FEDERAL COURT OF AUSTRALIA

Guide Dogs Owners' & Friends' Association Inc v Guide Dog

Association of NSW & ACT [1999] FCA 316

TRADE PRACTICES – misleading or deceptive conduct – passing off – whether use of name “seeing eye” was misleading or deceptive or amounted to passing off – whether “seeing eye” or “seeing eye dog” descriptive or distinctive of appellant – whether appealable error – role of appellate court where factual findings at first instance under challenge.

Trade Practices Act 1974 (Cth), s 52

S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1999) ATPR 41-667 followed

S W Hart & Co Pty Ltd v Edwards Hot Water Systems Pty Ltd (1985) 159 CLR 466 followed

State Rail Authority of New South Wales v Earthline Constructions Pty Ltd & Ors (In Liq) [1999] HCA 3 (9 February 1999) referred to

Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 referred to

Reddaway v Barnham [1896] AC 199 referred to

James Watt Constructions Pty Ltd v Circle-E Pty Ltd (1970) 3 NSWR 481 referred to

Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 referred to

GUIDE DOGS OWNERS' & FRIENDS' ASSOCIATION INC v GUIDE DOG ASSOCIATION OF NSW & ACT and ROYAL GUIDE DOGS ASSOCIATIONS OF AUSTRALIA

No NG 715 of 1998

HEEREY, CARR & MANSFIELD JJ

30 MARCH 1999

MELBOURNE (heard in Sydney)

THE COURT ORDERS THAT:

1.         The appeal be dismissed.

2.         The appellant pay the respondent’s costs of the appeal.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

HEEREY J:

1                                             I agree  with Carr J.

Associate:

Dated:             30 March 1999

REASONS FOR JUDGMENT

CARR J:

Introduction

2                                             This is an appeal from a judgment of a Judge of this Court, given on 26 June 1998, dismissing the appellant’s application.  The application involved three charitable bodies, each of which trains and supplies guide dogs to assist blind or visually-impaired people.  They also train the recipients of the dogs.  The appellant alleged that the two respondents had engaged in conduct which was misleading or deceptive and also constituted passing off.  The principal relief sought by the appellant was an order restraining each of the respondents from using the expressions “seeing eye” and “seeing eye dogs” in connection with the promotion or supply of their services, including the provision of guide dogs. 

The Proceedings at First Instance

3                                             The conduct engaged in by the first respondent about which the appellant complained was:

§          inserting entries in the Sydney White Pages and the Sydney Yellow Pages telephone directories. Those entries were:

“SEEING EYE DOG” (see Guide Dog Association

of NSW & ACT)”;

§          placing certain billboard advertisements which were said to represent to members of the public, contrary to fact, that the first respondent was the only provider of mobility services to blind or visually-impaired people in NSW and the ACT [that complaint has since been abandoned]; and

§          using a logo in its billboard advertising which was deceptively similar to a logo used by the appellant.

4                                             The appellant’s claim against the second respondent was based upon the latter’s registration under the various Business Names legislation in South Australia, Tasmania, Western Australia, the Australian Capital Territory and the Northern Territory of the business name “The Seeing Eye”.

5                                             Before the learned primary judge, the appellant alleged that it had acquired a significant reputation in Australia in the name “seeing eye”, when used in connection with the training and provision of guide dogs, rehabilitation, life-skills and recreational activities for the blind.  Those activities included the conduct in Victoria of a training centre for “seeing eye dogs” under the name of “Lady Nell ‘Seeing Eye Dog’ School and Rehabilitation Centre”.  The appellant contended that the expressions “seeing eye” and “seeing eye dogs” (“the Expressions”) had become distinctive of it and were understood by the “blind community” to refer to guide dogs trained and provided by it.  The blind community was said to include blind and vision-impaired persons, families and organisations of and for (respectively) the blind and vision-impaired, supporters, donors and potential purchasers of merchandise. 

6                                             The appellant contended that each of the respondents had, by doing the acts complained of, in trade or commerce engaged in conduct which was misleading or deceptive or likely to deceive, within the meaning of s 52 of the Trade Practices Act 1974 (Cth) (“the Act”).

7                                             In the alternative, the appellant maintained that the respondents by their conduct had passed off their services and the guide dogs trained by them as those of the appellant. 

8                                             The relief sought by the appellant against both respondents included damages and, against the first respondent, exemplary damages for its allegedly intentional misleading of members of the public.  It also sought injunctive relief including an order restraining the respondents from promoting or supplying any services provided by them under or by reference to the name “seeing eye” or “seeing eye dogs” or any name incorporating the words “seeing eye”.  Alternatively, the appellant sought orders restraining the respondents from using those names in any telephone directories. 

9                                             The respondents admitted that the first respondent had promoted and supplied services in the form of guide dogs and other mobility for the blind by reference to the name “seeing eye” and ‘seeing eye dogs” through telephone directories.   They also admitted that they had used the logo as alleged by the appellant.  However, the respondents denied that either of them had engaged in or will engage in any conduct that should be restrained by order of the Court.  The respondents further alleged that the appellant had falsely exaggerated, in its advertising and promotions, the extent of its activities and services.  These alleged exaggerations and falsehoods were said to be such that, even if the appellant were otherwise entitled to relief, it should be refused such relief by reason of its lack of clean hands, or in the exercise of the Court’s discretion. 

10                                          The primary judge set out in his reasons for judgment the relevant legal principles governing the application of s 52 of the Act and the common law in relation to the tort of passing off.  None of the parties to the appeal contended that there had been any error on his Honour’s part in describing the legal principles to be applied in the disposition of the case.  To establish misleading or deceptive conduct, or passing off, the appellant had to prove that the Expressions were distinctive of the appellant’s business.  His Honour made the following findings of fact:

§          The appellant itself, although referring to its own dogs as “seeing eye dogs”, had consistently used this expression in its literature in a generic manner.  That is, it had used the Expressions to refer generally to dogs trained to guide blind and visually-impaired people.  It had therefore acknowledged that the Expressions were not exclusively associated with the appellant, nor with dogs trained by it.

§          A group of well-informed people within the blind community understood (and had understood) the Expressions to refer to the appellant or to its dogs.  The primary judge explained that by “blind community” he meant blind and seriously visually-impaired people (about 24,000 nationally) and persons actively involved in organisations of and for blind people.  His Honour found that not all blind people had this understanding of the Expressions, since the proportion of such people with guide dogs was very small.  He inferred that some blind people would have little knowledge of the activities of the appellant and the respondents, insofar as they relate to guide dogs, but that most blind people were likely to have that understanding.

§          The appellant’s use of the Expressions had been closely associated, in its publications, with references to “Lady Nell” or “the Lady Nell School”.  Consequently, a significant proportion of people within the blind community linked the Expressions to the appellant and its dogs because the Expressions were often used in conjunction with “Lady Nell” and “the Lady Nell School”.  His Honour could not quantify the proportion.

§          Persons outside the blind community (and some within it) understood the Expressions as generic terms, not distinctive of either the appellant or the respondents.

§          With few exceptions, members of the blind community who understood the Expressions to refer to the appellant or to its dogs appreciated that the wider community used and understood the Expressions in a generic sense.

11                                          The primary judge then concluded that the appellant had not established that either of the Expressions had become distinctive of it or the dogs trained by it.

12                                          His Honour then considered each category of conduct complained of to determine whether it was misleading conduct or amounted to passing off.  In relation to the entries in the directories, he found against the appellant on the basis that it had failed to establish that the Expressions had become distinctive of it or its activities.  His Honour found that the Expressions were generic and did not convey to those likely to read them a representation that the first respondent’s dogs were trained or approved by the appellant or that the first respondent’s services were licensed, approved by or affiliated with the appellant.  In relation to members of the general (sighted) community his Honour held that that community would have understood the entries in the telephone directories as conveying the (correct) impression that the first respondent trained dogs to guide blind and visually-impaired people.  His Honour then made what I consider to be a very important^* factual finding as follows:

“In my view, generally speaking, members of the blind community (in the sense in which I have used that term) would have had the same understanding.  It is true that, as I have found, well-informed members of the blind community associated the expressions “seeing eye” and “seeing eye dogs” with the LN School.  However, as I have also found, with few exceptions they understood that the expressions were used by the wider community in a generic sense.  They would not have been misled by the entries in the telephone directories, since they would have been aware not only of the usage of the expression in the wider community, but of the respective roles performed by GD NSW and GDOFA.  It is perhaps significant that none of GDOFA’s witnesses gave evidence that they had been or would have been confused by the entries.”  (My emphasis)

[* by referring to the importance of this finding, I should not be taken to be elevating it to any status higher than justified by the evidence – a subject to which I return below].

13                                          His Honour also found against the appellant in relation to its allegation that text reproduced on the billboards of the first respondent was likely to mislead or deceive members of the public.  Although that finding was originally challenged by the appellant, the challenge was abandoned shortly before the hearing of the appeal.

14                                          In respect of the logo, his Honour found:

 “… the differences between the photographs are such that it cannot plausibly be suggested that a person reading the billboards would be misled into believing that GD NSW had some affiliation or connection with GDOFA.  The layout and composition of the two photographs are different.  Moreover, even a casual viewer of GD NSW’s billboard would realise that the photograph reproduced on this billboard had been chosen because it illustrated and emphasised the message sought to be made in the text.  I do not think it could be said that a person who had seen GDOFA’s photograph would have been misled into believing that GD NSW had some association or affiliation with GDOFA.   Nor could it be said that the use of the photograph by GD NSW interfered with or damaged the reputation or goodwill of GDOFA.”

15                                          The appellant had also contended that the first respondent had intended to mislead members of the public into believing that its services were those of the appellant.  His Honour found that, whatever the position concerning distinctiveness, there was no factual basis for concluding that either of the respondents intentionally set out to mislead members of the public into believing that the services provided by them were those of the appellant or were associated with the appellant.

The Appeal

16                                          There are some twenty grounds of appeal.  Rather than set them out or summarise them, I propose to reflect them in the following summary of the appellant’s submissions.

The Appellant’s Submissions

17                                          The appellant submitted that although the evidence called by it and the respondents was “contrary on a number of issues”, the facts which were established by the evidence as a whole were inconsistent with most of the findings of the primary judge, in particular his Honour’s findings that the Expressions were generic and had not become distinctive of the appellant.  The particular facts which the appellant contended had been established by that evidence were that:

(a)        The appellant had used the Expressions to describe its dogs and services for nearly four decades.

(b)        It was the only organisation in Australia to use the Expressions to describe its dogs and services.

(c)        It chose those Expressions to distinguish itself from other organisations.

(d)        There were only two sources in Australia of guide dogs for the blind, the appellant’s school and that conducted by the respondents.  The respondents had never used the Expressions to describe their dogs and services, and had disavowed any such association.

(e)        People in the blind community understood the Expressions to be exclusively associated with the appellant.

(f)         Some people in the general community understood the Expressions to be exclusively associated with the appellant.

18                                          The appellant argued that the evidence had established that there was a relevant and significant part of the community, being the two groups referred to in paragraphs (e) and (f) above, who understood and exclusively associated the Expressions with the appellant, its dogs and the services provided by it.  Accordingly, so it submitted, it must follow that the Expressions were not, or had ceased to be, descriptive and generic and were distinctive of the appellant, its dogs and services.  It was irrelevant that outside that relevant part of the community, there were people who did not associate the Expressions exclusively with the appellant, or erroneously used the Expressions in a generic sense.  The use of the Expressions by the respondents was misleading or deceptive conduct within the meaning of s 52 of the Act and constituted passing off.  The primary judge had fallen into error in finding that any confusion in the minds of potential benefactors was not real or was only a remote chance.  Further, in relation to his Honour’s findings that the respondents had not deliberately set out to mislead the public or take advantage of the appellant’s reputation in the Expressions, the appellant submitted that the respondents:

(a)        were aware that the appellant called its dogs “Seeing Eye Dogs” and that it publicised that fact;

(b)        had never used the Expressions in relation to their dogs and services;

(c)        did not want their dogs to be known as “Seeing Eye Dogs”; and

(d)        had no intention of carrying on business under the name “Seeing Eye”.

19                                          In those circumstances, the appellant submitted that the primary judge should have found that the respondents deliberately set out to mislead the public or take advantage of its reputation in the Expressions.  In support of its contention that his Honour’s reasoning was erroneous in concluding that only a small group of particularly well-informed people would have associated the Expressions with the appellant, but would not have been misled, the appellant made the following submissions.  The primary judge had accepted the evidence of Mr Michael Simpson (who had been blind for twenty-four years and was the Direct Marketing Manager with the Royal Blind Society of New South Wales) that there were about 24,000 blind people in Australia.  His Honour had also appeared to have accepted Mr Simpson’s evidence that the blind community consisted of blind people themselves, organisations of blind people and smaller networks of blind people.  Mr Simpson had not included organisations such as the parties to this matter, which were regarded by him as organisations for the blind, but other witnesses appeared to have done so and the judge so found.  This, so it was submitted, was a very important matter in regard to alleged misleading conduct and confusion, because it identified a relevant section of the public who might be misled or confused i.e. blind people themselves, organisations of blind people and smaller networks of blind people.  The appellant submitted that there was considerable evidence (to which we were taken in some detail) from blind people which supported the view that a “seeing eye” dog was a dog trained by the appellant and that a “guide dog” was one trained by the respondents.  His Honour had so found.  Whatever “seeing eye” dog might mean to the general public, because this reputation existed among blind people, there was a “seed bed” for confusion or misleading conduct which could clearly lead blind people to regard the use of “seeing eye” in relation to the respondents as indicating some association between them and the appellant.  The primary judge had sought to answer this argument, in part, by referring to certain non-distinctive use by the appellant of “seeing eye”, over the years as a generic expression and where it was used in conjunction with the distinct expression “Lady Nell” i.e. “Lady Nell ‘Seeing Eye’ Dog School”.  However, so the appellant contended, the evidence was that, despite such use, there was a clear distinction in the minds of blind people and others in the blind community between the origin of “seeing eye dogs” and the origin of “guide dogs”.  The primary judge had read down the effect of this reputation among the blind community by reference to the evidence of Mr Simpson, Mr Ian Cox (General Manager of Guide Dog Services for the Royal New Zealand Foundation for the Blind and Vice-Chairman of the International Federation of Guide Dog Schools for the Blind), Mr Edward Peterson (former Chief Executive Officer of the Royal Victorian Institute for the Blind) and Ms Jan Nilsson (former Executive Director of the Braille and Talking Book Library in Victoria and former Vice-President of the Australian National Council of and for the Blind) and others in that community.  His Honour had also read down the effect of this reputation by referring to the association of “seeing eye” with “Lady Nell” and to the fact (as his Honour found) that to the general community “seeing eye” was a generic expression.  The appellant submitted that such an association strengthened the appellant’s reputation.  The fact that “seeing eye” was a generic expression to the general public was not an answer where “seeing eye” was distinctive to a substantial identifiable group.  The blind community was such a group.  The primary judge had concluded that a group of well-informed people within the blind community understood the Expressions to refer to the appellant and its dogs and that most blind people were likely to have that understanding.  Despite making that finding, his Honour had proceeded to find that there was not a likelihood of confusion, based on the evidence and also on a view that any confusion would not have been caused by either of the respondents.  The appellant criticised the primary judge’s reference to “with few exceptions” in relation to the understanding of well-informed members of the blind community in turn understanding that the wider community used the Expressions in a generic sense.  Mr R J Ellicott QC, senior counsel for the appellant, said that this was not justified by the evidence.  He acknowledged that there was some evidence that members of the blind community appreciated that the wider community used the Expressions in a generic sense, but contended that it was not right to “turn it round” and say that this appreciation existed among the well-informed section of the blind community “with few exceptions”.  When it was put to the appellant’s counsel that those members of the blind community who were aware of the respective roles performed by the first respondent and the appellant would not have been misled by the entries in the telephone directories, we were given a list of examples where it was contended such persons might well have been misled.  I shall refer to that submission further below.  The primary judge’s reasoning was said to have failed to give proper effect to prior decisions of the Court such as Finucane v NSW Egg Corporation (1988) 80 ALR 486 at 515-516 and Weitmann v Katies Ltd (1977) 29 FLR 336 at 343 which emphasised that conduct may confuse and mislead a relevant section of the public.  In addition, the primary judge’s consideration of the effect which the telephone entries and the use of the business name could have on blind people was flawed, especially considering the evidence.  The primary judge had erred in finding that the appellant’s logo and the first respondent’s logo were different and that people seeing the first respondent’s logo would not have been misled into believing that there was some association or affiliation with the appellant.  The primary judge had taken no account of the imperfect recollection of people having previously seen the appellant’s logo, but not remembering it precisely, and then seeing the first respondent’s logo and being misled or deceived into believing there was some association or affiliation between the appellant and it: Cordova v Vick Chemical Co (1943) 60 RPC 87 at 108; Aristoc Ltd v Rystal Ltd (1945) 62 RPC 65; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 at 658.

The Respondents’ Submissions

20                                          The respondents submitted that there was no inconsistency between the facts referred to by the appellant and the trial judge’s findings.  The respondents went further and submitted that his Honour’s findings demonstrated why those facts did not lead to the conclusion that the expression “seeing eye” had become distinctive of the appellant.  Most of the facts identified and relied upon by the appellant referred to particular usages or intention which were irrelevant to the question of distinctiveness.  Other facts upon which the appellant relied (in paragraph 6.9-6.12 of its written submissions) were, so the respondents contended, of no significance in the light of the “mass of countervailing evidence” supporting the primary judge’s findings.  The respondents pointed out that paragraphs 6.9 and 6.10 of those written submissions (which referred to cross-examination of Mr Finucane about the likelihood or otherwise of confusion being caused by the entries in the telephone directories) only concerned Mr Finucane’s surmise as to a possibility.  They contended that the appellant’s statement that “parts of the general community understand and exclusively associate the words “Seeing Eye Dogs” with the appellant and “Guide Dogs” with the respondents” stated the proposition somewhat more highly than the evidentiary references would justify.  The appellant had omitted references to key facts which underpinned, so the respondents contended, his Honour’s main findings.  In particular, the generic usage of “seeing eye” was well entrenched in the general community.  In that regard the respondents pointed to evidence that:

·          the term “seeing eye” had a biblical origin;

·          there existed, decades before the appellant’s guide dog school was founded, an organisation in the United States of America involving guide dogs for the blind which was known as “The Seeing Eye”;

·          before the appellant’s school was founded, substantial publicity had been given in Australia to a book about that organisation, entitled “The First Lady of the Seeing Eye” and to a film based on that book;

·          the expression “seeing eye” was referred to in the New Shorter Oxford English Dictionary (1993 edition) and included an annotation which read:

            “He had bought her [sc. a blind woman] a ‘Seeing Eye’ dog, who took her wherever she wished.”

·          legislation in New South Wales had, without giving any definition to the term, enacted penal law which contained exceptions dependent upon whether or not a person was accompanied by a ‘seeing eye dog’;

·          there was a generic usage in Tax Determination TD 92/197 relating to “registering a seeing eye dog for the blind”;

·          there was also generic usage in the annotations in “Australian Tax Practice: Commentary” to s 159P(4)(i) concerning “Seeing eye dogs”;

·          there was a reference in the Nino Culotta (John O’Grady) book “Gone Fishing” (which sold 100,000 copies) (published in Sydney in 1962): “an’ next time you come out on the River, bring a seein’eye dog with you”;

·          there was an episode of the popular television series “The Simpsons” (the relevant part of which was repeated in book form) which included the phrase “I will return the seeing eye dog”, which had received very large circulation in Australia;

·          the phrase “seeing eye dog” was used in the popular Australian television programme “The Footy Show”, and a great many newspaper articles in the 1950s to date used the phrase “seeing eye dog” in a manner which was quite clearly generic.

21                                          The respondents referred to the appellant’s own brochures, newsletters and annual reports which acknowledged repeatedly the existence of other “seeing eye dog schools” by referring to its school as the “original” or the “first” seeing eye dog school in Victoria.  The appellant had advertised frequently using the expression “seeing eye” in a generic sense.  In 1955, well before the appellant’s school was founded, Mrs Gration (who became the principal of the appellant) wrote to a Western Australian guide dog association saying that she would “like to secure a ‘seeing eye dog’ from that organisation”.  Several witnesses, both visually-impaired and otherwise, had referred to the hundreds of occasions on which they had conversed with members of the general community in a way in which the phrase “seeing eye dog” was used purely generically.  The respondents submitted that it was important to emphasise that the usages of the phrase “seeing eye” which had been associated with the appellant were by and large very closely connected with the words “Lady Nell”.  This, so it was put, strongly undermined any suggestion that the phrase “seeing eye” by itself could have become distinctive of the appellant: McCain International Ltd v Country Fare Foods Ltd [1981] RPC 69.  When these critical findings were taken into account, his Honour’s conclusion that neither of the phrases “seeing eye” or “seeing eye dogs” had become distinctive of the appellant, should be upheld.  In part, this was a consequence of the appellant having chosen to employ an essentially descriptive expression to refer to itself and the dogs it had trained.

22                                          As to the entries in the telephone books, the juxtaposition of the entry placed by the first respondent with that of the entry placed by the appellant, destroyed, so the respondents submitted, any suggestion that any reasonable reader of the material could have been misled.  His Honour’s finding in respect of the blind community that “a group of well-informed people within the blind community understands [the Expressions] to refer to” the appellant and dogs trained by it was not a finding that such persons would exclusively so understand those expressions, nor could there have been such a finding in the light of the evidence to which the respondents referred.  The trial judge found that, with few exceptions, persons in the blind community had an appreciation of the generic usage of the phrase “seeing eye” within the general community.  Hence those persons in the blind community would understand that the expression may be used in either sense.  Apart from the unconfusing presentation of the telephone book entries, the respondents submitted that no members of the blind community could reasonably have been misled by those entries, for the reasons given by the primary judge.

23                                          As to the challenge to the primary judge’s findings on intention, his Honour had had the benefit of seeing and hearing Mr Finucane and Mr Ritter, the relevant office-bearers in the first respondent’s organisation.  He had accepted Mr Finucane’s credit.  There had been no challenge to Mr Ritter’s credit.

24                                          The respondents submitted that, on any objective view, the two so-called logos bore only the slightest resemblance to each other, well short of what was required to be misleading or deceptive.  The trial judge had expressly accepted the test contended for by the appellant and had taken into account the imperfect recollection of persons.

My Reasoning

Role of Appellate Court

25                                          The role of an appellate court in an appeal relating to allegedly misleading or deceptive conduct and passing off was recently considered by a Full Court of this Court (Hill, R D Nicholson and Emmett JJ) in S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1999) ATPR 41-667.  Their Honours most usefully collected the authorities at 7-9.  After referring to the following passage from the reasons for judgment of Gibbs CJ (with whom Mason J agreed) in S W Hart & Co Pty Ltd v Edwards Hot Water Systems Pty Ltd (1985) 159 CLR 466 at 478:

“The nature of the issue, [whether there had been breach of copyright], involving as it does matters of impression, is one in which particular respect and weight should be given to the decision of the trial judge unless some error in his judgment has been demonstrated.”

their Honours said (at 9):

“We think that while what was said by Gibbs CJ in Edwards Hot Water Systems is apposite in a case such as the present, it does not preclude the appellate court from reaching a different conclusion from the trial judge if it forms the view that conduct is not misleading and deceptive which was found to be so by the trial judge; a fortiori if a conclusion at first instance involves a question of principle.  What was said in Edwards Hot Water Systems is no more than a salutary reminder that questions of fact and degree involving judgment may be such that minds may differ so that in a doubtful case an appellate court should give weight to the views of the trial judge.  It is not a fetter on an appellate court reaching its own conclusion where it is of a contrary view to that taken by the trial judge.”

[See also State Rail Authority of New South Wales v Earthline Constructions Pty Ltd & Ors (In Liq) [1999] HCA 3 at 82].

26                                          I propose to take the same approach to this matter.  In relation to each of the findings challenged by the appellant, we were taken by counsel for each party to a considerable body of evidence which was said, by the appellant on the one hand, to justify such challenges and, by the respondents on the other, to support or underpin his Honour’s findings.  That process, laborious as it was for all concerned at the hearing of the appeal and (speaking for myself) afterwards, nevertheless was extremely useful.  If an overview can be detailed, as I think it can, the process resulted in a most detailed overview of the evidence which was before the primary judge.  Very little of that evidence went to credit, although credit was important in relation to the matter of intention.  I now turn to those of his Honour’s findings which were contested by the appellant.

1.         The extent to which the Expressions were used in a descriptive or

generic sense

            (a)        By the appellant

27                                          The appellant “strongly challenged” the primary judge’s finding that the appellant had used the Expressions in a descriptive or generic sense, based, as it was, on publications put into general circulation by it.  I have read the relevant portions of those publications.  As his Honour noted (at pp 30-31 of his reasons), they included the appellant’s annual reports from 1992 through to 1996 in which there were references to a “seeing eye dog” and “the first ‘Seeing Eye’ dog school in … Victoria”.  In my view, those references were quite clearly generic or descriptive.  Since 1963 the appellant has regularly advertised for bequests in the Australian Law Journal.  In those advertisements the phrase “… provides seeing eye dogs free to blind persons …” seems to me, in the context of the advertisement as a whole also to refer to such dogs in the generic or descriptive sense.  That was the sense in which, so much of the evidence suggested, those outside the blind community understood the Expressions.  In my view, when the primary judge found that the appellant itself used the Expressions in a generic or descriptive sense, he was right.  As I read the transcript of Mrs Gration’s oral evidence (Mrs Gration was the appellant’s founder) I formed the impression that the appellant used the Expressions in a generic or descriptive sense when addressing the wider community comprising mainly sighted people, in the knowledge that many sighted people used the Expressions and the terms “guide dogs”, and even “blind dogs” interchangeably.  At the same time Mrs Gration knew that many in the blind community associated the Expressions with the appellant.  In those circumstances, her defensiveness in cross-examination is quite understandable.

(b)        By persons outside the blind community

28                                          The appellant did not mount a serious challenge to his Honour’s finding that persons outside the blind community understood the Expressions as generic terms, not being distinctive of either the appellant or the respondents.  In oral submissions, Mr Ellicott acknowledged that a number of witnesses called by the respondents had given evidence of “thousands of conversations” in which the Expressions had been used generically.  However, the appellant contended that this conclusion was irrelevant to the disposal of the case, since it did not prevent the appellant from having a reputation in the Expressions.  It did not matter, so counsel contended, that the Expressions had a generic meaning to the general community.  The question was whether there was a significant section of the public to whom the Expressions meant the appellant?  That section was said to comprise the blind community and even blind people as a relevant section by itself.

29                                          Apart from the evidence of generic use of the Expressions in publications and the media, described above, many witnesses from the blind community gave evidence of their experiences with members of the general public.  That evidence pointed, overwhelmingly in my view, to the conclusion that the general public outside the blind community understood the Expressions as generic terms for dogs which guide blind people and not as distinctive of either the appellant or the respondents.  His Honour so found, and I agree with him.

            (c)        By the blind community

30                                          As mentioned earlier, the evidence was that there were about 24,000 blind or seriously visually-impaired people in Australia.  They, and persons actively involved in organisations of and for blind people, comprised the blind community.  The appellant provides an average of about eight dogs per annum and has at present some fifty-two dogs trained by it, working throughout Australia.  The second respondent provides an average of about forty-eight dogs per annum and, so we were told from the bar table without objection, there would be about three hundred of its dogs working throughout Australia.  It can be seen that the number of blind persons using dogs is a very small proportion (about 1.5%) of the total blind population.  His Honour found that most blind people understood the Expressions to refer to the appellant or its dogs.  The parties accepted that finding, but the appellant argued that his Honour should have found that most people in the blind community had the same understanding. 

31                                          Mr Ellicott took us to the evidence of an impressive number of witnesses, called from both sides, comprising blind people, office bearers (some of them blind) in various organisations of and for the blind and others within the blind community.  My further reading of their evidence and the evidence to which Mr J D Heydon QC, senior counsel for the respondents, took us has led me to conclude that:

1.         Most blind people who have guide dogs would associate the Expressions exclusively with the appellant.  For example, in the context of a question arising as to the source of a dog, the use of the Expressions would convey to them that the dog came from the appellant.  Some of the blind witnesses relied upon by the respondents said that they regarded the Expressions as being generic, but the preponderance of the evidence was to the contrary.

2.         It was difficult to assess from the evidence what proportion of blind persons, not having guide dogs, would similarly associate the Expressions exclusively with the appellant.  However, the respondent did not take issue with his Honour’s conclusion that most blind people would have that understanding, so it is not necessary to engage in further analysis.

3.         It was even more difficult to assess the extent to which the Expressions were so understood by the blind community, taken as a whole.  The appellant relied upon the evidence of some fifteen witnesses from the blind community.  These were either blind persons (with or without dogs), or present or former office-bearers or employees (such as trainers, but also some who had executive roles) of organisations of and for the blind.  There were none from the rank and file membership of such organisations.  However, just as evidence was accepted from the blind community of usage in their presence of the Expressions as generic expressions by the sighted community so, I think, should the evidence of these fifteen or so witnesses be accepted insofar as they referred to general usage within the blind community as a whole.  As I read their evidence I was still left with what I regarded as a major difficulty.  I simply could not assess the extent to which their experiences of the use of the Expressions would have gone beyond the relatively small group in the blind community who were involved with guide dogs.  It was clear from the evidence, and in fact Mr Ellicott stressed this in relation to another issue, that the various organisations of and for the blind were involved in providing a very wide range of goods and services which was by no means confined to the provision of guide dogs.  It was not possible to assess what proportion of those activities involved guide dogs.  Taking the evidence as a whole, I was not satisfied that it established that most people in the blind community understood the Expressions as referring exclusively to the appellant or its dogs.

4.         On the other hand, it was easier to conclude that, with few exceptions, most people in the blind community, having the understanding that the Expressions referred exclusively to the appellant, at the same time understood that the wider community understood the Expressions as generic terms referring to guide dogs for the blind and not being distinctive of either the appellant or the respondent.  So far as blind persons with dogs were concerned there was evidence of several thousands of instances of such usage by the wider community.  There is no logical basis, let alone any body of evidence, upon which to infer that their experiences were not shared either by their blind colleagues who did not use dogs, or their other fellow members of the blind community.

Some further conclusions

32                                          I do not accept the appellant’s contention that the primary judge asked himself the wrong question, by failing to ask whether there was a significant part of the public to whom the Expressions meant the appellant in its training and provision of dogs for the blind.  At pages 38 to 39 of his Honour’s reasons it can be seen that he adopted the approach suggested by Deane and Fitzgerald JJ in Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (at 202-203) by starting with the general community from which the first respondent sought support.  This included the blind community and those outside that community.  His Honour found that the latter used the Expressions, and would thus understand them to be used, in a generic sense.  The evidence clearly established that.  I have also concluded that, whilst the evidence established that most blind people and some others in the blind community understood the Expressions to refer to the appellant and its dogs, it did not establish that a majority of the blind community had that understanding.  Further, the evidence justified the inference that those in the blind community who had that understanding also knew that it was not shared by those outside their community.  Accordingly, there was very little room for those in the general community from which the respondent sought support, to be misled or deceived.  It can be inferred that blind people and others in the blind community understand that telephone directories are designed not simply to convey information to the blind community, but to the wider community of which they form a relatively small part.  This distinguishes the case from those cases where a term or phrase is understood to be used in a secondary sense, such as in Reddaway v Barnham [1896] AC 199 at 213 and James Watt Constructions Pty Ltd v Circle-E Pty Ltd (1970) 3 NSWR 481.

33                                          I have referred earlier in these reasons to a list of examples given by Mr Ellicott of situations in which the first respondent’s telephone entries would, so it was contended, result in persons being misled or deceived.  Those examples included the following:

1.         A blind person seeking to obtain a guide dog, who has an entry read to him or her, or a sighted person wishing to assist an organisation which provides such dogs.  Mr Ellicott submitted that the telephone entry was “stating an untruth” both to blind people and to the public generally if it were interpreted as meaning that the first respondent provided dogs under the name “Seeing Eye”.  Such an entry, so it was submitted, would convey an untrue representation as to the source or the trade or activity of providing dogs called “Seeing Eye” dogs.  In addition to the untruth, it was said that there would be a real chance of confusion.

            In my view, the evidence does not sustain this submission.  The general public understands the Expressions to be generic or descriptive of guide dogs generally.  Most blind people would so understand the telephone entry. 

2.         A person might see one of the appellant’s dogs in a working situation and decide to contact the relevant organisation either to make a donation or bequest or to assist a family member to obtain such a dog. 

            Once again this example illustrates the difficulties in the appellant’s path.  First, there is the evidence that the general public understands the Expressions in a generic or descriptive sense.  Secondly the relevant entries in the telephone books show that there are two organisations who supply such dogs.

            In my view, these examples do not demonstrate that the telephone entries would mislead or deceive a significant and relevant section of the public.

34                                          There was no evidence that any member of the blind community or any potential benefactor or purchaser of merchandise had been confused by the first respondent’s entries in the telephone directories.  As his Honour noted, that evidence is not essential.  A theoretical possibility was put to one of the respondent’s witnesses, Mr Finucane, who acknowledged it as such.  The authorities require a real or not remote chance or possibility: Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 at 91. 

35                                          Having read the evidence referred to us by both sides in relation to the entries in telephone directories, I consider that his Honour was right to conclude that the insertions by the first respondent of the various entries in the telephone directories (whether white or yellow pages) did not amount to engaging in misleading or deceptive conduct or passing off.  I think that that prospect was not sufficiently real.

The Logos

36                                          The appellant argued that the primary judge took no account of the imperfect recollection of people having previously seen the appellant’s logo, but not remembering it precisely, and then seeing the first respondent’s logo and thus being misled or deceived into believing that there was some association or affiliation between the first respondent and the appellant.  His Honour (at p 42 of his reasons) accepted that this was the approach to be taken.  There is nothing to suggest that his Honour did not in fact take that approach.  The matter is one of impression.  However, my impression, on comparing the two photographs, is that they are sufficiently different (the differences are listed at the foot of page 41 of his Honour’s reasons) as to be highly unlikely to have misled persons into believing that there was some association or affiliation between the first respondent and the appellant.  For those reasons I would reject that ground of appeal.

The Business Name registrations

37                                          There was no evidence that the second respondent had actually used the Business Name, as opposed simply to registering it.  There would be two categories of persons who might search the Business Names Registry.  The first would comprise those members of the blind community who understood the Expressions to refer exclusively to the appellant.  In my view, for the reasons which I have outlined above, those persons would appreciate that the Registry is intended to convey information to the general community, outside the blind community.  They would appreciate that the Expressions were used on the register in a generic sense.  They would not, in my opinion, be misled or deceived.  The second category would be the general public who, again for the reasons set out above, would read the Expressions in a generic or descriptive sense and again not be misled or deceived. 

Conclusions

38                                          For the above reasons, I would dismiss the appeal.

Associate:

Dated:              30 March 1999

REASONS FOR JUDGMENT

MANSFIELD J:

39                                          I have read in draft the judgment of Carr J.  I also agree with his Honour’s reasons and the orders which he proposes.

Associate:

Dated:              30 March 1999