offending Logo as a [NAME] may be inferred from the fact that it copied, and references, a well-known [NAME] to serve that function. (d) [NAME] logo is also used on the Pamphlets, this does not negate use of the [COMPANY] word mark and [COMPANY] device [NAME] as trade [NAME] ([COMPANY] v [COMPANY] (1991) 30 FCR 326 at 349). Indeed, the necessary information would have been conveyed merely by the text of the notice, together with a [NAME] logo. [NAME] has made a deliberate choice to give the Pamphlets added impact by the use of the [COMPANY] word mark and a distorted form of the [COMPANY] device [NAME] in a graphical form akin to a logo. 24 The [COMPANY] submits that a sign or mark can appear and be used at the same time in relation to different goods and services, speaking at the same time to different recipients. It referred to a mark such as [NAME] (taking as an example uses in the cosmetics department) being used all at once in-store and on invoices in respect of retailing services, own-brand goods, advice services, make-up and beauty services, gift-wrapping services etc. 25 The [COMPANY] submits that it is no answer that [NAME] is a non-commercial body. [NAME] itself uses signs or [NAME] as trade [NAME] in the course of its activities: it has its own portfolio of [NAME] trade [NAME]. It is inherent in filing and prosecuting an application for registration of a [NAME] that the applicant and [NAME] have an intention to use the mark as a [NAME] and that it continue to use it to preserve validity. Further, the [COMPANY] submits that it is plain that charitable or voluntary organisations may obtain the benefit of using trade [NAME] or trade names in the same way as commercial enterprises, and use them in providing services gratuitously (citing the Red Cross as one of the most famous trade [NAME] in the world). The [COMPANY] submits that it would be a distraction to focus on [NAME]'s status as a [NAME] organisation under workplace laws to the exclusion of the many other indicia that it is using the sign "[COMPANY]", and the Offending Logo, as trade [NAME]. The [COMPANY] further submits that [NAME] may be using "[COMPANY]" and the Offending Logo in connection with different services being delivered to different people (see the [NAME] example above), including as a badge of origin of one of the services being actually provided by [NAME] to their members, being the campaign conducted by [NAME]. The [COMPANY] describes the services of industrially organising and campaigning as being at the core of the services [NAME] provides to its members. It points to the fact that some of [NAME]'s own [NAME] are [NAME] for "association services". 26 The [COMPANY] submits that the overall effect is that [NAME] has appropriated the [COMPANY] word mark and the [COMPANY] device mark, and used the Offending Logo as a [NAME] and badge of origin of the present campaign. In the context where any vessel on which the [NAME] is operated itself contains an [COMPANY] device mark, the [COMPANY] said that it is clear that at least "one aspect" of [NAME]'s use of the Offending Logo is that [NAME] seeks to indicate by use of the Offending Logo that it is the origin of the source of the information about the strikes in the Pamphlets. The [COMPANY] submits that the Offending Logo brands [NAME]'s campaign services as having originated from a person critical of the actions of the [COMPANY] (namely, [NAME]), by reference to, and distortion of, the [COMPANY] trade [NAME]. 27 The [COMPANY] contends that these submissions apply a fortiori in relation to the use of the Offending Logo on the T-shirts, which display the Offending Logo (in proximity to the phrase "Don't let wages sink to the bottom of the harbour"), where there is not even any [NAME]-branding apparent on the front of the Logo T-Shirts. By the use of the T-shirts [NAME] seeks, by reference to the Offending Logo, to indicate that the campaign message on the T-shirt emanates from [NAME], and so uses the Offending Logo as a [NAME] in relation to the campaign services it provides to its members. In its oral submissions, the [COMPANY] submitted that where a logo is of the strong and graphic kind of the sinking ferry logo (referring to [NAME] & [COMPANY] v [COMPANY] [2017] FCAFC 56; 345 ALR 205), it is not appropriate to treat accompanying words as part of the mark. 28 The [COMPANY] submits that the position is similar in relation to the Placards, which display the Offending Logo in close proximity to phrases such as: "[COMPANY] and [NAME]"; "It's time to negotiate a fair deal with your workers"; and "Don't let wages sink to the bottom of [NAME]". 29 The [COMPANY] submits that the consistency of use of the Offending Logo across the Pamphlets, Logo T-Shirts and Placards confirms that the use of the Offending Logo is use as a [NAME] – the Offending Logo has become the "brand" of [NAME]'s campaign, being a service it is providing to its members.

(iii) [NAME] infringement under s 120(1) 30 The [COMPANY] submits that the letters "[COMPANY]" as used in the Offending Logo are substantially identical with (or deceptively similar to) the [COMPANY] word mark. It relies on what [NAME], [NAME] and [NAME] said in [COMPANY] v [COMPANY] [2018] FCAFC 6; 259 FCR 514 at [177]-[178]: [177] …If the employees of the second respondent were to hand out business cards or brochures in Australia that included the word ANCHORAGE used as a [NAME] it would very likely be liable for [NAME] infringement (unless the [NAME] are cancelled) even if there was no possibility of the recipients of those documents being deceived or confused. This is because the respondents will have used as a [NAME] a mark that is identical to the ANCHORAGE mark. The fact that the word ANCHORAGE as it appears on the business card or brochure might not deceive or confuse because it is accompanied by some form of statement making clear that it was the second respondent and its affiliates using the ANCHORAGE mark would be immaterial in an infringement action brought under s 120(1) of the Act. [178] The rights enjoyed by the [NAME] include the exclusive right to use the [NAME] mark or any substantially identical or deceptively similar mark as a [NAME] (subject to any relevant defences) in relation to the goods or services in respect of which the mark is [NAME] (see s 20). This right is much broader than the right to prevent others from using an unregistered [NAME] to engage in passing off. It represents one of the principal advantages that the Act confers on a [NAME] of a [NAME]. As [NAME[NAME] explained in [NAME] Australia [COMPANY] v [COMPANY] (1991) 30 FCR 326 at 349: [T]here may be a [NAME] use and thus infringement in a case where the defendant adds words to indicate that it, rather than the plaintiff, is the trade origin of the goods or services in question. The addition of such words might negative the risk of passing-off. But this is one distinction which [NAME] off an infringement action from a passing-off suit. Further, there may still be a [NAME] use in a given case (such as the phrase in the Tub Happy case, "Exacto Cotton Garments — Tub Happy Cotton Fresh Budget Wise"), although another [NAME] also is used by the defendant in the same packaging or advertisement. (Citations omitted.)

(iv) [NAME] infringement under s 120(3) 31 While acknowledging that there are few authorities on s 120(3), the [COMPANY] submits that: (a) Section 120(3) was introduced to meet obligations imposed by Art 6bis of the Paris Convention for the Protection of Industrial Property, as supplemented by Arts 16(2) and 16(3) of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement). The Explanatory Memorandum to the [NAME] 1995 (Cth) at [98] refers only to the need to establish that the use complained of is likely to "adversely affect" the interests of the [NAME]. Article 16(3) of the TRIPS Agreement refers to the likelihood of damage to the interests of the [NAME] owner. It is "unclear whether there is a difference between the concepts of 'damage' and 'adverse effect'" ([NAME] and [NAME] of [NAME], 6th ed, 2016 at [85.800]). (b) The authorities suggest that "adverse effect" has a broader connotation than damage caused by diversion of sales ([COMPANY] v [COMPANY] [2004] FCA 1335; 64 IPR 45 at [16]), and that it would seem to encompass damage to the reputation of the [NAME] owner by injurious association and other heads of damages recognised in passing off actions, for instance, loss of opportunity to engage in brand extension. The [COMPANY] says that this suggests that s 120(3) may go as far as to cover damage by dilution, but at the very least it encompasses reputational tarnishment. 32 As Sch 1 to the ASOC indicates, the [COMPANY] owns many [NAME] registrations, including the following subset of registrations: 588892 ([COMPANY] word mark) for class 6 (goods); 588902 ([COMPANY] word mark) for class 25 (goods); 332020 ([COMPANY] word mark) for class 42 (services); 51110719 ([COMPANY] word mark) for class 16 (goods); 588619 ([COMPANY] word mark) for class 37 (services); 1222133 ([COMPANY] word mark) for class 35, 41 and 43 (services); 508841 ([COMPANY] device mark) for class 37 (services); 508842 ([COMPANY] device mark) for class 39 (services). 33 The [COMPANY] submits that the cause of action under s 120(3) has additional utility because if, contrary to the submissions above, the Court were to consider that whilst there had been use by [NAME] of the Offending Logo as a [NAME], but such use by [NAME] was not in relation to services "consisting of information about journeys", s 120(3) may still be engaged.

(v) The criteria for the application of s.120(3)

Section 120(3)(a): the [COMPANY] trade [NAME] are well-known in Australia 34 The [COMPANY] emphasises that [NAME] did not dispute that its trade [NAME] are well-known in Australia.

Section 120(3)(b): [NAME] uses as a [NAME] a sign which is substantially identical with, or deceptively similar to, the [COMPANY] trade [NAME] in relation to unrelated goods or services 35 Having regard to its terms, the [COMPANY] submits that for the Offending Logo to infringe s 120(3), it must be used in relation to unrelated goods or services (s 120(3)(b)), i.e., goods or services that are not of the same description as, or are not closely related to, the goods or services of the [COMPANY] registrations. 36 Thus, s 120(3) in effect covers the whole universe of services (and goods, not presently relevant) outside those delineated in the [COMPANY]'s [NAME] [NAME]. The question according to the [COMPANY] is more what services [NAME] services are not, rather than what services they are. Many of the [COMPANY] trade [NAME] are [NAME] for services which are not of the kind provided by [NAME]. That is sufficient for s 120(3) to apply. 37 The [COMPANY] submits that there is no difficulty in holding that services of several kinds being supplied by [NAME] are relevant "unrelated services" for the purposes of s 120(3). It relies upon the US decision in [COMPANY] v [NAME] 33 F. Supp. 3d 588 (D. Md. 2014), where the Maryland District Court granted a preliminary injunction restraining the distribution of campaign literature by (Maryland State) [NAME] which bore a mark similar to the famous [NAME] [NAME] for chocolate. [ADDRESS] found at 594 that: Here, the [NAME] used their design to promote a political candidate, disseminate political information, host campaign events, and solicit donations.

Accordingly, the [NAME] are using [NAME] in connection with services.

Section 120(3)(c): because the [NAME] is well-known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the [NAME] of the [NAME] 38 The [COMPANY] submits that the central concept behind s 120(3)(c) is that once a [NAME] achieves a sufficient level of fame, or becomes "well-known", its capacity to indicate a connection to the [NAME] [NAME] transcends the requirement that there be use in relation to goods or services of the same kind as those to which the registration relates. It claims that the [COMPANY] word [NAME] and the [COMPANY] device are just such trade [NAME] and that their distortion by [NAME] into the Offending Logo are likely to indicate a connection to the [COMPANY], notwithstanding that the services provided by [NAME] to their members and also to others are very different from the goods or services the subject of the registrations referred to at [32] above. The [COMPANY] emphasises that it is important to note that the nature of the "connection" which must be shown under s 120(3) is not [COMPANY] to confusion as to origin. The [COMPANY] contrasts s 120(3) with s 120(2) and the proviso therein which provides that lack of confusion is a defence to an action under s 120(2). Section 120(3) provides no such defence. The [COMPANY] acknowledges that, while the precise nature of the "connection" required under s 120(3) has not been the subject of any detailed judicial consideration, it points out that very similar language to that used in s 120(3) is used in s 185 of the TM Act, which allows for the registration of a defensive [NAME]. 39 The [COMPANY] also relies upon decisions of the [NAME] which it claims have recognised the similarity between s 120(3) and s 185 of the TM Act and, recognising that similarity, have held that the "connection" for the purposes of s 185 is "open-ended", in the sense that it is not [COMPANY] to traditional types of [NAME] confusion as to the origin of goods or services (Re application by [COMPANY] [2004] ATMO 25; 61 IPR 165 at 167-168). The traditional test for likelihood of confusion is that a "number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source" ([NAME] v [COMPANY] [1999] FCA 1020; 93 FCR 365 at [50]). Thus, the [COMPANY] submits that it would not be necessary for it to prove, in the present proceedings, that a [NAME] had been confused, in the sense of "caused to wonder whether it might not be the case", that the material emanating from [NAME] had actually emanated from the [COMPANY]. A wider test of connection involving, for example, association or affiliation is sufficient. 40 The [COMPANY] submits that US authority supports this construction of s 120(3). Under s 43 of the [NAME] of 1946, 15 U.S.C. § 1125(c)(1) (2012) (Lanham Act), a plaintiff is entitled to injunctive relief if the defendant's use of its [NAME] "is likely to cause dilution… by tarnishment" of the famous [NAME]. In the Lanham Act, "dilution by tarnishment" is defined in § 1125(c)(2)(C) as an: association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. 41 These terms were considered in the case of [COMPANY] v [NAME] 605 F. 3d 382 (6th Cir. 2010). [ADDRESS] of Appeal for the Sixth Circuit considered that use of the mark VICTOR'S SECRET for an [NAME] was likely to tarnish the VICTORIA'S [NAME], and the semantic link between the two [NAME] was sufficient to constitute the relevant "association". The [COMPANY] submits that "connection" should be read in a similar way in s. 120(3) and includes the making of a mental link or association between the services badged with the Offending Logo and the [COMPANY] trade [NAME], and hence to the [COMPANY]. 42 In its oral submissions, the [COMPANY] contended that the requirement of "connection" was satisfied here by the reference in [NAME]'s internal email to it "hacking" the [COMPANY] logo. The [COMPANY] submitted that even if there were many aspects to [NAME]'s use of the [NAME], the presence of an offending use, namely hacking the [COMPANY]'s brand, was sufficient to establish infringement. 43 In any event, the [COMPANY] submits that the distinction does not loom large in the present case because, even on the narrowest reading of "connection", it says the requirements of s 120(3) are satisfied. The use of the Offending Logo on the Pamphlets, Logo T-Shirts and other material is such that it is likely that a person would be "caused to wonder whether it might not be the case" that the [COMPANY] (the [NAME]) had sanctioned, approved, or otherwise been involved in, the distribution of the Pamphlets or the information contained in them. This constitutes a connection between [COMPANY] and the services provided by [NAME] in relation to which the Offending Logo is being used by [NAME] as a [NAME]. 44 The [COMPANY] submits that there are two reasons why any text in the Pamphlets which may provide material to suggest that [COMPANY] does not approve of them is no answer: (a) the focus of s 120(3) is on the use of the "sign", i.e. the Offending Logo, which is not answered by the use of other material such as text – an action under s 120(3) is not a passing off action in which all such material must be taken into account; and (b) in any event, the context of a person viewing a Pamphlet will often encompass an ephemeral or fleeting viewing, for example, briefly reading a Pamphlet after getting off the ferry before placing it in the bin. In this regard, it submits that the dominant impression left when viewing the Pamphlet without studying it in detail is of the Offending Logo – that is, the [COMPANY] word mark and the [COMPANY] device distorted into a sinking ferry. 45 The [COMPANY] says that its case under s. 120(3) is considerably stronger than that considered in [COMPANY] v [NAME] [COMPANY] [2000] FCA 1842; 50 IPR 321, where the "connection" requirement was discussed at [38]: The applicant submitted that there was a serious question to be tried that, because the applicant's [NAME] [NAME] was so well known, the first respondent's use of the words "[NAME]" would be likely to be taken as indicating a connection between its coffee products and the applicant. The evidence establishes that the applicant has promoted and advertised the name "[NAME]" extensively in television and magazine advertising and in supermarket promotional activities. According to [NAME] [APPELLANT], since 1990 the applicant has spent at least $8 m a year in [NAME] and trade marketing to develop and further the [NAME] brand name. Having regard to the extent of this advertising and marketing and the fact that the applicant's [NAME] brand products have achieved a market share in excess of 40% of the national and Victorian State dry pasta markets, I consider that there is a serious question that [NAME] No 564652 is sufficiently well known, for the purposes of s. 120(3)(c) of the Act, to the extent that the first respondent's use of those words would be likely to be taken as indicating a connection between the first respondent's coffee products and the applicant even though pasta and coffee are not goods of the same description. 46 In relation to the Logo T-Shirts, in considering the context of that use, the [COMPANY] submits that it must be borne in mind that the persons wearing the Logo T-Shirts have been handing out one or more of the Pamphlets. In that context, the use of the Offending Logo on the T-shirts takes its colour from the use of the Offending Logo on the Pamphlets.

Section 120(3)(d): for that reason, the interests of the [COMPANY] are likely to be adversely affected 47 As to what is meant by "adversely affected", the [COMPANY] submits that the connection with the adverse safety message conveyed by the Offending Logo (which is the [COMPANY] word mark and the [COMPANY] device distorted into a sinking ferry), is likely adversely to affect the [COMPANY]'s interests whatever the full scope of "adversely affected", given that a core element of its brand is its long-standing association with transport safety. 48 The [COMPANY] submits that it is also clear that its interests are being adversely affected in other respects by reason of the connection which is indicated by the Offending Logo between the [COMPANY] and the services being provided by [NAME]. For the reasons explained in relation to the [NAME] law and injurious falsehood claims, the Offending Logo is being accompanied by representations which seriously misstate the position in relation to the [COMPANY]'s workforce. [NAME] who consider that the [COMPANY] is connected to those false representations in the way described, i.e. that the [COMPANY] has sanctioned, approved or otherwise been involved in, the distribution of that information, whether on the Pamphlets, the T-shirts, or the Placards, will view that extremely adversely to [COMPANY], including that some may view it as an admission of wrongful conduct by the [COMPANY]. The [COMPANY] relied on the evidence outlined above in relation to the emails which have been sent to the [COMPANY]'s CEO, plus the recent escalation of [NAME]'s campaign, as demonstrating that not only are the [COMPANY]'s interests "likely" to be adversely affected as required by s. 120(3), but that they have, in fact, already been adversely affected. The [COMPANY] submits that the Court should accept the [NAME] evidence of [NAME] [NAME], an intellectual property valuer, which is to the effect that [NAME] campaign has already damaged the [COMPANY] brand and that, should it continue, there is a risk of a significant decline in value of the [COMPANY]'s brand.

(b) Misleading or deceptive conduct 49 The [COMPANY] submits that the [NAME] ([NAME]), at both a Commonwealth ([NAME] Act 2010 (Cth) Sch 2 (CC Act)) and State level (see Pt 3 of the Fair Trading Act 1987 ([NAME])), apply to [NAME]. In the former case, it submits that the [NAME] applies because, even if [NAME] is not a trading or financial corporation, that legislation applies to the extent that the representations complained of arise from the [NAME]'s use of a telephonic service, namely the Internet, to publish material on the [NAME], its media releases and the social media posts, relying on s 6(3) of the CC Act. As to the position under State legislation, the [COMPANY] submits that the [NAME] [NAME] applies because [NAME] is a person which carries on business in, or is otherwise connected with, [NAME].

(i) Is the conduct in trade or commerce? 50 This is a central issue in the case. The [COMPANY]'s primary position is that it is unnecessary to decide whether the activities of a [NAME] are "in trade or commerce" as long as the persons to whom [NAME] made the representations are themselves "in trade or commerce", relying upon authorities such as [NAME] v [NAME] [2006] HCA 59; 225 CLR 553 and [COMPANY] v [NAME] (1990) 169 CLR 594 at 613 per Toohey J; [COMPANY] v [COMPANY] [2008] NSWCA 9; 71 NSWLR 523 at [48]-[49] per [NAME] and [COMPANY] v [NAME] [COMPANY] [2012] FCA 1061 at [26]-[31] per Besanko J. 51 The [COMPANY] relies upon the following matters concerning the context in which the relevant representations were made to persons who themselves were acting in trade or commerce with the [COMPANY]: (a) Pamphlet 1 was provided to attendees at the [COMPANY]'s [NAME], which included persons who would be deciding whether or not to remain a member of the [COMPANY]; (b) Pamphlets 3, 4, 5 and the Logo T-Shirts intended to be seen by persons making a decision as to whether to travel on and be a customer of the [NAME]; (c) Pamphlet 2 was provided to persons making a decision as to whether to patronise the tourist parks of the [COMPANY]; and (d) the media releases were directed to the [NAME] generally, to inform them in deciding whether to become or remain members of [COMPANY] or to patronise any of the [COMPANY]'s businesses, or to invest in them.

(ii) The safety representation 52 The safety representations are that [COMPANY] is not a safe ferry operator and that its safety standards fall short and are not at an appropriate level. The [COMPANY] submits that this representation is conveyed by each of the following matters (emphasis added): (a) On or around 25 October 2018, [NAME] [NAME] posted a comment on a [NAME] post by the [COMPANY] which stated: Well done [COMPANY]. Another ferry company that underpays workers and haves [sic] a very poor safety management system. Why is [COMPANY] participating in ongoing wage theft? (b) On or around 2 November 2018, [NAME] posted a video on [NAME] using the account @[NAME] which stated: [NAME] rally at the [COMPANY]. Their company [NAME] underpays and robs workers running with a shonky safety system. (c) On or around 11 December 2018, [NAME] posted a post on [NAME] using the account @[NAME] which stated: [NAME] workers at [COMPANY] company [NAME] are being treated like second class citizens: 100% [NAME], underpaid and forced to work in unsafe conditions. (d) Most importantly, the Offending Logo, as it appears on each of the Logo T-Shirts, and the Pamphlets, conveys the notion of a sinking and unsafe ferry. (e) The Pamphlets containing the Offending Logo link to the [NAME] which contained the following statement: "[NAME] harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards". 53 The [COMPANY] submits that the representation is false because: (a) The [COMPANY] currently holds a valid Certificate of Survey issued by the Australian Maritime Safety Authority (AMSA) for all of the vessels in the [NAME], a certificate that all domestic commercial vessels are required to have to allow the vessel to be operated commercially in Australia. (b) In February 2019, [NAME] was praised by AMSA regarding the steps implemented by [NAME] management in relation to safety. (c) The [NAME] is regularly audited and inspected by AMSA in order to comply with the requirements for certification renewal. This process includes AMSA reviewing [NAME]'s Certificates of Survey, safety equipment, logs, drill records and drill frequency and safety systems documents, as well as observing crews conducting drills in accordance with [NAME]'s written safety policies and procedures. An email dated 15 May 2019 from a Marine Safety Business Partner at the [COMPANY] records a recent random AMSA inspection. (d) [COMPANY] acquired the [NAME], [COMPANY] has not received an improvement notice from [NAME]. (e) On 20 August 2018, [NAME] issued right of entry notices under the Work Health and Safety Act 2011 (Cth) and boarded and inspected the [COMPANY] vessels pursuant to those notices on 22 August 2018. No complaint was made to [NAME] following the inspection in relation to any alleged safety concerns. (f) The [COMPANY] has developed a number of specific [NAME] safety policies and procedures, for which there can be no suggestion of inadequacy, including: (i) The Marine Safety Manual which is also available in a digital form on all on-board vessel computers and corporate intranet sites; (ii) The Generic Safety Management System; (iii) Vessel Operations Manuals. (g) All new [NAME] are required to complete comprehensive training, including in relation to the safety policies and procedures outlined above. (h) Safety drills are regularly held on the [NAME]. (i) The safety policies and procedures referred to above actively encourage all [NAME] to report any safety concerns they may have, or any safety issues they may see arise during their shift, to either the [COMPANY]'s management or a member of [COMPANY]'s designated safety team. The [COMPANY] regularly sends safety updates by email to [NAME] employee. (j) In the 2018/2019 financial year, [COMPANY] also decreased its lost time injury frequency rate by 22%. 54 The [COMPANY] submits that [NAME] [NAME] attempt to gather observations and incidents together in his affidavit evidence and his characterisation of them are an attempt, with hindsight, to justify the safety representation no matter how minor or irrelevant and speculative the observations are. 55 In relation to all the representations of which it complains, including the safety representation, the [COMPANY] submits that it is relevant to take into account the class to whom the representations were made, namely a broad class of passengers using the [NAME] ferries (as well as [COMPANY] members). It emphasises that, having regard to this class of persons and the circumstances in which they were exposed to the conduct complained of, they would not have paid close attention to the text which accompanied the Offending Logo on the various relevant materials.

(iii) The non-permanency representations 56 The pleaded representations relating to the non-permanency of the workforce on the [NAME] are as follows: (a) not one of the 90 jobs on the [NAME] is [NAME]; (b) the [NAME] consists of an entirely [NAME] workforce; (c) the [COMPANY] has not offered one [NAME] job to any of the 90 [NAME] workers; and (d) the [COMPANY] is sinking or destroying job security on the [NAME]. 57 The [COMPANY] makes the following submissions. These representations should not be viewed in isolation. They were plainly designed with the purpose of, and had the effect of, reinforcing the safety representations. The suggestion that not one of the jobs was [NAME] was plainly important to [NAME]'s campaign, because of its absoluteness – in other words, it was not a representation that the workforce was substantially non-[NAME]. The import of the representations as a whole is that the [COMPANY] is not interested in providing a [NAME] workforce or offering any job security. 58 These representations are said by the [COMPANY] to arise from media releases and social media posts published by [NAME] (emphasis added): (a) The [NAME] post made by [NAME] on or around 11 December 2018: [NAME] workers at [COMPANY] company [NAME] are being treated like second class citizens: 100% [NAME], underpaid and forced to work in unsafe conditions. (b) 3 March 2019 media release: The ferry skippers, all of whom are [NAME], are still yet to receive a complete wage offer from [COMPANY] in the EBA negotiations, despite the company formally initialising the bargaining process on 24 September 2018. (c) 1 April 2019 media release: (i) [COMPANY] are twiddling their thumbs, instead of recognising that their staff have had enough of the years of nonsense, [NAME] jobs and rates of pay which are below Award and frankly, the lowest in the ferry industry. (ii) All ferry skippers who are taking the industrial action still remain casually employed. (d) 14 June 2019 media release: [NAME] [NAME] said ferry crews met yesterday, endorsing the work stoppage between 5pm and 11pm. The decision follows six months of negotiations with [COMPANY] that have failed to see the company resolve the wage discussions or offer a single [NAME] job to the entirely [NAME] workforce. (e) 27 June 2019 tweet posted by [NAME] used the [NAME] handle @[NAME] stating: Did you know? Not one of the 90 jobs on the [COMPANY]-owned [NAME] fleet is [NAME]. [COMPANY], Stop Sinking Job Security! 59 The [COMPANY] submits that these representations were misleading or false when made, in that: (a) business records indicate that as at 8 October 2018, two ferry [NAME] were [NAME] employees, and had been since well before [COMPANY] purchased the [NAME]; (b) on 21 November 2018, the [COMPANY] commenced a process inviting expressions of interest for [NAME] employment for casually employed deckhands of [NAME]; (c) on 29 November 2018, [NAME] received an expression of interest from a [NAME] deckhand in converting to a [NAME] position, and the employee commenced his [NAME] employment with [NAME] on 1 February 2019; (d) on 18 December 2018, the [COMPANY] sent a further email to [NAME] in relation to the option of converting to [NAME] employment; and (e) as of 1 July 2019, [COMPANY]'s payroll record indicate that 8 of 155 employees of [NAME] are "full time", i.e. [NAME] employees, including 1 deckhand and 2 [NAME] on [NAME] vessels. 60 As to [NAME] [NAME] suggestion that it was for the [COMPANY] or [NAME] to inform him that there were [NAME] employees against the possibility, or fact, that he may propose to make false representations on that topic, the [COMPANY] submits that there is no such transfer of obligation. It says that [NAME] has chosen to make unequivocal and absolute representations for some seven months, apparently at the very least reckless as to their accuracy. Additionally, the representations have not been withdrawn.

(iv) The wages representation 61 As originally pleaded, the wages representation primarily related to statements by [NAME] that "[NAME] management have deliberately forced their workers to accept below minimum conditions, and robbing them of their rightful pay rates". Resolution of this claim would have involved consideration of various industrial awards and their applicability to [NAME]. During the course of the hearing, however, the [COMPANY] narrowed its case regarding the wages representation and confined it to a representation that the [COMPANY] had deliberately forced its workers at [NAME] "to accept below minimum wages", which the [COMPANY] claims necessarily refers to the national minimum wage. Although it is not pleaded in the ASOC, the [COMPANY] contends that this reading of the reference to "below minimum wages" is supported by statements which [NAME] [NAME] made in an interview on [NAME], including that the wages paid to [NAME] deckhands were "similar to what you get when you worked at McDonald's". When [NAME] [NAME] was asked in the radio interview what was the rate of pay, he responded: "It's under award. The figures are there – about 21/$22 an hour when the commensurate rate in the industry is about 30 to $35 an hour".

(v) The derogatory representations 62 The pleaded derogatory representations are as follows: (a) the [COMPANY] does not treat its [NAME] with respect, decency and/or the dignity that they deserve; (b) the [COMPANY] treats its employees at [NAME] as second-class citizens; and (c) the [COMPANY] engages in conduct that is dishonest, improper and/or illegal. The [COMPANY] claims that these representations were conveyed by various statements which are set out in [26] of the ASOC, including statements regarding wages and conditions of [NAME] (such as that they were being robbed of their rightful pay rights and that the [COMPANY] had engaged in "wage theft", as well as a statement in Pamphlet 2 which described the [COMPANY]'s conduct as "dodgy behaviour").

(vi) The licence representation 63 The [COMPANY] also complains the use of the Offending Logo on the Pamphlets, the [NAME], the Logo T-Shirts and in a social media post also conveys the representation that the Offending Logo, or that part of it which comprises the letters "[COMPANY]", is being used by or with the licence of the [COMPANY]. 64 On an issue raised by the Court on the misleading or deceptive conduct claims, namely whether there was in the particular circumstances of this case an analogous concept of some licence or indulgence for "puffery", the [COMPANY] referred to Bennett J's observations in [NAME] [COMPANY] v [COMPANY] [2011] FCA 1347 at [139] ff and emphasised the difference between a complaint of misleading or deceptive conduct which arises in the context of representations which compare competing goods, as opposed to statements of fact such as those complained of here, including the unequivocal claim that there were no [NAME] jobs at [NAME].

(c) Injurious Falsehood 65 The [COMPANY] accepts that the elements required to prove injurious falsehood are well established, as restated by [NAME[NAME] in [NAME] & [COMPANY] v Parsons [2001] HCA 69; 208 CLR 388 at [52] (footnotes omitted): The elements of the action for injurious falsehood usually are expressed in terms which derive from Bowen LJ's judgment in Ratcliffe v Evans…generally, it is said that an action for injurious falsehood has four elements: (1) a false statement of or concerning the plaintiff's goods or business; (2) publication of that statement by a defendant to a third person; (3) malice on the part of the defendant; and (4) proof by the plaintiff of actual damage (which may include a [NAME] loss of business) suffered as a result of the statement. 66 The injurious falsehood claim is based on the statements and representations made by [NAME] about safety and permanency of employment. The [COMPANY] submits that elements (1) and (2) are established by the same matters relied upon in respect of its [NAME] claims, save that [NAME] [COUNSEL] SC (who appeared for the [COMPANY] together with [NAME] [COUNSEL]) made clear in his opening oral address that the [COMPANY] did not suggest in its injurious falsehood case that the sinking ferry logo is a statement. The [COMPANY] does, however, rely on the sinking ferry in the Offending Logo as part of the context which gives character to [NAME]'s representations about safety. 67 As to elements (3) and (4) from Ratcliffe v Evans [1892] 2 QB 524 (malice and actual damage), the [COMPANY]'s submissions may be summarised as follows.

Malice 68 The [COMPANY] submits that knowledge of falsity, or reckless indifference as to the truth of statements, have consistently been held to justify an inference of malice in injurious falsehood cases. If this is present, it is no excuse that the relevant statement was made with a view to furthering the respondent's own interests. 69 In relation to the safety representations, the [COMPANY] submits that knowledge of falsity, or reckless indifference as to falsity, may be inferred from matters which include the following: (a) [NAME] issued right of entry notices under the Work Health and Safety Act 2011 (Cth) and boarded and inspected the [COMPANY] vessels pursuant to those notices in August 2018. No complaint was made to [NAME] following the inspection in relation to alleged safety concerns. (b) [NAME] was aware from 31 October 2018 that the [COMPANY] gave its commitment regarding staff safety (which [NAME] [NAME] had requested). (c) As to [NAME] [NAME] claim that [NAME] was not intending to make the safety representations, the [COMPANY] contends that this is inconsistent with internal documents, including an email which explicitly refers to hacking the [COMPANY] logo. 70 As to the [NAME] employment representations, the [COMPANY] submits that [NAME] was aware from a letter dated 8 April 2019 from [NAME] [NAME] to [NAME] [NAME] that there was an agreed shared commitment to [NAME] employment, as is reflected in the following statement: I am pleased, however that there are agreed positions on the important issues regarding conversion of current employees to [NAME] employment, an appropriate level of commitment to future full time [NAME] employment, as well as a limitation on the use of [NAME] employees within the business. 71 The [COMPANY] claims that [NAME] also had at least one document in its possession which showed that it knew that there was a [NAME] of [NAME] from 18 February 2019. 72 The [COMPANY] submits that other matters which support a finding of malice include: (a) The "[NAME]" [NAME] page, which contains photoshopped and derogatory photographs of the [NAME], [NAME] [NAME]. [NAME] [NAME] commented on and "liked" some of the posts, suggesting it might be associated with [NAME]. (b) Vitriolic statements made at a 20 June 2019 demonstration at [NAME], where [NAME] were chanting phrases including "[NAME] [NAME] is a coward", after [NAME] advised that they wanted to hand deliver a copy of a petition to [NAME] [NAME], and that [NAME] [NAME] was not at the [NAME] office. I note, as an aside, the relevant part of [NAME] [NAME] affidavit relied on for this submission was not read. (c) Statements in various documents and materials produced by [NAME], including videos which appeared on [NAME] [NAME] page. (d) The fact that, upon the [COMPANY] acquiring [NAME], [NAME] [NAME] and [NAME] intended to attack the [COMPANY] and, it may be inferred, to cause it collateral damage because of a lack of success in dealing with the immediate employer ([NAME]). (e) Statements made by [NAME], [NAME] of [NAME], at a protest at [ADDRESS] on 3 April 2019, when he stated: I say to Sydneysiders boycott [NAME] until wage justice is delivered; and We will boycott, and I say this to all Sydneysiders, boycott [NAME] until this justice is served! Until we get the [NAME]. There is no other way, we must damage this company because they damage and exploit our members. (f) Evidence by [NAME] [NAME] that she overheard a conversation between [NAME] [NAME] and [NAME] [NAME] in which [NAME] [NAME] acknowledged that one deckhand had taken up the invitation for expressions of interest in a [NAME] role and had been converted to a [NAME] role. 73 Finally, the [COMPANY] submitted that it was relevant to take into account the fact that a [NAME] is "property".

Actual damage 74 The [COMPANY] relies upon four categories of evidence which it says show that it has suffered actual damage by reason of the representations: (a) evidence the [NAME] is being actually misled about the [COMPANY]'s business, from which it is a short step to inferring that [COMPANY] will lose custom; (b) direct evidence of the [COMPANY]'s long-standing and valuable reputation being damaged; (c) [NAME] [NAME] [NAME] evidence in relation to brand damage; and (d) evidence that the [COMPANY] is suffering a loss of custom on the [NAME], which temporally coincides with and may be inferred to arise from the representations. This has caused a significant loss of profit to date and a projected future loss of profit. 75 In its oral submissions concerning actual damage, which were presented by [NAME] [COUNSEL] of counsel, the [COMPANY] contended that while it accepted that there was a need to show actual loss, there was no need at this stage of the proceedings to quantify that loss. It was submitted that the decline in passenger numbers was sufficient for current purposes. Secondly, as to [COMPANY]'s claim for injunctive relief, [NAME] [NAME] submitted that it was sufficient for current purposes to proceed on the basis that even if actual financial loss had not yet manifested itself, it would be sufficient for the Court to find that if the contravening conduct continues such loss is an ongoing probability, citing [NAME] v [NAME] [COMPANY] [2012] NSWSC 651; 96 IPR 547 at [22] per [NAME] (as [NAME] then was). Thirdly, as to [NAME]'s contention that reputational damage is insufficient for the tort of injurious falsehood, the [COMPANY] relied on [COMPANY] v Royal Society for the Prevention of Cruelty to Animals ([COMPANY] [2002] FCA 860; 120 FCR 191 at [198] per [NAME[NAME] in support of its contention that, because the [NAME] infringements related to the [COMPANY]'s property, namely the effects on its trade [NAME], its complaint went beyond mere reputational damage. [NAME] [NAME] candidly acknowledged that this proposition had not yet been "squarely considered on the authorities". In this regard, the [COMPANY] submitted that a finding of malice, if established by the evidence concerning [NAME]'s intention to "hack the brand", is relevant. The relevance lies in the fact that a Court having found malice through an intention to damage the [COMPANY]'s property in its trademarks, would be slow to say that the intention had not been realised. 76 As to the [NAME] being actually misled, the [COMPANY] submits that the emails from the [NAME] to the [COMPANY]'s CEO ([NAME] [NAME]), provides evidence of [NAME] passengers, or members of the [NAME], accepting as true representations or statements made in [NAME]. 77 The [COMPANY] submits that there is direct evidence that the reputation of the [COMPANY] is being damaged, as shown by the following comments apparently made by members of the [NAME] on [NAME] [NAME] page: (a) "… obviously [COMPANY] don't [sic] give a rats [sic] arse about its workers, job security is everything to an Aussie worker. Safety should be everyones [sic] concern. [COMPANY] pull your head in"; (b) "Just like the Big Australian (BHP) ready to sack Australian workers and put the fear of losing everything. The [COMPANY] is exactly doing the same to [NAME] [sic] [NAME] workers, who want better working conditions …"; and (c) "The [COMPANY] has lost its standing as a reliable and trustworthy Australian company. They are behaving like an out of control multinational company …". 78 Similar sentiments appear on the [NAME]: (a) "I'm puzzled why the [COMPANY] doesn't resolve this dispute quickly, the crew of the [NAME] are clearly woefully underpaid given their responsibilities for passenger safety. [COMPANY] is showing absolutely no leadership in this situation"; and (b) "I signed because workers deserve better than to be exploited while doing a dangerous job in all weather conditions". 79 Of the signatories to [NAME]'s petition on the [NAME], the [COMPANY] points out that 880 out of 1,986 have identified themselves as [COMPANY] members. 80 Further, it contends that the extent of the reputational damage is exacerbated by the fact that various statements made by [NAME] have also been publicised in the media, including on [NAME] and in the Daily Telegraph newspaper. 81 The [COMPANY] relies on [NAME] [NAME] evidence as confirming that [COMPANY] has likely already suffered damage to its brand and, should it continue, there is a risk of significant decline in the value of that brand. In [NAME] [NAME] opinion, this would include damage suffered as a result of a decline in brand equity within certain stakeholder groups, including members, [NAME], business partners and employees. According to [NAME] [NAME], [NAME]'s conduct has the potential seriously to erode shareholders' perceptions of the core attributes underpinning the value of the [COMPANY]'s brand, namely trust, safety and reliability. [NAME] [NAME] provides illustrative examples of reputational damage and brand value losses (at paras 45 to 46 of his report). 82 The [COMPANY] also relies upon [NAME] [NAME] evidence that [NAME]'s conduct has already had an adverse impact on [NAME] patronage. [NAME] [NAME] provides comments on the decline in passenger numbers, with reference to a confidential internal document recording those passenger numbers. It claims that the decline in passenger numbers has had a material and significant impact on the [COMPANY]'s profits since January 2019, and is projected to have an ongoing significant impact on profits over the next 12 months.

(d) [NAME] 83 The [COMPANY] points out that [NAME] did not plead a constitutional defence in answer to the case of injurious falsehood, but only in relation to the claims made under the TM Act and the [NAME]. 84 Relying on the structured proportionality tests set out in [NAME] v [NAME] [2015] HCA 34; 257 CLR 178 at [2] per [NAME], Kiefel, [NAME], the [COMPANY] submits that the constitutional defence is not engaged here because: (a) the subject-matter of the key communications is not a political or governmental matter; (b) neither s 120 of the TM Act nor ss 18 or 29 of the [NAME] burdens the implied freedom of communication in their terms, operation or effect; (c) but if (contrary to the above) there were any such burden, it meets the structured form of proportionality testing set out in [NAME] because: (i) the purpose of each of s 120 of the TM Act and ss 18 and 29 of the [NAME], and the means adopted to achieve those purposes, are compatible with the maintenance of the constitutionally prescribed system of representative government, in the sense that they do not adversely impinge upon the functioning of the system of representative government; and (ii) both the TM Act and the [NAME] are reasonably appropriate and adapted to achieve those legitimate purposes, in the sense that they are suitable (in the sense of having a rational connection with the source of the power), necessary (in the sense that there is no obvious and compelling alternative means of achieving the same end), and adequate in their balance between the purpose of the law and the implied freedom. 85 The [COMPANY] submits that many of the relevant communications were not on a political or governmental matter so as to attract the implied freedom, citing [NAME] v State of Queensland [2012] HCA 2; 246 CLR 1 at [20] per [NAME], Gummow, [NAME], [NAME] v Edwards [2019] HCA 11; 366 ALR 1. It submits that neither of the relevant statutory provisions the subject of [NAME]'s defence relying upon the implied freedom burdened that freedom, citing [COMPANY] v [COMPANY] of [NAME] [2005] HCA 44; 224 CLR 322 and that, in any event, any burden passed the [NAME] test. 86 It is unnecessary to further elaborate on these matters because, as will emerge, it is unnecessary and inappropriate to determine the constitutional issue in circumstances where the proceeding is determined on non-constitutional grounds.

D. [NAME]'S case summarised 87 [NAME] relied upon two affidavits by [NAME] [NAME] ([NAME] of the [NAME] [NAME] of [NAME]), who was cross-examined at some length. 88 [NAME] emphasises that these proceedings involve an unprecedented attempt by a large corporation to use [NAME] and trade [NAME] law to regulate the conduct and statements of a [NAME] and its members in the context of an industrial dispute. 89 In brief, [NAME] submits that none of the [COMPANY]'s claims should be accepted because: (a) The conduct complained of was not engaged in "in trade or commerce" so as to be able to constitute contraventions of ss 18 or 29 of the [NAME] and, in any event, the [COMPANY] has not established that the conduct was misleading or deceptive for the purposes of either provision. (b) [NAME] has not used any [NAME] [NAME] to the [COMPANY] in connection with any goods and services in respect of which the [NAME] is [NAME], nor in connection with other goods or services in a manner that would indicate a connection between the unrelated goods or services and the [COMPANY] for the purposes of ss 120(1) or (3) of the TM Act. (c) The [COMPANY] has not established the tort of injurious falsehood in that it has not proven that the statements complained of are false, that [NAME] was actuated by malice or that it has suffered actual loss as a result of the particular statements alleged to give rise to the tort. 90 As previously noted, [NAME] relies upon the [NAME] as a defence in the event that Court was otherwise minded to uphold the [COMPANY]'s claims regarding trade [NAME] infringement and/or [NAME] law. 91 To avoid adding to what are already lengthy reasons for judgment, I will not set out in greater detail [NAME]'s submissions in respect of the three causes of action. Many of those submissions are reflected in my reasons below for rejecting the [COMPANY]'s legal claims.

E. Consideration and determination 92 It is convenient generally to adopt the headings used above in summarising the [COMPANY]'s case.

(a) [NAME] infringements 93 At the outset, it is well to set out the relevant terms of ss 120(1) and (3) of the TM Act: 120 When is a [NAME] [NAME] infringed? (1) A person infringes a [NAME] [NAME] if the person uses as a [NAME] a sign that is substantially identical with, or deceptively similar to, the [NAME] in relation to goods or services in respect of which the [NAME] is [NAME]. … (3) A person infringes a [NAME] [NAME] if: (a) the [NAME] is well known in Australia; and (b) the person uses as a [NAME] a sign that is substantially identical with, or deceptively similar to, the [NAME] in relation to: (i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the [NAME] is [NAME] ([NAME] goods) or are not closely related to services in respect of which the [NAME] is [NAME] ([NAME] services); or (ii) services (unrelated services) that are not of the same description as that of the [NAME] services or are not closely related to [NAME] goods; and (c) because the [NAME] is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the [NAME] of the [NAME]; and (d) for that reason, the interests of the [NAME] are likely to be adversely affected. 94 The trade [NAME] infringements raised by the [COMPANY] are set out at [15] to [17] above. As noted earlier, the alleged infringement under s 120(1) is quite confined. It relates to the question whether the Pamphlets and Logo T-shirts on which the Offending Logo is displayed amounts to [NAME] using as a [NAME] a sign that is substantially identical with, or deceptively similar to, the [COMPANY] 437 TM Registration (which mark comprises the letters "[COMPANY]") in relation to services consisting of information about journeys. 95 The [COMPANY]'s claim of infringement under s 120(3) is broader. It relates to the [COMPANY] trade [NAME] generally (as set out in Sch 1 to the ASOC), which it says are well known in Australia. It claims that [NAME]'s use of the Offending Logo is in relation to services that are not of the same description as the services in respect of which the [COMPANY] trade [NAME] are [NAME] and are not closely related to goods in respect of which one or more of those trade [NAME] is [NAME]. But, because the [COMPANY] trade [NAME] are well-known in Australia, the [COMPANY] says that the use of the Offending Logo is likely to be taken as indicating a connection between such services and the [COMPANY], thereby adversely affecting the [COMPANY]'s interests.

(b) Elements common to both ss 120(1) and (3) of the TM Act 96 It is convenient to address the issue whether [NAME] is using the [COMPANY]'s [NAME] or a sign substantially identical with it or deceptively similar to it, as a [NAME] in relation to goods and services in respect of the [COMPANY] 437 TM Registration (see [9] above), before addressing whether the use is as a [NAME].

(i) Substantially identical or deceptively similar 97 The concepts of "substantial identity" and "deceptive similarity" are independent criteria which invite different approaches. As [NAME[NAME] said in The [COMPANY] v [NAME] (Australia) [COMPANY] [1963] HCA 66; 109 CLR 407 at 414-415 (citations omitted): In considering whether [NAME] are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the [NAME] mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it"… Whether there is substantial identity is a question of fact:… On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The [NAME] are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of [NAME] law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [NAME]. To quote Lord [RESPONDENT] again: "The likelihood of confusion or deception in such cases is not disproved by placing the two [NAME] side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the [NAME] clearly before him…. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that [NAME] are remembered rather by [NAME] impressions or by some significant detail than by any photographic recollection of the whole"… And in [COMPANY] v [COMPANY]. [NAME] [NAME]. said: " In deciding this question, the [NAME] ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same". 98 [NAME] was overturned on appeal, no doubt was cast on his [NAME]'s exposition of the tests for "substantial identity" or "deceptive similarity" ([NAME] [COMPANY] v [NAME] [COMPANY] [2016] FCAFC 22; 329 ALR 522 at [92]). 99 The expression "deceptively similar" is defined in s 10 of the TM Act: For the purpose of this Act, a [NAME] is taken to be deceptively similar to another [NAME] if it so merely resembles that other [NAME] that it is likely to deceive or cause confusion. 100 There is no requirement that there be an intention to deceive or cause confusion, although the presence of such an intention may be highly probative ([COMPANY] v [COMPANY] (1937) 58 CLR 641 at 657 per [NAME] [NAME]; [COMPANY] v [COMPANY] [2012] FCAFC 159; 294 ALR 661 at [109] per [NAME]). The [COMPANY] carries the onus. For the purposes of a claimed infringement of s 120(1), the task is to compare the [NAME] [NAME] in relation to all the goods or services for which it is [NAME] with what the respondent has actually done, ignoring matter added to the mark (such as a disclaimer) and circumstances which are extraneous to the [NAME] itself (see [COMPANY] v [NAME] (1994) 49 FCR 89 at 128-129 per [NAME]). The following relevant guiding principles concerning the issue of deceptive similarity, albeit in the context of objection proceedings, were adopted by [NAME] (with whom [NAME] agreed) in [COMPANY] at [50]: … (i) To show that a [NAME] is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient. (ii) A [NAME] is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the [NAME] is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source. (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the [NAME] will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services. (iv) The rights of the parties are to be determined as at the date of the application. (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not [COMPANY] to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained. … 101 The phrase "substantially identical" has been described as involving "a total impression of similarity to emerge from a comparison between the two [NAME]" ([NAME] at 513, as approved by the [ADDRESS] in the context of the current TM Act in Anchorage at [58]). 102 The determination of substantial identity is somewhat complicated by the fact that the comparison which must be made here is between a word mark and a device mark or sign. Apart from the obvious similarity through the prominent presence of the letters "[COMPANY]" in both [NAME], there are clear differences in the styling and get up. However, as I accept the [COMPANY]'s submission that its word mark and the Offending Logo are deceptively similar, it is unnecessary to reach a final determination on the question of substantial identity. 103 As outlined above, in simple terms, the test is whether there is a real likelihood that use of the mark would cause persons of ordinary intelligence and memory to wonder or be left in doubt about whether the two sets of goods or the goods and services in question come from the same source (see [COMPANY] v [COMPANY] (1998) 90 FCR 236 at 245 per Burchett, [NAME]). I am satisfied that that test has been satisfied in the present circumstances. 104 The [NAME] word mark "[COMPANY]" is the essential feature and dominant cognitive cue in both the [NAME] mark and [NAME]'s sign. I am satisfied that the [NAME] impression or recollection that would be taken away by a person of ordinary intelligence and memory would be one that would involve a real or tangible danger of confusion. As has been observed many times, this stage of the enquiry is focussed on the [NAME] themselves, rather than the broader context of their use such as in an action for passing off ([NAME] at 245; [NAME] v [COMPANY] [2000] FCA 1539; 52 IPR 42). As Wooten J said in [COMPANY] v [NAME] [COMPANY] [1976] 2 NSWLR 124 at 127: Hence it is no answer … that the defendant's use of the mark is in all the circumstances not deceptive, if the mark itself is deceptively similar. 105 For this reason, it is not to the point that the accompanying text, "Don't let wages sink to the bottom of the harbour", may mitigate or eliminate the chance of confusion flowing from use of [NAME]'s sign (Anchorage at [178]). This conclusion is unsurprising as the purpose of [NAME]'s sign is to identify the [COMPANY]. 106 A significant difficulty, however, for the s 120(1) claim is that the only relevant service covered by the [COMPANY] 437 TM Registration is that "consisting of information about journeys". [NAME]'s use of the letters "[COMPANY]" in the Offending Logo does not involve the use of the [COMPANY] sign in relation to the provision of "information about journeys". Rather, the use arises in the context of an industrial campaign which is directed to improving the wages and conditions of the staff employed by [NAME]. The sign is used as part of the Offending Logo to identify that the [COMPANY] operates the [NAME], which is the target of [NAME]'s industrial campaign. 107 Section 120(3) does not share the same difficulty, as it is specifically directed to providing coverage for well known [NAME] across goods and services for which the mark is not [NAME]. As noted, the [COMPANY]'s case on s 120(3) relies on the full range of the [COMPANY]'s [NAME] trade [NAME]. Some of those [NAME] trade [NAME] simply involve the letters "[COMPANY]" while others comprise various device [NAME], including but not [COMPANY] to the device mark reproduced at [9] above. It may be accepted that [NAME]'s use of the Offending Logo is in relation to services that are very different from the services in respect of which the [COMPANY] trade [NAME] are [NAME].

Accordingly, that part of the condition in s 120(3)(b) is satisfied. 108 I am also satisfied that [NAME]'s sign is deceptively similar to a number of the [COMPANY]'s [NAME] trade [NAME]. I believe the [NAME] impression given by the visual similarities of the two [NAME] is such that there would be real likelihood of confusion on the part of persons of ordinary intelligence and memory viewing the [NAME]. 109 For similar reasons to those outlined above at [104]-[105], I am satisfied [NAME]'s sign is deceptively similar to the [NAME] [NAME]. 110 The difficulty lies, however, in the additional requirements that the sign be used as a [NAME] and in the separate requirement in s 120(3)(c) that, because the [COMPANY] trade [NAME] are well known, [NAME]'s use of the Offending Logo would be likely to be taken as indicating a connection between the unrelated services and the [COMPANY]. Those two requirements are discussed further below.

(ii) Use of the Offending Logo "as a [NAME]" 111 Both ss 120(1) and (3) require that, for there to be an infringement, the relevant sign the subject of the infringement allegation must be used "as a [NAME]". Section 17 of the TM Act defines a "[NAME]" as follows: 17 What is a [NAME]? A [NAME] is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Note: For sign see section 6. 112 Whether a sign is being used as a [NAME] is "a pivotal question" and "requires an understanding of the 'purpose and nature' of the impugned use…" (see [NAME] at 347 per [NAME[NAME]). In Anchorage, the [ADDRESS] said at [54] that use of the mark as a [NAME] "involves use of the mark to distinguish the goods or services of the person using the mark from the goods or services of other persons or, as it is sometimes expressed, as a badge of origin indicating a connection in course of trade between the goods or services in relation to which the mark has been used and the person applying the mark". Further, in Woolworths, the [ADDRESS] said at [77] (which is set out at [21] above) that the question whether or not there has been use as a [NAME] involves an understanding, viewed objectively, of the purpose and nature of the use, considering its context in the relevant trade. Thus, the context in which use occurs is important and a mark may be used as a [NAME] even though it performs several functions, only one of which is to act as a badge of origin. 113 I accept [NAME]'s submission that it is not using the letters "[COMPANY]" in the Offending Logo, being a sign, as a [NAME]. An important objective factor in determining this issue is the context in which the use of the sign has occurred. That context is an ongoing industrial dispute between the parties. [NAME]'s use of the sign occurs in the context where it is not seeking to distinguish any goods or services provided in the course of trade by one person from goods or services provided by another person. Rather, it is using the sign, the [COMPANY], to identify that organisation as the owner of the [NAME], which is the target of its industrial campaign. 114 Nor is [NAME] using the sign as a "badge of origin" to indicate a connection, in the course of trade, between goods or services and the person who applies the mark to those goods or services. The evidence is clear that [NAME] is using the Offending Logo as the "brand" of the campaign, in the sense that it identifies the industrial campaign and the [COMPANY] as the target of that campaign. The evidence does not, however, establish that the Offending Logo is being used to indicate a connection between goods or services provided in the course of trade by [NAME]. I accept [NAME]'s submission that it is artificial to regard [NAME]'s industrial campaign as the provision of a service to its members in the course of trade. [NAME] is not a business; it does not have a trade. Nor should it be regarded as providing services to its members. Functionally, the members are the Union. The activities using the Offending Logo are conducted by the members of the Union for their own benefit, albeit under the auspices of [NAME]. Even if it is accepted [NAME] as an organisation is using the Offending Logo through its members, it is not using the Offending Logo as a [NAME]. The Offending Logo is not being used as a [NAME] within the meaning of s 17 or the relevant caselaw.

(iii) [NAME] infringement under s 120(1) 115 For the reasons given above, I reject the [COMPANY]'s claim that [NAME] infringed s 120(1) of the TM Act.

(iv) [NAME] infringement under s 120(3) 116 [NAME] admitted that the [COMPANY] trade [NAME] as identified in Sch 1 of the ASOC were "well known in Australia". Thus the condition in s 120(3)(a) is met. 117 Turning to the conditions in s 120(3)(b), even if the Offending Logo is viewed as a sign that is substantially identical with, or deceptively similar to, any of the [COMPANY] trade [NAME] (and, as noted above, I consider that is the case in respect of the [COMPANY] 437 TM Registration), and also that the use of that sign is in relation to services unrelated to those covered by the [COMPANY] trade [NAME], this condition would still not be satisfied because, for similar reasons to those given above at [111] ff, the sign is not being used as a [NAME]. 118 There are additional difficulties with the [COMPANY]'s s 120(3) infringement case. A fundamental difficulty is that, for there to be an infringement under s 120(3), it must be established that the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the [NAME] of the [NAME] and that the use of the [NAME] is likely adversely to affect the interests of the [NAME] owner (being in this case the [COMPANY]). It is notable that, in contrast with the position under s 120(1), the reference points between the requisite indicative connection is between the unrelated goods or services of the respondent and the [NAME] of the [NAME] without explicit reference to services in respect of which the owner's [NAME] is [NAME]. 119 The context in which the sinking ferry sign has been used does not suggest a relevant connection between its use and the [COMPANY]. The Offending Logo has been displayed on T-shirts and Placards and used in communications protesting against the [COMPANY]. The Offending Logo is generally used accompanied by the text, such as: [COMPANY] AND [NAME] Its time to negotiate a fair deal with your workers. Don't let wages sink to the bottom of [NAME]. 120 Rather than suggesting any connection between the image and the [COMPANY], the circumstances and substance of the communications plainly indicate an intention to protest against the [COMPANY]. There is no likelihood that a member of the [NAME] or a [COMPANY] customer (or likely customer) or [COMPANY] investor (or likely investor) would think there is a connection between the communications and the [COMPANY] or that the image comes from the "same source". No such person would think that the [COMPANY] was calling upon itself to increase wages of its employees or criticising itself for letting wages sink to the bottom of the harbour. The suggestion that people (or, more specifically, [COMPANY] customers (or likely customers) or [COMPANY] investors (or likely investors)) might think the [COMPANY] had in any way "sanctioned, approved or otherwise been involved in the distribution of the pamphlets" or other communicators complained of is rejected. 121 I am not persuaded that [NAME]'s use of the Offending Logo is likely to be taken as indicating a connection with the [COMPANY] in the sense referred to in that provision. Context is a very important consideration in determining whether the requisition connection exists. The sign is used as part of the Offending Logo to identify the [COMPANY] as the operator of the [NAME], to which the industrial campaign is principally directed. Taking into account the context of the industrial campaign and the particular circumstances in which the Offending Logo is used so as to target the [COMPANY] and put pressure on it to accede to [NAME]'s demands, I do not accept that persons viewing the Offending Logo in that context would see it as indicating any connection with the [COMPANY] apart from it being the target of the industrial campaign. 122 That is sufficient to dismiss the [COMPANY]'s claims of infringement under s 120(3). 123 For completeness, I should indicate that I do not consider that this is a case where [NAME] has adopted the [COMPANY] trade [NAME] with a view to "sailing close to the wind", which is a potentially relevant contextual matter (see [NAME] at 129 per [NAME]). The [COMPANY] placed particular reliance upon the terms on an internal [NAME] email dated 18 October 2018. The email was sent shortly before the industrial campaign began. It relevantly stated (emphasis added): [NAME] is looking to launch a campaign targeting the [COMPANY]. The [COMPANY] recently purchased [NAME] ([NAME]) and are resisting the workers' demand that they settle a fair collective agreement. [NAME] will be running a series of direct actions looking to disrupt [COMPANY] marketing, as well as an online campaign targeting their brand. The first action will take place on Friday November 2nd. For this campaign, we want some graphics that hack the [COMPANY] logo, and marketing. The graphics would be used for [NAME], [NAME], placards and banners. 124 This email should not, however, be viewed in isolation. Shortly after it was sent, another [NAME] ([NAME] [NAME]) asked the authors who had sent the earlier email whether their proposal had been run by the [NAME]'s legal department. She rhetorically asked: "Before we go brand hacking?". 125 While it may be accepted that [NAME] campaign deliberately targeted the [COMPANY] brand, I do not accept that [NAME] was "sailing close to the wind", in the sense referred to in [NAME]. In particular, some weight must be placed on other internal [NAME] emails which indicate that there was a genuine concern not to encroach upon the [COMPANY]'s intellectual property rights and that steps were taken to minimise the risk of that occurring. For example, in an email dated 23 October 2018 from [NAME] [NAME] (the National Digital Campaigner for the [NAME]), to one of the authors of the 18 October 2018 email ([NAME] [NAME]). [NAME] [NAME] asked for more background information "to make sure we get this right". Similarly, [NAME] [NAME] emailed [NAME] [NAME] on 25 October 2018 and asked him to "touch base" with [NAME] [NAME] because he had "an issue with the [COMPANY] logo". On 26 October 2018, [NAME] [NAME] sent another email to [NAME] in which he said that he had spoken to another [NAME] ([NAME]) regarding the logo. [NAME] [NAME] said: … The issue is the [COMPANY] is trademarked and type of swines that would sue (sic). In line with what you have done I would suggest something along the lines of… 1. Keep the theme about the boat sinking.

2. Put some line in like "Don't let wages sink to the bottom of the harbour". 3. "It's time for [COMPANY] and [NAME] to sit down with workers and negotiate proper wages".

4. And then maybe something at the bottom like "Com on [COMPANY] and [NAME]! Ferry workers deserve a fair go!". Or something to that effect. 126 Shortly thereafter, the Offending Logo was finalised. This evidence suggests that [NAME] wanted to use the [COMPANY] logo as part of its industrial campaign, but not in a way which would cause an infringement. This concern caused the logo to be modified in the way in which it finally appeared as part of the Offending Logo. To avoid doubt, I am not suggesting that the infringement case fails merely because [NAME] implemented steps with a view to avoiding any such infringement. Rather, I point to these matters in explaining why, as a matter of context, this case falls short of "sailing close to the wind". 127 In view of the findings above, it is unnecessary to resolve a debate which has arisen regarding the proper construction of s 120(3) and whether it contains a specific anti-dilution infringement provision, along the lines of anti-dilution provisions in, for example, s 43 of the Lanham Act or Art 5(2) First Council Directive 89/104/EEC (now reflected in Art 10(2)(c) of Directive 2015/2436). In those jurisdictions, protection is provided to a well-known [NAME] against a loss of distinctiveness and there is no requirement to prove actual confusion on the part of [NAME]. The objective of anti-dilution provisions is to protect against "a gradual whittling away or dispersion of the identity and hold upon the [NAME] mind of the mark or name by its use upon non-competing goods" (see [NAME], "The Rational Basis of [NAME] Protection" (1927) 40 Harvard Law Review 813). At the heart of the debate is whether s 120(3) of the TM Act requires proof of confusion. The competing views are ventilated in [NAME] at [85.795], [NAME] and [NAME], "Dilution Down Under: The Protection of Well-[NAME] in Australia" [2006] European Intellectual Property Review 174 and [NAME], "[NAME] in Australia?" [2007] European Intellectual Property Review 307. 128 In view of the findings above concerning the failure of the [COMPANY] to establish the conditions in s 120(3)(b) and (c), it is unnecessary to determine whether the condition in s 120(3)(d) is established (i.e. that its interests are likely to be adversely affected). 129 For these reasons, I reject the [COMPANY]'s claim that [NAME] infringed s 120(3) of the TM Act.

(b) Misleading or deceptive conduct 130 The representations complained of are set out at [52], [53], [56], [58] and [61] above. Before addressing each of those categories of representations, it is necessary to address the threshold question whether or not the conduct giving rise to those representations is conduct "in trade or commence". This is a central issue in this part of the [COMPANY]'s case. For this purpose, it is sufficient to focus on the relevant provisions of the [NAME] (which have been incorporated into the State [NAME]) ([NAME] at [32]). I shall assume, without determining the matter, that [NAME] is a body to which the relevant provisions of the Commonwealth and State [NAME] applies.

(i) Is the conduct in trade or commerce? 131 The term "trade or commerce" is defined in s 4(1) of the CC Act and s 2(1) of the [NAME] to refer to trade or commerce within Australia or between Australia and places outside Australia. The definition in s 2(1) also refers to "any business or professional activity (whether or not carried on for profit)." 132 Although a wider operation of the provision may be envisaged, the High Court determined, in [NAME], that a narrow construction should be adopted to the phrase "in trade or commerce" in s 52 of the Trade Practices Act 1974 (Cth). The approach in [NAME] remains applicable to ss 18 and 29 of the [NAME]. The key principles established in [NAME] may be summarised as follows. (a) The prohibition on misleading or deceptive conduct is not confined to cases involving the protection of [NAME] alone, but [NAME] protection nevertheless lies at the heart of the legislative purpose of the prohibition, as was reflected in the heading "[NAME] Protection" to Pt V of the Trade Practices Act and now in the very name of the [NAME] which is Sch 2 to the CC Act and this affects the proper construction of the phrase "in trade or commerce" (at 601-602). (b) The phrase "in trade or commerce" has a restrictive operation. It refers only to conduct "which is itself an aspect or element of activities or transactions which, of their nature, bear a trading or commercial character." Thus it refers to the central conception of trade or commerce and not to the immense field of activities in which corporations may engage in the course of, or for the purpose of, carrying on some overall trading or commercial business (at 603). The focus is on the conduct which is alleged to be in breach of the prohibition and not upon the range of activities in which the relevant corporation engages. (c) The prohibition was not intended to impose "by a side-wind, an overlay of Commonwealth law upon every field of legislative control into which a corporation might stray for the purposes of, or in connection with, carrying on its trading or commercial activities" (at 604). (d) It is insufficient that conduct concerns matters of trade or commerce or that it could be said to be in relation to trade or commerce or have some connection with trade or commerce(at 614). Rather, the relevant conduct must actually be "in" trade or commerce or, alternatively, "as part of trade or commerce". (e) The section is concerned with "the conduct of a corporation towards persons, be they [NAME] or not, with whom it (or those whose interests it represents or is seeking to promote) has or may have dealings in the course of those activities or transactions which, of the nature, bear a trading or commercial character" (at 604). (f) Importantly, the dividing line between what is or is not conduct "in trade or commerce" may be less clear and may require the identification of what imports a trading or commercial character to an activity which is not, without more, of that character (at 604). 133 There is a body of caselaw which indicates that it is not the intention of ss 18 and 29 of the [NAME] (or its predecessor) to govern [NAME] or political debate. These cases involve a more specialised enquiry focussed on whether the impugned conduct is itself in trade or commerce, rather than merely capable of affecting trade or commerce. As [NAME[NAME] observed in [COMPANY] v [NAME] [COMPANY] [2004] FCA 133; 134 FCR 422 at [61]-[63] (emphasis added):

61. The representations in question were all made in the context of a planning application having been made to rezone Tralee – an application which [NAME] openly and repeatedly opposed. Its opposition was consistent with its own business interests and took the form of community consultation and representation for the purpose of informing and influencing [NAME], political and governmental opinion. By virtue of the provisions of the Airports Act (and especially s 71), [NAME] had a necessary and ongoing interest in aircraft noise and its incidence. It sought to engage community interest not only in the subject of noise exposure as a matter of [NAME] concern but also in its specific opposition to the Tralee development. In both respects it was engaging in what properly should be described as political activity, but especially so in relation to the latter. The rezoning application highlighted both conflicting private interests and conflicting [NAME] interests. Those conflicts could only be resolved by governmental action. In seeking, directly or indirectly, to contrive or influence outcomes by representations made in [NAME] debate, or in the processes of informing the [NAME], [NAME] was engaging in activities of a political, not of a commercial or trading, character. And this was not the less so because its activities were informed by a degree of self-interest. Altruism is often a stranger to political action. 62 It is notable that the impugned representations were not made in circumstances in which it could properly be said that [NAME] was promoting, directly or indirectly, the services provided by the airport. It was, nonetheless, acting to protect its business. As I earlier indicated, action so taken is not for that reason alone in trade or commerce. It would be surprising if the legislature had intended the contrary to be the case in the Trade Practices Act. Corporations engage directly and indirectly in [NAME] and political debate on a myriad of matters that do or might impact actually or prospectively on their own interests. While all such debate will not be beyond the reach of s 52 of the Trade Practices Act: see e.g. [NAME] [COMPANY] v [COMPANY] (1992) 38 FCR 1; much will be as it will not be directed at [NAME] (actual or potential), or will not be an incident of an activity which bears a trading or commercial character. 63 [NAME] is seeking to do in this proceeding is to have imposed on [NAME] "by a side-wind": cf [NAME]; a form of legislative control in circumstances in which s 52 has no role to play. One may desire conduct in [NAME] and political debate to be not misleading or deceptive. Section 52 is not designed to secure that state of affairs. In saying this I express no view on whether or not [NAME]'s conduct was misleading or deceptive. 134 Other decisions have confirmed that communications or conduct (including by corporations who are engaged in commercial or trading businesses), in the course of [NAME] or political debate are likely to fall outside of the phrase "in trade or commerce". A good example is [NAME]. The question there was whether false statements by persons associated with the [NAME] regarding electronic dog collars which were manufactured by the applicants were statements made in trade or commerce. It was held that the [NAME]'s trading activities were anything but modest and that it was a "trading corporation" within the meaning of s 4 of the Trade Practices Act. Although having found that the [NAME] was a trading corporation, [NAME[NAME] noted at [192] that many of its functions had a non-trading or commercial character. He emphasised that the relevant statements were part of "an educational and political agenda" (at [193]). Although they may have provided some benefit to the [NAME] from greater [NAME] exposure of its intellectual property, including its name and logo, [NAME[NAME] described those benefits as "purely incidental". He concluded that the applicants had not established that the statements were made "in trade or commerce" (see also [NAME] [COMPANY] v [NAME] (1993) 32 NSWLR 559 (statements in relation to the dangers passive smoking); [NAME] v [NAME] (1997) 80 FCR 303 (statements made by an academic in the course of [NAME] lectures and taped interviews) and [NAME] itself (representations made by the owner of [NAME] and [NAME] regarding noise forecasts or projected flight-paths for the [NAME] which affected the applicant's proposed land use activities)). 135 It was properly acknowledged by [NAME] [NAME] SC that there is no precedent which establishes that the conduct of a [NAME] or its members in campaigning for improved wages or conditions of employment constitutes conduct "in trade or commerce". Conduct in the course of an existing employment relationship is unlikely to constitute conduct "in trade or commerce" even where it is the conduct of the parties to the relationship itself (see, for example, [NAME] v Wittenberg [2016] FCAFC 33; 242 FCR 505). Similarly, I consider that statements by an employer to its employees in the context of a proposed [NAME] will not generally constitute conduct "in trade or commerce". By analogy, representations made by a [NAME] in the context of an industrial campaign in relation to the existing conditions of employment of employees will generally fall outside conduct that is "in trade or commerce". 136 Another important matter to bear in mind is that the enquiry must remain focussed on the particular conduct which is said to be misleading or deceptive. As [NAME[NAME] observed in [COMPANY] v [NAME] and [NAME] Commissioner [2013] HCA 1; 249 CLR 435 at [89] (emphasis in original): Section 52 and the identification of the impugned conduct The generality with which s 52 was expressed should not obscure one fundamental point. The section prohibited engaging in conduct that is misleading or deceptive or is likely to mislead or deceive. It is, therefore, always necessary to begin consideration of the application of the section by identifying the conduct that is said to meet the statutory description "misleading or deceptive or ... likely to mislead or deceive". The first question for consideration is always: "What did the alleged contravener do (or not do)?" It is only after identifying the conduct that is impugned that one can go on to consider separately whether that conduct is misleading or deceptive or likely to be so. 137 In the present case, the impugned conduct is the conduct identified by the [COMPANY] as giving rise to the representations which it says are misleading or deceptive (see above at [52], [58], [61], [62] and [63]). 138 The conduct and representations the subject of complaint by the [COMPANY] are, on their face and in their proper context, part of an industrial and incidental political campaign (noting the role of the [NAME] Government as described at [6] above, and the correspondence which was in evidence between [NAME] and the [NAME] Government concerning the dispute) aimed at securing [NAME] employment, achieving wage outcomes consistent with industry rates and recouping underpayments for employees. The conduct complained of has no trading or commercial character and is not directed at any person with whom [NAME] has, or potentially has, any trading or commercial relationship. 139 The substance and content of the communications subject of the proceedings are overtly industrial and/or political in substance and purpose. The communications or publications all directly concern [NAME]'s views as to the fairness of the wages or conditions of employment of employees working on the [NAME] service, including whether the rates of pay are adequate and the insecure nature of the employment. For example, each of the Pamphlets contains the following words encapsulating the campaign: [COMPANY] AND [NAME] Its time to negotiate a fair deal with your workers. Don't let wages sink to the bottom of [NAME]. 140 [NAME] is not a commercial business and is not engaged in trading activities in representing its members. The Rules of the [NAME] set out the objects of the union which concentrate on regulating and protecting the wages and conditions of members, regulating the relations between members and employers and fostering the best interests of members. 141 It is not sufficient that some or even most of the communications relate to or concern the business of the [COMPANY] or [NAME]. The conduct must itself be undertaken in trade or commerce and have a trading or commercial character. 142 In support of its contention that the relevant conduct was in trade or commerce, the [COMPANY] relied heavily on the High Court's decision in [NAME] and emphasised that it post-dated [NAME]. As noted above, it relied upon [NAME] for the proposition that the central question was not whether the activities of [NAME] were "in trade or commence", but rather whether its conduct and representations were directed to persons who themselves are "in trade or commerce". In oral address, [NAME] [NAME] SC refined this submission into a contention that, by their representations, [NAME] had "thrust themselves" into the [COMPANY]'s trade or commerce. 143 In [NAME], which concerned the equivalent provision in s 9(1) of the Fair Trading Act 1999 (Vic), the High Court held that two employees ([NAME] [NAME] and [NAME]) of a corporation (trading under the name "[NAME]") which had been engaged to advise on website design, construction and administration were personally liable (as well as the corporation itself), for representations made by them which were misleading or deceptive concerning the extent of documentary obligations which would fall on participants on the internet website being set up by the applicant ([NAME]) in developing an online wine order business. The representations were to the effect that the applicant would be able to operate the website without having to obtain from participating wineries any documentation other than a form with provision for banking details. The plurality held at [34] that statements made by a person who was not himself or herself engaged in trade or commerce may be caught by the prohibition if, for example, "they are designed to encourage others to invest, or to continue investments, in a particular trading entity", citing [NAME] v [NAME] (1997) 70 FCR 489 at 531 per Sackville J (although there is no mention in [NAME], an appeal from Sackville J's decision was dismissed in [NAME] v [NAME] and an application for special leave to appeal was refused on 19 June 1998). 144 The core finding in [NAME] is at [35]: [NAME] was engaging in trade and commerce under the name "[NAME]" and by means of the auscellardoor web site. He enlisted [NAME] to provide services and advice for the purposes of his business. It was the business of [NAME] to provide such advice and services. It is not to the point that [NAME] [NAME] and [NAME] [NAME] themselves were not business proprietors or that their activities were an aspect or element of the trade or commerce of [NAME] (and of [NAME]) but not of "their" trade or commerce. [NAME] [NAME] and [NAME] [NAME] nevertheless engaged in conduct in the course of trade or commerce and were thus within the ambit of the FT Act. 145 In my view, [NAME] turns very much on its own facts. I do not consider that it establishes an absolute and unqualified principle that it is sufficient to establish that conduct is "in trade or commence" if the persons to whom representations are made are themselves in trade or commence even if the person making the representation is not. In [NAME], there undoubtedly was a trading or commercial relationship between [NAME] and [NAME] in the form of the services and advice being provided by the former to the latter in establishing an online wine order business. The fundamental point made by the plurality in [NAME] at [35] was that it was unnecessary to establish that the conduct of the two employees was in "their" trade or commerce in circumstances where the conduct of their employer ([NAME]) plainly was conduct in trade or commerce and the employees' activities were an aspect or element of [NAME]'s trade or commerce. 146 The plurality's reference to [NAME] is revealing. [NAME], which involved claims of misleading or deceptive conduct under both the then Trade Practices Act and the Fair Trading Act 1987 ([NAME]), related to whether statements made in [NAME] lectures and in tapes of the lectures were made "in trade and commerce". The statements were made by an [NAME], Dr [NAME]. They were made in the course of [NAME] lectures in which Dr [NAME] advanced the hypothesis that a boat-shaped geological formation in Eastern Turkey is or could contain the remnants of Noah's Ark and thereby provide tangible evidence of the literal truth of the account of the great flood in Genesis, 6:13-8:19. Justice Sackville emphasised at 528 that the critical question was whether Dr [NAME] statements constituted "conduct which is itself an aspect or element of transactions which, of their nature, bear a trading or commercial character" (emphasis in original), quoting [NAME]. Other cases to which [NAME[NAME] referred, included [COMPANY] v Kerin [1992] FCA 211; 35 FCR 272, where it was held that a speech given by a Commonwealth Minister at an overseas conference, which statements the Minister conceded were intended to influence wool prices in the interests of Australian wool growers and to persuade people to buy the product, were held not to have been made "in trade or commerce". The statements were described by [NAME] as not having been made as an aspect or element of activities or transactions which, of their nature, bear a trading or commercial character, but rather were statements made in relation to trade or commerce. 147 Justice Sackville also referred to [COMPANY] v [COMPANY] (1994) ATPR (Digest) 46-130. In that case, claims were made that comments by two Victorian Government Ministers were misleading or deceptive. The claims related to [NAME] statements by the Ministers which represented that investments in the [COMPANY] were secure and that there were no risks to investors. The building society later failed. The Ministers unsuccessfully sought to strike out portions of the statement of claim on the basis that their statements had not been made in trade or commerce. Justice Hedigan stated at 53,631 that the conduct in question "does not have to be conduct in connection with one's own business, and that it would be sufficient if the conduct engaged in was for the purpose of promoting the business of some other person or corporation". In analysing [NAME], Sackville J said in [NAME] at 530 that the Ministers' statements were arguably made to "shore up" the building society during the time when there was a run by depositors and the statements were capable of being viewed as "promotional activities" in respect of a particular trading corporation. 148 It was in this context that, in [NAME], Sackville J said at 531: [NAME] statements by a person not engaged in trade or commerce himself or herself, may be made in trade or commerce if designed to encourage others to invest, or continue investments, in a particular trading corporation: [NAME]. 149 This is the passage which the plurality in [NAME] referred approvingly to at [34]. I do not consider that this supports the [COMPANY]'s case here. That is primarily because the conduct of [NAME] which is challenged is not conduct which was "designed to encourage others to invest, or continue investments" in the [COMPANY]. Rather, it was designed to secure improved terms and conditions of employment by [NAME]. For similar reasons, I do not consider [NAME] [COMPANY] v Country Fire Authority [1999] FCA 761; 93 FCR 520 at [62]-[67] assists the [COMPANY]'s case. That case concerned a bulletin issued by the Country Fire Authority to its equipment maintenance servicing brigades and [NAME] or potential [NAME] of the applicant's fire extinguishers. The bulletin expressed a view that the applicant's extinguishers did not meet Australian Standards for use with respect to certain classes of fire. Justice Goldberg held at [64] that the bulletin was of "a trading and commercial character" because and it was intended to "influence servicing brigades not to be involved in the distribution or recommendation of the [NAME] extinguisher" and "have a consequence or impact on trading and commercial activities". 150 It is important to apply the relevant principles (including those in [NAME]), with close attention to the facts and circumstances of the particular case. I view the following matters as particularly important here: (a) there was no commercial or trading relationship between the [COMPANY] and [NAME]; (b) [NAME]'s conduct occurred in the course of an industrial campaign which was directed to securing improved terms and conditions of employment for [NAME]; (c) the conduct complained of was not motivated by a desire on the part of [NAME] to promote any of its business activities but, as has been emphasised, was designed to secure improved working conditions; (d) although [NAME]'s conduct in conjunction with the [COMPANY] was plainly directed at [COMPANY] members and other persons who were attending that meeting, I do not consider that the conduct was undertaken with a view to discouraging [COMPANY] members from maintaining their membership. [NAME] clearly wanted to enlist the support of [COMPANY] members in their industrial dispute but that is a common feature of any industrial campaign targeting a particular trading or commercial body; (e) similarly, any such industrial campaign is likely also to be directed to a wider section of the [NAME], not confined to the target company itself, in order to garner [NAME] support for the campaign; and (f) none of conduct said to give rise to the representations pleaded by the [COMPANY] was primarily directed to encouraging or discouraging members of the [NAME], or members of the [COMPANY] from investing in the [COMPANY]'s businesses or providing patronage to its businesses. Rather, the underlying conduct was directed to garnering support from the [NAME] and members of the [COMPANY] for [NAME]'s industrial campaign for better wages and working conditions for the [NAME] workers (such as the emails to [NAME] [NAME] referred to at [11] above). In this regard, it is worth noting expressly that [NAME] [NAME] calls to boycott [COMPANY] services (see above at [72]) were not relied on as founding any of the [COMPANY]'s misleading or deceptive conduct claims. 151 It is clear that [NAME]'s industrial campaign was directed to a much wider audience than the [COMPANY] itself, including its staff and members. This is reflected in the extensive use of social media, Pamphlets, Placards and the Logo T-Shirts, which were designed to engage the interest and support of members of the [NAME], including [NAME] customers. Unlike the position in [NAME], the conduct was not designed to encourage others not to invest in a particular trading entity. [NAME]'s conduct is also far removed from that which arose in [NAME], upon which the [COMPANY] also relied. The deceptive conduct there was specifically directed to the trading or commercial activities of the building company. That was because the television reporter used the false pretext of inquiring about the possibility of engaging the building company's commercial services with a view to procuring an interview for the purposes of broadcasting it in a telephone program. 152 Finally, it is relevant to note that acceptance of the [COMPANY]'s position concerning the [NAME] would bring the entire field of industrial relations within the operation of [NAME] legislation. It is highly unlikely that was the intention of either the Commonwealth or [NAME] State Parliament. It is not without significance that at the Commonwealth level, detailed and specialised legislation, principally in the form of the Fair Work Act 2009 (Cth), has been enacted to regulate industrial matters. That legislation contains specific prohibitions on misrepresentations relating to workplace rights or industrial activities (see, for example, ss 345 and 349 of the Fair Work Act), as well as an array of specific regulations governing the conduct of the participants in industrial disputes. This is a relevant, but not determinative, contextual consideration. 153 For completeness, I should also make clear that I am not suggesting that there is a global carve out from the [NAME] of all conduct and activities of a [NAME]. As the analysis above of some of the relevant caselaw relating to the making of political comments or statements reveals, each case necessarily turns upon its own facts and circumstances. The expression "in trade or commerce" is somewhat chameonlic and does not lend itself to dogmatic prescription. 154 For these reasons, I consider that the relevant conduct of [NAME] was not conduct "in trade or commerce". That is a sufficient reason alone to dismiss the [COMPANY]'s claims under both the Commonwealth and State [NAME].

(ii) Some other matters concerning the [NAME] 155 In view of my finding above that the conduct complained of is not conduct "in trade or commerce", it is unnecessary to determine whether or not, for the purposes of the State [NAME], [NAME] carries on business within the State or is otherwise connected to the State ([NAME] at [32]). Nor is it necessary to determine, for the purposes of the [COMPANY]'s complaints concerning s 29 of the [NAME], whether or not the relevant representations were made "in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services". 156 Although it is also unnecessary to determine the question whether the representations or conduct complained of are in fact misleading or deceptive, having regard to the detailed submissions made by both parties on that issue and the overlap with the injurious falsehood case, it is perhaps desirable that I make the following brief observations. 157 The principles for determining whether conduct is misleading or deceptive are well settled. They may be summarised as follows: (a) It is necessary to identify the relevant section of the [NAME], which may be the [NAME] at large, by reference to whom the issue is to be tested. (b) The matter is to be considered by reference to all who come within the relevant class. (c) It is not essential that there be evidence that some person has in fact formed an erroneous conclusion because the Court must determine the issue of whether the conduct is misleading or deceptive for itself, and the test is an objective one. (d) In determining whether conduct is misleading or deceptive, it is necessary to view the conduct as a whole and it is wrong merely to select words or acts which, if considered alone, would be likely to mislead or deceive, but which in context are not capable of giving rise to that description (see [COMPANY] v [COMPANY] [1982] HCA 44; 149 CLR 191 at 199 per [NAME]. In the particular circumstances of this case, a significant contextual matter is that the conduct complained of occurred in the context of what might fairly be described as an aggressive industrial campaign targeting the [COMPANY]. 158 With those [NAME] principles in mind, I now turn to the various categories of representations which are the subject of the [COMPANY]'s complaint.

A. The safety representation 159 The safety representation is described at [52] above and the reasons why the [COMPANY] contends that the representation is false are outlined at [53] above. The relevant section of the [NAME], are the persons to whom the impugned statements were directed, such as persons attending the [COMPANY]; passengers and potential passengers using the [NAME] service; members of the [NAME] who saw the Placards, Pamphlets and Logo T-Shirts and people who viewed the relevant social media material. 160 It is important to focus on how the [COMPANY] has pleaded this part of its case. Although it refers to various statements made by [NAME] on safety matters (which are set out at [26] of the ASOC) and form part of what are described there as the "Offending Statements", the safety representation itself (which forms part of the "First Representations" in the ASOC), is confined to a representation that "the [COMPANY] is not a safe ferry operator and its safety standards fall short and are not at an appropriate level". The [COMPANY] does not plead that each of the individual Offending Statements relating to safety as pleaded in [26] of the ASOC gives rise to its own separate safety representation. Rather, the various individual statements are aggregated and characterised as giving rise to the representation concerning safety which is pleaded at [27] of the ASOC. This reading of the pleading is reinforced by the fact that, in that part of the ASOC ([30]) which pleads why the representation is false, misleading or deceptive, the [COMPANY] only addresses the aggregated safety representation and not the individual Offending Statements which are said to convey it. 161 Thus it is sufficient to focus on the aggregated safety representation, namely that the [COMPANY] is not a safe ferry operator and its safety standards fall short and are not at an appropriate level. 162 [NAME] denies that its conduct conveyed the pleaded safety representation. I disagree. The pleaded representation is supported by two of the four Offending Statements, which [NAME] accepts were made by its officials in the course of the industrial campaign. Those statements are: (a) the video posted by [NAME] on [NAME] on or around 2 November 2018 which said (emphasis added): [NAME] rally at the [COMPANY]. Their company [NAME] underpays and robs workers running with a shonky safety system; and (b) the item posted by [NAME] on [NAME] on or around 11 December 2008, which stated (emphasis added): [NAME] workers at [COMPANY] company [NAME] are being treated like second class citizens: 100 percent [NAME], underpaid and forced to work in unsafe conditions. 163 In my opinion, the pleaded safety representation is sufficiently conveyed by those two statements. 164 The following two statements which were also relied upon by the [COMPANY] as supporting the pleaded safety representation do not convey that representation: (a) the item posted on [NAME] by [NAME] [NAME] on or around 25 October 2018, which described the [COMPANY] as "[A]nother ferry company that underpays workers and haves (sic) a very poor safety management system". As [NAME] pointed out, this statement was not directed to [NAME] but rather to another ferry business which the [COMPANY] had acquired, called [NAME], and thus it did not amount to a representation about the safety standards of [NAME]; and (b) nor do I accept that material on the [NAME] conveyed the pleaded safety representation. That website included a copy of the petition to [NAME] [NAME] which [NAME] encouraged people to sign in support of its industrial campaign. The website included a copy of the Offending Logo which was accompanied by text and which contained the statement "Don't sink wages to the bottom of [NAME]". The text below the Offending Logo also included the following additional statement: [COMPANY]: its time (sic) to treat your workers with the respect and dignity they deserve. [NAME] harbour workers want job security, to be paid industry rates, and worlds (sic) best practice safety standards. 165 If necessary, I would have accepted [NAME]'s submission that the reference to "worlds (sic) best safety standards" expresses an aspiration of [NAME] workers and does not, by itself, convey the pleaded safety representation. 166 I should add that, if necessary, I would not have accepted the [COMPANY]'s contention that the safety representation is supported by the Offending Logo which appeared on the Pamphlets, Placards and Logo T-Shirts. The [COMPANY] contends that this conveys the notion of "a sinking and unsafe ferry". That might be the case if the Offending Logo was unaccompanied by any text. But that is not the case. The accompanying text made clear that the concept or metaphor of the ferry sinking is related not to safety, but to wages. I would reject the submission that people who viewed the Offending Logo in these various forms would not absorb that important accompanying text. 167 As to the safety representation, [NAME] [NAME] said at [99] of his first affidavit that the relevant statements were not intended to refer to the safety standards of the [COMPANY] generally, but were a reference to the safety standards of [NAME]. He accepted under cross-examination nevertheless that the statements amounted to saying that the [NAME] safety standards fell short and that the [NAME] safety standards were not at an appropriate level. I accept that evidence. 168 Accepting as I do that the safety representation was made by [NAME], the issue is whether it was false or inaccurate so as to be misleading or deceptive. If it had been necessary to decide this issue, I would have determined it in the [COMPANY]'s favour based upon the matters outlined at [53] above. I would have rejected [NAME]'s submission that the representation should not be viewed as false or inaccurate because the Offending Statements which convey it were isolated statements in a wider industrial campaign which focussed on wages and conditions and not the safety of [NAME]. 169 Nor would have I accepted [NAME]'s submission that there was sufficient material to establish the accuracy or correctness of the relevant two Offending Statements which conveyed the safety representation. While it is true that [NAME] had been made aware of concerns in relation to safety practices and that [NAME] [NAME] conducted a safety inspection in August 2018, and identified various safety issues, I do not accept that those matters provide a sufficient basis for the two relevant Offending Statements.

B. The non-permanency representations 170 The non-permanency representations of which the [COMPANY] complains are set out at [56] above. 171 [NAME] accepted in final address that at the time the claims of no [NAME] employees were made, two or three persons may have converted to permanency out of a total of ninety staff. In particular, it accepted that when it was stated that there had been no offer of a single [NAME] job, there had in fact been one offer at that time and that, as at 14 June 2019, there were three [NAME] employees. 172 If it had been necessary to determine this aspect of the [COMPANY]'s case, I would have upheld its claims that the representations were false. [NAME] did not dispute that the non-permanency representations were made by it, and it accepted that they were "technically inaccurate". The evidence is plain that the representations were false at the time they were made. It is no answer that the statements were not corrected by the [COMPANY] at the time that they were made.

C. The wages representation 173 As noted above, during the course of the hearing the [COMPANY] narrowed its claim in respect of this subject by confining its complaint to [NAME]'s representation that it had deliberately forced the [NAME] workers "to accept below minimum wages". To establish the representation, the [COMPANY] relied on a statement by [NAME] that [NAME] "management have been deliberately forcing their workers to accept below minimum conditions, and robbing them of their rightful pay rates". The [COMPANY] submits that [NAME]'s claim amounts to a representation that the [NAME] workers earned below the national minimum wage. 174 If necessary, I would have determined that this representation was not misleading or deceptive in the manner claimed by the [COMPANY]. I do not accept that a member of the relevant section of the [NAME] would understand that statement to be a reference to the national minimum wage. The position might be different if the reference was to "below the minimum wage", but it is significant that the statement refers to "below minimum conditions" and "rightful pay rates". 175 I do not accept that the [COMPANY]'s case is advanced by reference to what [NAME] [NAME] said in the radio interview on [NAME]. As mentioned, this statement is not part of the [COMPANY]'s pleaded case. Moreover, no evidence has been adduced to suggest that people who were exposed to the statement that the [COMPANY] had forced [NAME] workers "to accept below minimum wages", included the radio audience who heard the interview. 176 For these reasons, I would have rejected the [COMPANY]'s case insofar as it relates to the wages representation.

D. The derogatory representations 177 The representations complained of are to the effect that [NAME] workers are not being treated with respect, decency and/or dignity and that the [COMPANY] treats its employees as second-class citizens. The [COMPANY] asserts that the representations are false because the company has various policies dealing with matters such as bullying and harassment, health and safety, whistle-blowing and an ethics hotline. 178 If it had been necessary to determine the matter, I would have found that each of the references to treating employees with dignity and respect is, on its face, connected to the wages paid and offered to employees and involves the expression of an opinion by [NAME] (see the discussion in [COMPANY] v Madden [2012] FCA 1346; 297 ALR 337 at [64]-[66] (appeal dismissed in Madden v [COMPANY] [2014] FCAFC 30; 313 ALR 1)). For example, Pamphlet 4 asserts as follows (emphasis in original): Workers on this vessel can earn as little as half the pay of those doing the same work, on the same boats, on the same harbour. Their only mistake is working for the [COMPANY]. The workers and their union have requested that the [COMPANY] do the right thing and treat thier (sic) workers with the respect they deserve. Sadly, [COMPANY] has decided to dig in behind existing practices, and continue to treat Ferry workers like second class citizens. 179 The [COMPANY] does not contend that it is false or misleading to say that workers on its vessels can earn as little as half that earnt by comparable workers. [NAME] was expressing an opinion that persisting with such a payment structure fails to treat workers with dignity and respect. It is not misleading or deceptive for [NAME] to express the opinion that its members are being treated as second-class citizens when they receive as little as half the pay of other workers doing the same work on the same harbour. 180 The [COMPANY]'s complaint that [NAME] made a representation that it engaged in illegal conduct relates to a reference in one of the Pamphlets to "dodgy" behaviour. When viewed in context, and with particular reference to the statement made earlier in the Pamphlet that [COMPANY] was paying inadequate wages, I accept [NAME]'s submission that the reference to the continuation of "this dodgy" behaviour is a reference to the continuation of the payment of wage levels [NAME] believes to be substandard and below industry levels. The relevant Pamphlet does not convey the representation pleaded by the [COMPANY].

E. The licence representation 181 Part of the Second Representations pleaded by the [COMPANY] is that [NAME], by using the Offending Logo (or at least that part of it which involves use of the letters "[COMPANY]"), represents that use of the Offending Logo has occurred with the licence or approval of the [COMPANY]. If necessary, I would have rejected this aspect of the [COMPANY]'s case. Viewed in context, it is plain that the use of the Offending Logo did not involve any such representation. That is not the least because, viewed in context, the use of the Offending Logo was a prominent part of [NAME]'s industrial campaign which targeted the [COMPANY]. No reasonable person would infer that the use of the [COMPANY] word mark represented that the [COMPANY] had given its licence to [NAME] to use that mark in a vigorous campaign against it.

(c) Injurious Falsehood 182 The ASOC identified four statements and four representations for the injurious falsehood case, namely, those pleaded at [26(a)-(d)] and [27(a)-(d)] of the ASOC (the injurious statements and injurious representations respectively). The injurious statements are as follows: (a) "Not one of the 90 jobs on the [COMPANY]-owned [NAME] fleet is [NAME]"; (b) "As [NAME] go on strike, it is worth noting that the [COMPANY] business is four years, two months and thirteen days into a Government contract with Transport for [NAME] to provide the high-speed Manly service, yet there has still not been one [NAME] job offered to any of the 90 ferry workers"; (c) "[NAME] [NAME] said ferry crews met yesterday, endorsing the work stoppage between 5pm and 11pm. The decision follows six months of negotiations with [COMPANY] that have failed to see the company resolve the wage discussions or offer a single [NAME] job to the entirely [NAME] workforce"; (d) "[NAME] harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards"; … 183 The injurious representations are as follows: (a) the [COMPANY] is not a safe ferry operator and its safety standards fall short and are not at an appropriate level; (b) not one of the 90 jobs on the [NAME] is [NAME]; (c) the [NAME] consists of an entirely [NAME] workforce; and (d) the [COMPANY] has not offered one [NAME] job to any of the 90 [NAME] workers. 184 The [COMPANY] bears the onus of proving that the injurious statements and injurious representations were false. Unlike an action for defamation, the applicant has the obligation to prove falsity, which is not presumed but must be affirmatively established. 185 The historical origins of the tort of injurious falsehood can be traced back to the late 16th century in cases involving a challenge to the plaintiff's title to land, which gave rise to the tort also being referred to as "slander of title" ([NAME] at [57] per [NAME[NAME]; [NAME] at [196]). The tort developed so as to cover the knowingly making of a false assertion that the plaintiff's products (not [COMPANY] to title to land), were inferior in circumstances where the mendacity was calculated to injure the person in his or her trade. [NAME[NAME] also explained the differences between the tort and defamation at [198] of [NAME] (see also [NAME] at [58]). 186 In AMI Australia [COMPANY] v [NAME] [COMPANY] [2010] NSWSC 1395; [2011] Aust Torts Reports 82-077, [NAME[NAME] explained at [30]: In injurious falsehood, unlike in defamation, the plaintiff bears the onus of proving falsity [[NAME], 406 [58]]. From time to time, AMI's submissions slipped into the form that there was no evidence to support or justify an imputation, and therefore that it was false. This is not the way in which the tort of injurious falsehood works; unlike in defamation, where it is for a defendant to justify an imputation, in injurious falsehood the plaintiff must prove the imputation to be false. However, the absence of evidence to justify a falsehood is not without significance: where there is nothing to justify it, it may take very little to establish, on balance, that the imputation is false. 187 The injurious statements that are alleged to be false fall into two categories. First, the statements pleaded at [26(a) to (c)] of the ASOC relate to the claim that there were no [NAME] jobs within the [NAME] and that the [COMPANY] had not offered [NAME] jobs to the [NAME]. The statements are said to be false on the basis that there were in fact three [NAME] employees and that [NAME] had offered [NAME] employment to one employee in February 2019. This is all relevant to the absence of recklessness and malice for the purposes of injurious falsehood. The second category concerns the statement pleaded at [26(d)] of the ASOC, namely that "[NAME] harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards". 188 The injurious representations all fall within the first of those categories, namely that relating to the alleged non-permanency of the [NAME]. 189 For the reasons given above in relation to the non-permanency representations the subject of the [COMPANY]'s complaints concerning misleading or deceptive conduct under the [NAME], I find that the injurious statements and injurious representations were made by [NAME] and that they were false. An exception is drawn in relation to the [COMPANY]'s claim that the statement "[NAME] harbour workers want job security, to be paid fair industry rates, and worlds (sic) best practice safety standards". That statement is not false. It is aspirational (see [165] above). 190 But that is insufficient to make good the [COMPANY]'s claims of injurious falsehood. As noted, it has the onus of establishing that the falsehoods were made maliciously and that it suffered actual damage as a result of those falsehoods. I shall now explain why I am not satisfied that the [COMPANY] has discharged its onus.

(i) Malice 191 Malice is an essential element of the tort. As [NAME[NAME] observed in [NAME] at [200], malice "is never easy to define in the law of tort". His [NAME] referred approvingly at [202] to a passage at paragraphs [145-835]-[145-845] in volume 10 of [NAME]'s Laws of Australia where it is stated that malice may not be inferred from the fact of publication, but will be inferred where a false publication was made with an intent to injure without just cause and with knowledge of the falsity or reckless indifference as to its truth or falsity (see also [NAME] v [NAME] [2002] HCA 57; 212 CLR 1 at [91] per [NAME], [NAME] and [NAME] [NAME] and the authorities referred to therein). 192 Significantly, however, it is insufficient to show that the false publication was made with a mere lack of care or with an honest belief in its truth. Malice is often understood to involve an intent to injure another without just cause or excuse or by some indirect, dishonest or improper motive. Malice involves that the statement was made mala fide or with a lack of good faith. A person who acts in good faith is not liable. 193 In [NAME], Brereton J gave the following explanation at [31], with which I respectfully agree: Again unlike in defamation, in injurious falsehood malice is also an essential element of the cause of action, to be proved by the plaintiff. While the notion of "malice" in the context of this tort is not easy to define [[NAME] [COMPANY] v Debelak (1989) 89 ALR 275, 291 ([NAME])], it is a question of motive, intention or state of mind and it involves the use of an occasion for some indirect purpose or indirect motive such as to cause injury to another person [British Railway Traffic & [COMPANY] v [COMPANY] & London County Council [1922] 2 KB 260, 269; Browne v Dunn (1893) 6 R 67, 72; [NAME] v [NAME] (1859) 1 F&F 419, 427; (1859) 175 ER 790; Stuart v Bell [1891] 2 QB 341, 351; Shapiro v La [NAME] [1923] All ER Rep 378; [NAME] [COMPANY] v Debelak, 291]. [ADDRESS] of Appeal has said that the criteria for malice in injurious falsehood are the same as at common law for libel and slander [[NAME] v [COMPANY] [1993] 2 All ER 273, 288; reversed on other grounds [NAME] v [COMPANY] [1995] 2 AC 296]]. Its content has been variously described as "an intent to injure another without just cause or excuse" or "some indirect, dishonest or improper motive" [[NAME], The Law of Torts, 9th ed (1998) [COMPANY] at 780; [NAME], 423 [108] (Kirby J)], or "a purpose or motive that is foreign to the occasion and actuates the making of the statement" [cf [NAME] v [NAME] (2002) 212 CLR 1, 30; [2002] HCA 57, [75] ([NAME] [NAME])]. It involves that the statement was made mala fide or with a lack of good faith. In this context, while a person who acts in good faith is not liable [Joyce v Sengupta [1993] 1 All ER 897], malice may exist without an actual intention to injure [[COMPANY] v [NAME] & [COMPANY] [1957] RPC 220; [NAME] v [NAME] [NAME] [1958] RPC 94] 194 Whilst malice will typically be inferred from affirmative knowledge of falsity and, perhaps, from reckless indifference as to the truth, a mere lack of affirmative belief in truth is insufficient of itself to establish malice ([NAME] v [NAME] at [15], [39]-45] per [NAME] [NAME], [76]-[104] per [NAME] and [NAME] [NAME]). In [NAME], [NAME[NAME] said at [222] that the relevant threshold of malice was not met in the circumstances there: [I]t is my view that [NAME] [NAME] genuinely believed that all of the factual allegations which he made about the collars were true. He believed that dogs had been burned as a result of their use. He also believed that they inflicted a 3,000 volt shock. These were damaging statements to make about [NAME]'s products. However, though false, they were not made maliciously. 195 In establishing malice, recklessness does not simply mean carelessness, even in a high degree. It means ''indifference to its truth or falsity." Negligence or carelessness is insufficient to establish malice and thereby give rise to liability for injurious falsehood. Even a lack of affirmative belief in truth will not, of itself, establish malice. 196 In an attempt to establish malice, the [COMPANY] pointed to the satirical [NAME] page about [NAME] [NAME] (called "[NAME]") and it also claimed that [NAME] knew from around 18 February 2019 that a [NAME] purpose hand had converted from [NAME] to [NAME] employment. The [COMPANY] also claimed that [NAME] told [NAME] [NAME] at a meeting in early 2019 that one [NAME] employee had converted to [NAME] employment as part of the expression of interest process. 197 As to the first of those matters, although [NAME] [NAME] did "like" and write "comments" on posts on the [NAME] [NAME] page, there is no evidence that that account was established or maintained by [NAME]. I do not accept that this matter supports the [COMPANY]'s claim of malice. 198 Furthermore, to establish malice the [COMPANY] needed to show the improper purpose actuated the injurious representations, that is an improper motive was the dominant reason for making the injurious representations ([NAME] v [NAME] at [104]). Even if the [COMPANY] established personal animus by [NAME] [NAME] against [NAME] [NAME] through the [NAME] [NAME] page, it is unclear how that would establish an inference that the pleaded injurious representations about the safety standards of the [NAME] or the permanency of their staff was actuated by an improper motive. 199 The second matter concerns evidence said to establish knowledge that [NAME] knew its permanency representations were false. It has two elements to it. The first is the fact that [NAME] had in its possession a [NAME] Application Form dated 18 February 2019 which had been filled out by a member who recorded on the form that he was a [NAME] [NAME] employee. When cross-examined about this document, [NAME] [NAME] said that he was not aware of the particular form and that such forms were provided to the [NAME] of [NAME], [NAME] [NAME]. I accept [NAME] [NAME] evidence that he was unaware of the particular form. The [COMPANY] does not contend that any of the statements regarding permanency which are the subject of its complaint were made by [NAME] [NAME] or that anyone within [NAME] who did make those statements was aware of the form. 200 The [COMPANY] did, however, submit that the supply of the membership form to [NAME] [NAME] meant that [NAME] had knowledge of the [NAME] some weeks before the impugned representation and that this fact assisted in establishing [NAME]'s malice. I disagree. The submission ignores the care that must be taken in attribution of knowledge to an artificial legal person, particularly by means of aggregation, and the necessity for paying close attention to the rationale and underlying principles of the relevant substantive rule of liability (Commonwealth Bank of Australia v Kojic [2016] FCAFC 186; 249 FCR 421 at [63]-[67] per [NAME], [94]-[100] and [109]-[115] per Edelman J). As explained above at [193], the element of malice in injurious falsehood is concerned with mala fides and dishonest, improper or collateral motives. 201 The second aspect of the permanency matter relates to whether or not [NAME] [NAME] told [NAME] [NAME] during the course of a meeting in early 2019 that one person had converted to permanency as part of the expression of interest process which had been introduced towards the end of 2018. The determination of this allegation requires the Court to resolve a dispute in the evidence between [NAME] [NAME] (a HR consultant at [COMPANY]) and [NAME] [NAME]. For the reasons which I now give, [NAME] [NAME] evidence is preferred. 202 [NAME] [NAME] says that she was present at a meeting and overheard [NAME] [NAME] tell [NAME] [NAME] that one [NAME] had converted to permanency under the expression of interest process. [NAME] [NAME] attended the meeting to take notes and so that she knew what was going on. She said that she had attended several such meetings with [NAME]. She could not remember all the meetings which she had attended, the number of those meetings or the date of the meeting when she said she overheard a conversation between [NAME] [NAME] and [NAME] [NAME]. The meeting took place in the context of negotiations for an [NAME] for [NAME], as opposed to other [NAME]. [NAME] [NAME] did not take a note of the conversation and she could not recall who else was there. She could not recall whether [NAME] [NAME] was there but she recalled both [NAME] [NAME] and [NAME] [NAME] being present. She could not identify the names of other [NAME] attending the meeting. [NAME] [NAME] said that the relevant conversation between [NAME] [NAME] and [NAME] [NAME] was a "side discussion" and was part of the [NAME] negotiation. She accepted that the expression of interest process did not apply to [NAME] and she agreed that any conversation on the expression of interest process was not part of the substance of the meeting. She also accepted that it was possible that [NAME] [NAME] would be in a better position to give evidence in relation to his conversation and that the conversation between the two men was between themselves and not directed to her. When pressed, [NAME] [NAME] said that she was not mistaken in stating that [NAME] [NAME] told [NAME] [NAME] that an employee had in fact converted to permanency. 203 While I accept that [NAME] [NAME] was an honest witness, I cannot and do not accept her version of what was said at the relevant meeting, having regard to the matters outlined immediately above. [NAME] [NAME] recollection of the meeting was notably vague and uncertain, as she candidly acknowledged. I am not confident that her recollection of what was said between [NAME] [NAME] and [NAME] [NAME] in their side discussion is accurate. 204 It is also notable that the relevant meeting was attended by both [NAME] [NAME] and [NAME] [NAME] (who is the [NAME] for the [COMPANY]). The [COMPANY] called neither of them to give evidence. The [NAME] v [NAME] (1959) 101 CLR 298 principle applies. 205 For the following reasons, I prefer [NAME] [NAME] evidence on this issue. It was put to [NAME] [NAME] in cross-examination that, during the course of the meeting in early 2019, he was told by [NAME] [NAME] that one person had converted to permanency under the expression of interest process. He said that he was not told that fact. I accept his evidence. He said that if he had been told that fact he would not have stated that there were no [NAME] jobs because he would not have allowed himself "to be tripped upon on that technicality". I accept his evidence. I also accept [NAME] [NAME] evidence that he honestly believed in December 2018 that all of the [NAME] were [NAME] and that he had no direct understanding of what proportion of [NAME] might or might not have taken up the expression of interest process. I also accept his evidence that the [NAME] is small and that "seagulls" keep [NAME] informed about developments and that he had not been told that anyone had been made [NAME]. I also accept [NAME] [NAME] evidence that he repeatedly tried to call [NAME], the CEO of [NAME], and [NAME] refused to take his calls about the expression of interest process generally. [NAME] [NAME] stated unequivocally at T 240.5 that there was "no doubt in my mind at the time" that all the staff were [NAME]. I accept his evidence that he "had nothing in my possession, knowledge or otherwise or any indication from the company, the workers, the delegates or anyone else had been made [NAME]". I find that it was not until shortly before these proceedings commenced that [NAME] learned that some of the [NAME] were [NAME]. 206 I am satisfied that [NAME] [NAME] evidence demonstrates that the statements and representations complained of were made as part of a campaign by [NAME] aimed at securing [NAME] employment for members, achieving wage outcomes that are consistent with the prevailing rates in the industry and recouping underpayments for employees. There is no suggestion that the industrial campaign is not genuine or the objectives are not legitimate. [NAME]'s conduct cannot be described as an attempt to injure the [COMPANY] without just cause or excuse or by some indirect, dishonest or improper motive. In assessing whether the matters relied upon by the [COMPANY] establish malice, it is also relevant to take into account the context in which the conduct occurred, namely an industrial dispute in which it is customary for the disputants to engage in confronting and sometimes belligerent behaviour. The context is hardly that which might be expected at, say, a tea party or a prayer meeting (to adopt [NAME] memorable expression in Australian Securities and Investments Commission v [NAME] [COMPANY] [2012] FCA 1164 at [14]). 207 I accept the [COMPANY]'s submission that the industrial campaign had as an intended target the [COMPANY] brand. This included persuading members of the [NAME] that the [COMPANY] brand was no longer trustworthy, as well as calls by [NAME], including [NAME] [NAME], for [NAME] to boycott the company. Viewed in the context of an industrial campaign, however, I do not consider that these matters rise to the high level of malice. I am not satisfied that the statements and representations complained of were made with knowledge that they were false or with a reckless disregard as to whether or not they were true. For completeness, I should add that I do not consider the Offending Logo or the emails concerning "hacking" of the [COMPANY]'s brand assist the malice case. That evidence does not go so high as to establish improper motive, bearing in mind the context of the industrial campaign, nor does it show that any improper motive actuated the pleaded injurious representations. 208 For these reasons, I am not satisfied that the [COMPANY] has established malice. The injurious statements and injurious representations were genuinely made and in circumstances in which [NAME] [NAME] honestly believed the statements to be true.

(ii) Actual Damage 209 An applicant alleging the tort of injurious falsehood must prove that it has suffered particular and identifiable loss or damage as an essential element of the tort. The actual damage done is the very gist of the action. The requirement has been variously stated as requiring the plaintiff to establish "special damage", "particular and identifiable loss or damage" and "actual damage" (Ratcliffe v Evans at 527-528 per Bowen LJ; [NAME] [COMPANY] v [NAME] and [NAME] Commission [1998] FCA 1560; (1999) ATPR 41-669 at 42-537 per Lindgren J). The tort of injurious falsehood does not provide a cause of action for mere injury to either reputation or feelings. A party seeking to establish injurious falsehood must plead and prove actual, that is, identifiable financial loss or damage, as an essential element of the tort. 210 For example, in [NAME], [NAME[NAME] said at [198]: In some respects, this tort bears a marked resemblance to defamation. Both involve a false and harmful imputation concerning the plaintiff which is made to a third party. They differ, however, in that the law of defamation protects interests in personal reputation while injurious falsehood protects interests in the disposability of a person's property, products or business. Defamation is generally actionable without proof of damage. Falsehood is presumed and liability is strict. In an action for injurious falsehood, the plaintiff must prove that he sustained actual economic loss, that the offending statement was false, and that it was made with intent to cause injury without lawful justification. The requisite state of mind is often described as malice. 211 Similarly, in [NAME] v [NAME] (1995) 43 NSWLR 404, [NAME] at CL said at 408: The importance of actual damage as an element of the tort of injurious falsehood is that, because the tort is not concerned with injury to either reputation (Ballina Shire Council v Ringland (1994) 33 NSWLR 680 at 694) or feelings ([NAME] v [COMPANY] [1967] 2 QB 841 at 850), damages for injurious falsehood would appear to be restricted to the recovery of that actual damage: ibid at 850. 212 The ASOC pleads that the [COMPANY] has incurred expenses and loss, its business was harmed and it has suffered actual financial loss or damage. The [COMPANY] has not, however, provided details of any particular or identifiable loss or damage that has been suffered as a consequence of any of the statements that are pleaded nor is there any evidence of any specific damage suffered. 213 To make out the tort and prove actual damage, the [COMPANY] needs to demonstrate actual financial loss as a result of the pleaded statements which, it is said, were false and maliciously made. That is, it is necessary to prove that actual financial loss resulted from the four particular statements pleaded as constituting the tort of injurious falsehood. 214 There is an additional relevant requirement. Even if actual financial loss is established with respect to the actions of [NAME] generally, to make out the tort it is also necessary for the [COMPANY] to prove the loss resulted from the particular injurious statements and/or injurious representations as pleaded in the ASOC. 215 To prove damage, the [COMPANY] relies primarily on alleged "reputational damage" or assertions that the [NAME] had been "misled". The evidence of damage to reputation is tenuous and, at best, speculative. For example, the [COMPANY] alleges damage to reputation as a result of three comments on [NAME] [NAME] page and two comments on the [NAME]. The suggestion that five comments on social media indicates any appreciable damage to reputation is fanciful. In any event, the tort of injurious falsehood, does not protect against mere damage to business reputation. Alleged "reputational damage", even if established, is insufficient to make out the tort. The [COMPANY] must show how the alleged "reputation damage" translated into actual economic loss. 216 As to [NAME] [NAME] evidence, I accept [NAME]'s submission that it all goes to reputation and brand. [NAME] [NAME] did not give any evidence of any particular financial loss to the [COMPANY] which was causally connected to the injurious statements or injurious representations. 217 As to the [COMPANY]'s claim that because the alleged [NAME] infringements related to the [COMPANY]'s property in its trade [NAME], I am not satisfied the [COMPANY] has established any damage to property separate from its allegation of damage to business reputation generally. [NAME] protect a [NAME]'s ability to use exclusively [NAME] signs and [NAME] as markers of association with the [NAME]. While the [COMPANY] may contend the value of that association has been lessened due to damage to its business reputation, its ability to use its trade [NAME] (and prevent others from using them) to establish association of its goods and services with the [COMPANY] remains unimpeded. 218 Turning to the [COMPANY]'s reliance upon [NAME] passenger numbers (which is confidential), the evidence falls far short of establishing a causal connection between those numbers and the injurious statements and injurious representations. There is a wide range of other possible explanations for those numbers — alternative transport arrangements, other statements made by [NAME], the effect of the strikes, seasonal factors and home telecommuting replacing the need for people to travel to and from work. 219 For these reasons, I find that the tort of injurious falsehood has not been established, not only because the relevant statements and representations were not made maliciously, but also because the [COMPANY] has not established actual damage in the relevant legal sense.

(d) [NAME] 220 As explained above, it is unnecessary in the particular circumstances of this case to consider and determine [NAME]'s reliance on the [NAME] (see [COMPANY] v [NAME] (1927) 40 CLR 333 at 342 per [NAME]; Knight v Victoria [2017] HCA 29; 261 CLR 306 at [32] and Clubb v Edwards at [32] ff per [NAME], [NAME]), noting that there is nothing about this case which would warrant departing from the well-established approach that Constitutional issues should only be determined if the proceeding cannot be disposed of on a non-Constitutional basis.

F. Conclusion 221 For these reasons, the proceeding will be dismissed, with costs. It is unnecessary to determine [NAME]'s contention that declaratory or injunctive relief should be refused in the Court's discretion having regard to the [COMPANY]'s delay in bringing these proceedings or that the injunctive relief sought is unacceptably uncertain. That is simply because the [COMPANY] has failed to establish any of its three causes of action. I certify that the preceding two hundred and twenty-one (221) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Griffiths.

Associate: Dated: 11 September 2019