Guide Dog Owners' & Friends' Assoc Inc v Guide Dog Assoc of New South Wales & ACT & Anor

[1998] FCA 736

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(Decision by: Sackville J)

Between: Guide Dog Owners' & Friends' Association Inc - Applicant
And: Guide Dog Association of New South Wales & ACT - First Respondent; Royal Guide Dogs Association of Australia - Second Respondent

Court:

Judge:
Sackville J

Subject References:
TRADE PRACTICES
misleading or deceptive conduct
passing off
whether charitable organisation's use of name 'seeing eye' was misleading or deceptive or appropriated the reputation of another charitable organisation
whether phrase 'seeing eye' or 'seeing eye dog' distinctive of applicant
whether phrase 'seeing eye' or 'seeing eye dog' descriptive

Legislative References:
Trade Practices Act 1974 (Cth) - 52; 53

Case References:
10th Cantanae Pty Ltd v Shoshana Pty Ltd, cited. - (1987) 79 ALR 299 (FCA/FC)
Attorney General; ex rel Elisha v Holy Apostolic and Catholic Church of the East (Assyrian), cited. - (1989) 37 NSWLR 293
British Legion v British Legion Club (Street) Ltd, considered. - (1931) 48 RPC 555 (Ch D/Farwell J)
Conagra Inc v McCain Foods (Aust) Pty Ltd, cited. - (1992) 33 FCR 302 (FC)
Dial-An-Angel Pty Ltd v Sagitaur Services Systems Pty Ltd, cited. - (1990) 96 ALR 181 (FCA/Wilcox J)
Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd, considered. - (1993) 26 IPR 261 (FCA/FC)
Dr Barnardo's Homes v Barnardo Amalgamated Industries Ltd, cited. - (1949) 66 RPC 103 (Ch D/Vaisey J)
Equity Access Pty Ltd v Westpac Banking Corporation, followed. - (1989) 16 IPR 431 (FCA/Hill J)
Erven Warnink BV v J Townend & Sons (Hull) Ltd, considered. - [1979] AC 731
Global Sportsman Pty Ltd v Mirror Newspapers Ltd, cited. - (1984) 2 FCR 82 (FC)
Holy Apostolic and Catholic Church of the East (Assyrian) v Attorney General; ex rel Elisha, followed. - (1990) 18 NSWLR 291
Hornsby Building Information Centre v Sydney Building Information Centre, cited. - (1978) 147 CLR 216
McCain International Ltd v Country Fair Foods Ltd, cited. - [1981] RPC 69 (CA)
Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2), cited. - (1984) 156 CLR 414
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd, cited. - (1982) 149 CLR 191
Taco Company of Australia Inc v Taco Bell Pty Ltd, followed. - (1982) 42 ALR 177 (FCA/FC)
The Cellular Clothing Company Ltd v Maxton & Murray, cited. - [1899] AC 326
The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, cited. - (1964) 109 CLR 407

Other References:
TD 92/197

Hearing date: 4-12 May 1998
Judgment date: 26 June 1998

SYDNEY

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Decision by:
Sackville J

In these proceedings, one body enjoying charitable status under State and Commonwealth law seeks relief against two other bodies enjoying a similar status. All three bodies train and supply guide dogs to assist blind or visually impaired people. All three are heavily dependent on donations and bequests from the public to support their activities. The principal relief sought by the applicant ("GDOFA") is an order restraining each of the respondents (respectively, "GD NSW" and "Royal GD") 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.

It was common ground between the parties that the expression "guide dogs", which appears in the name of all three organisations, is a generic expression and is not distinctive of any of them. Accordingly, in this judgment I use the term "guide dogs" to refer generally to dogs trained to work with blind and visually impaired persons, regardless of which organisation was responsible for training or supplying them. The sense in which the expressions "seeing eye" or "seeing eye dogs" (with or without capital letters) are used varies, according to the context.

THE ISSUES

GDOFA's Pleaded Case

In its further amended statement of claim, GDOFA alleges that, by reason of its activities since 1960, it has acquired a significant reputation in Australia in the name "seeing eye", when used in connection with the training of "seeing eye" dogs for the blind, the provision of such dogs for blind people and the provision of rehabilitation, life skills and recreational activities for the blind. Those activities are said to include the conduct in Victoria of a training centre for "seeing eye" dogs under the name (since 1963) of "Lady Nell 'Seeing Eye' Dog School and Rehabilitation Centre" ("LN School"); training dogs for the blind as "seeing eye" dogs; training persons from throughout Australia, both at the LN School and in their own homes, to use and work with "seeing eye" dogs; conducting (since 1965) a branch of the LN School in Queensland; and extensively advertising and promoting the services of the LN School throughout Australia under and by reference to the name "seeing eye" and expressions incorporating that name. GDOFA pleads that its reputation signifies or is likely to signify to a significant number of persons that "seeing eye" dogs are trained or approved by it and that the services or activities provided by the person using the words "seeing eye" are sponsored, approved or affiliated with GDOFA. I have understood GDOFA's claim to extend to the expressions "seeing eye" or "seeing eye dogs", whether or not the initial letters or indeed the words are capitalised.

GDOFA's first and primary claim against GD NSW is based on entries inserted by the latter in the Sydney White Pages and Sydney Yellow Pages directories. As the evidence establishes, the relevant Sydney White Pages entries for 1994, 1995, 1996 and 1997 were as follows:

"SEEING-EYE DOG" (see Guide Dog Association of NSW & ACT).

The only entries by GD NSW in the Sydney Yellow Pages, referring to "Seeing Eye", were in the 1995 directory. Identical entries appeared under the headings, respectively, "Charities and Charitable Organisations" and "Disabled Persons' Support Organizations". The entries were as follows:

"SEEING EYE DOG" GUIDE DOG ASSOCIATION OF NSW & ACT

See Advert for Guide Dog

Association of New South Wales & A.C.T. This Heading

5 Northcliff Mlsns Pt...................922 4211"

These entries did not appear in the 1996 and 1997 Sydney Yellow Pages.

GDOFA alleges that by these entries, GD NSW represented to members of the public, contrary to the fact, that the guide dogs provided by GD NSW were trained or approved by GDOFA and that the services provided by GD NSW under or by reference to the words "seeing eye" were licensed or approved by, or affiliated with, GDOFA. It is also alleged that by virtue of the use of the words "seeing eye" in telephone listings, GD NSW solicited donations and testamentary dispositions from the public in circumstances where those words are distinctive of and/or signify services and activities of GDOFA. GD NSW's conduct is alleged to have been in trade or commerce and misleading or deceptive or likely to mislead or deceive, in contravention of ss 52 and 53(c) and (d) of the Trade Practices Act 1974 (Cth) ("TP Act 1997 "). Alternatively, GDOFA pleads that GD NSW, by its conduct, passed off its services and the guide dogs trained by it as trained or approved by GDOFA.

GDOFA also specifically alleges that GD NSW's conduct was intended to mislead members of the public into believing that GD NSW's services were those of GDOFA. Mr Ellicott QC, who appeared with Mr Studdy for GDOFA, made it clear in his opening that GDOFA intended to press the allegation that GD NSW had intentionally misled members of the public.

GDOFA's second claim against GD NSW is that, by means of certain billboard advertisements, it represented to members of the public, contrary to the fact, that it was the only provider of the full range of mobility services in New South Wales and the Australian Capital Territory. This conduct is said to have contravened s 52 of the TP Act.

GDOFA's third claim against GD NSW is that GD NSW used a logo in its billboard advertising that was deceptively similar to that used by GDOFA itself, and thus repeated the false representations to which reference has already been made. This conduct is also said have contravened s 52 of the TP Act and to have constituted the passing off of GD NSW's services as those of, or approved by, GDOFA.

GDOFA's claim against Royal GD is based on the latter's registration in South Australia, Western Australia, Tasmania, the Australian Capital Territory and the Northern Territory of the business name "The Seeing Eye". By this action, Royal GD is said to have held itself out as trading under the business name and as making the same representations as those alleged against GD NSW. Royal GD is alleged to have contravened the TP Act and to have passed off its services as those of or approved by GDOFA.

The relief sought by GDOFA includes damages and exemplary damages against GD NSW for its allegedly intentional misleading of members of the public. It also seeks injunctive relief, including an order restraining GD NSW and Royal GD from promoting or supplying any services provided by them under or by reference to the names "seeing eye" or "seeing eye dog" or any name incorporating the words "seeing eye". Alternatively, GDOFA seeks orders restraining GD NSW and Royal GD from using those names in any telephone directories.

At the hearing, GDOFA did not adduce any evidence to support its claim of damages. In his opening, Mr Ellicott indicated that, if successful, GDOFA wished to have an order for an inquiry as to damages. In his final submissions, Mr Ellicott indicated that GDOFA's main concern was to prevent continuing battles over bequests which use the expression "seeing eye dogs". In the light of these observations, it is not entirely clear whether GDOFA seeks the opportunity, if successful, to pursue its claim for damages. However, as will be seen, this is not a matter that need be considered further.

The Defence

The respondents, by their amended defence, admit that GD NSW has promoted and supplied services in the form of guide dogs and other mobility for the blind by reference to the names "Seeing Eye" and "Seeing Eye Dog", through telephone directory listings. They allege that GD NSW has done this since 1964, not merely through the more recent listings referred to by GDOFA. The respondents admit that GD NSW used the logo as alleged by GDOFA, but deny that they are liable to GDOFA for doing so. The respondents further admit that GD NSW intends to use the phrases "seeing eye" and "seeing eye dog" and to advertise itself as being the only provider of the full range of mobility services in New South Wales and the Australian Capital Territory. However, the respondents deny that either of them has engaged in or will engage in any conduct that should be restrained by order of the Court.

The amended defence pleads two specific defences. The first is that GDOFA's causes of action are statute barred. Since no mention was made of this in submissions no more need be said about it.

The second specific defence is that GDOFA "falsely exaggerated" in its advertising and promotion the extent of its activities and services. The respondents allege that, at least until late 1988, GDOFA consistently provided false figures as to its output of guide dogs. These alleged exaggerations and falsehoods are said to be such that, even if GDOFA 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.

THE EVIDENCE

GDOFA and the respondents each read a large number of affidavits in support of the respective cases. Many of those affidavits annexed or exhibited extensive documentation, which formed part of the evidence in the case. A considerable volume of additional documentation was admitted into evidence, although much of it was not referred to in submissions. Some witnesses were not cross-examined and their evidence is not disputed.

Three witnesses were cross-examined at some length. They were:

•

Mrs Gration, the founder and chief executive officer of the LN School, who gave evidence on behalf of GDOFA;

•

Mr Finucane, since 1990 the chief executive officer of GD NSW; and

•

Mr Ritter, the chief executive officer since 1993 of the Royal GD.

It is necessary to say something about the credit of these witnesses.

Mr Finucane impressed me as giving careful, thoughtful evidence. He endeavoured honestly and directly to address the questions put to him and, in my opinion, made concessions where appropriate. He was strongly challenged on certain issues, but his explanations were supported by the contemporary documentation. An example concerns a bequest of $5,000 paid to GD NSW from the estate of Mrs Crews. Mr Finucane fairly acknowledged that, had he seen the terms of the will (as distinct from a letter from the solicitors for the executors incompletely summarising the will), he would have accepted "in equity" that GD NSW should not retain the bequest. The contemporary correspondence supports Mr Finucane's evidence that he had not seen the terms of the will itself until he gave evidence in the present case. Although Mr Ellicott invited me to reject certain portions of Mr Finucane's evidence as unreliable, I decline to adopt that course.

Mr Ellicott's submissions made no clear challenge to Mr Ritter's credit, but I should record that I find Mr Ritter also to have been a careful and honest witness. I regard his evidence as reliable.

I think it unfortunate that I have to make any comment about Mrs Gration's evidence. She has an extremely distinguished record of service to blind persons, not only through GDOFA, but through her untiring efforts to remove barriers to acceptance of blind persons by the wider community. Mrs Gration, who is herself blind, is plainly an extremely committed, strong-willed and energetic person. She is also a very capable person, who feels passionately about the organisation she founded and has directed (with assistance from others) for so many years.

Mr Macfarlan QC, who appeared with Mr Leopold for the respondent, acknowledged that Mrs Gration's credit was significant only in relation to a limited number of questions, not all of which I necessarily have to decide. Nonetheless, her evidence bears directly on some of the issues I must consider. Self-evidently, a good deal of her evidence was not controversial. But on disputed issues, having made due allowance for Mrs Gration's personality, I have to say that I did not find her to be a reliable witness. I do not think that she was deliberately trying to mislead the Court, but her obvious partisanship interfered substantially with her ability accurately to recount certain events and to explain convincingly matters on which she was challenged. She was prone to lengthy self-serving statements that were difficult to reconcile with the objective circumstances and apparently reliable contemporary documentation. No doubt, as Mr Ellicott suggested, Mrs Gration feels very strongly about what she regards as past injustices inflicted on GDOFA and on her. But her strong feelings have coloured her perception of events to such an extent that, generally speaking, I would not accept her evidence on genuinely contested issues unless there were corroborative documentary evidence or support from other witnesses.

Many other witnesses were also cross-examined, but not at great length. With few exceptions, these were blind persons or persons associated with organisations providing services to the blind. (Some were in both categories.) Their evidence was mostly directed towards the use and understanding of the expression "seeing eye" and "seeing eye dog" within the blind community (an expression used in different senses by different witnesses) and in the wider community.

No issue of credit was raised in relation to any of these witnesses, who included many very impressive individuals. They were all endeavouring to give evidence to the best of their ability. As is to be expected, some of these witnesses did not have a complete recollection of the events or experiences they recounted, some of which occurred many years ago. Some modified, in the course of cross-examination, certain statements made in their affidavits. The significance of the evidence they gave, having regard to the issues in the case, was also in dispute. Generally speaking, however, the evidence from those witnesses was consistent, even though the witnesses called on behalf of GDOFA usually presented their evidence from a different perspective than those giving evidence on behalf of the respondents.

BACKGROUND FACTS

GDOFA's Activities

In 1951, the Guide Dogs for the Blind Association of Western Australia ("GD WA") was established and commenced training dogs in Perth. During the years 1951 to 1957, guide dog associations were formed in the other five States in order to sponsor blind or visually impaired persons to travel to Perth to train with guide dogs. Until the establishment of the LN School in 1960, the Perth centre was the only training facility for guide dogs in Australia.

In 1957, Mrs Gration, who lived then (as now) in Melbourne, received training at GD WA's centre in Perth. Her guide dog was apparently initially called "Nell", but later was known as "Lady Nell". She subsequently had several further guide dogs each of which was given the name "Lady Nell".

In 1959, Mrs Gration established GDOFA as an unincorporated association, based in Victoria, in order (as she said) to improve the standard of training of guide dogs. The following year, GDOFA opened the "Lady Nell 'Seeing Eye' Dog School" in Victoria. In about 1963, the LN School was given its current name, "Lady Nell 'Seeing Eye' Dog School and Rehabilitation Centre for the Blind". The LN School initially operated at premises owned by Mrs Gration and her husband at Wonga Park, but in 1962 the School moved to its present site at Malvern, a suburb of Melbourne. Shortly after the opening of the LN School, GDOFA became a registered charity in Victoria. In 1962, according to Mrs Gration, GD WA's training centre in Perth was transferred to the LN School. In 1969, GDOFA was incorporated in Victoria as a company limited by guarantee. At about the same time, GDOFA became registered as a foreign company in other States of Australia.

In 1965, a committee of GDOFA was established in Queensland. The LN School has maintained an office in Queensland since that time. The office conducts public relations and welfare work. GDOFA employs one dog trainer full time in Queensland; he has the ability to train blind people with guide dogs. The LN School also employs a small support staff.

From about 1960, GDOFA has published newsletters and brochures outlining, inter alia, the history of the Association and the services provided by the LN School. From about the same time, GDOFA has published an annual report. At least since 1987, and probably much earlier, the annual report has been published under the name "Seeing Eye".

In 1963, when GDOFA was still an unincorporated association, it applied to the Chief Secretary's Department in New South Wales for registration as a charity under the law of that State. GD NSW opposed the application, which was rejected on the ground that the needs of the State were met by existing charities in the field. Further applications were rejected on similar grounds in 1967, 1973 and 1977. On each of those occasions, GD NSW made representations to the relevant Minister with a view to persuading the Government to reject the application. Ultimately, in 1996, GDOFA became registered as a charity in New South Wales and, in June 1997, opened an office in Burwood, a suburb of Sydney. GDOFA now employs at that office a person who combines the functions of a long cane trainer, public relations officer and administrator. At some date not disclosed by the evidence, GDOFA was recognised as a public benevolent institution by the Commissioner of Taxation. Consequently, gifts to it are deductible for income tax purposes.

The LN School itself at present employs eight trainers for the training of guide dogs. The School breeds its own dogs. Puppies are placed with "boarding families" for a period of twelve to eighteen months. At the end of that period, the puppy is brought to the School to commence training. The training period is about six months. Many dogs are rejected during this period. While there was some dispute about this in the evidence, it seems that roughly one quarter to one third of dogs undergoing training ultimately "graduate", so to be available as guide dogs for blind or visually impaired persons. A guide dog can be expected to work until it reaches about the age of twelve years.

A blind or visually impaired person who requires a guide dog applies to attend the LN School for training with a specific dog. That training takes place at the School over a four to six week period during which the blind person is in residence. A trainer then accompanies the person to his or her own home to stay for a few days during the settling in period with the dog. The training is provided at no cost to the client.

There was a dispute concerning the numbers of guide dogs successfully trained by GDOFA. The position was clarified by an affidavit from Mr Cooper who is GDOFA's head trainer and has been employed by GDOFA since 1971. (He is also Mrs Gration's husband.) Mr Cooper was not cross-examined. His evidence shows that the number of guide dogs "graduated" by GDOFA from 1962 to 1988 was 215, or roughly eight per annum. From 1988 to 1998, the number was ninety-three, or roughly nine per annum. Of the total of 308 dogs successfully trained, fifty-two were trained for New South Wales residents (17%) and seventy-six for Queensland residents (25%). At present there are some fifty-two dogs trained by GDOFA working throughout Australia.

It is not necessary to consider GDOFA's financial position in detail for the purposes of these proceedings. However, its accounts for the year ended 30 June 1997 showed that it had operating revenue of $2,249,612, made up as follows:

The accounts reveal an operating surplus of $134,355 for the year. As at 30 June 1997, GDOFA had accumulated funds of $7,198,181 and an asset valuation reserve of $3,497,283.

GDOFA has placed entries in telephone directories for the Sydney area (and in other directories) for a considerable period. In the Sydney White Pages in recent years GDOFA has an entry as follows:

"Seeing Eye Dog School Lady Nell

16 Thanet Malvern VIC (03) 9509 5499."

In the 1996 Sydney White Pages the name of the School was in large block letters, and appeared directly below the "Seeing Eye" entry inserted by GD NSW. In the same directory, GDOFA also had an entry in block letters under the name "GUIDE DOG OWNERS' & FRIENDS' ASSOCIATION". That entry was also placed immediately below the corresponding entry for GD NSW, which was of similar dimensions.

In the 1995 Sydney Yellow Pages, GDOFA had an entry in small type under the name "'Seeing Eye' Lady Nell Dog School". In 1996 the entry was changed to "'SEEING EYE' DOG SCHOOL". In that year entries were added in GDOFA's own name (in small letters) and under the name "Lady Nell 'Seeing Eye' Dog School" (in capital and bold letters).

Royal GD's Activities

On 18 December 1957, representatives of various State Guide Dog associations resolved to form a National Council of Guide Dogs for the Blind Associations of Australia ("National Council"). They also resolved to establish a guide dog training centre in Victoria for the training of blind persons with guide dogs from all over Australia. In 1960, Royal GD (then known as the National Council) acquired a site at Kew to build a national training school for guide dogs. That school, then known as the National Guide Dog Training Centre, opened in 1962. The centre was later named the "National Mobility Centre" ("NMC").

The National Council was incorporated as a company limited by guarantee on 11 December 1961. It subsequently changed its name to Royal GD, the name of the second respondent. Royal GD now has five members, each of which is a separate legal entity. These are GD NSW (the first respondent); Guide Dogs Association of Victoria; Guide Dogs for the Blind Association of South Australia and Northern Territory; Association for the Blind of Western Australia (affiliate member); and Royal Guide Dogs for the Blind Association of Tasmania. Royal GD is recognised as a public benevolent institution by the Commissioner of Taxation so that gifts to it are deductible from the taxable income of the donors.

Royal GD has trained guide dogs at the NMC since 1962. In total, it has trained and provided to blind and vision impaired persons about 1,675 dogs, or roughly an average of forty-eight per annum. In the early 1990s, a period in respect of which there was detailed evidence, about sixty dogs per annum were trained successfully. In the financial year 1996-1997, Royal GD's expenditure totalled $2.578 million, of which $1.024 million represented the cost of training guide dogs and $0.473 million represented the cost of client training and providing client support with guide dogs.

GD NSW's Activities

GD NSW was formed as an unincorporated association in October 1957, and in June 1958 was registered as a charity in New South Wales. On 28 June 1962, the association was incorporated as a company limited by guarantee under the name "Guide Dogs for the Blind Association of New South Wales". In 1979, the Association changed its name to "Guide Dog Association of New South Wales", and in 1991 the name was again changed, to its present designation. GD NSW is recognised as a public benevolent institution by the Commissioner of Taxation. It also holds an authority under the provisions of the Charitable Fund Raising Act 1991 (NSW).

The following table, taken from GD NSW's annual report for the year ended 30 June 1997, shows the categories of income and expenditure for a five year period.

It will be seen from this table that GD NSW had a surplus of $1,655,256 for the 1997 financial year. According to the balance sheet at 30 June 1997, its accumulated funds totalled $14,965,519, comprising retained profits of $5,448,689 and reserves of $9,516,830.

GD NSW raises its funds almost exclusively from people within New South Wales and the Australian Capital Territory. The donations are received principally from mail appeals, of which there are five each year. As the table shows, GD NSW receives a significant proportion of its income from bequests (nearly $5 million in each of the 1996 and 1997 years, amounting to nearly 60 per cent of net income). Donations exceeded $2 million (over 25 per cent of net income) in each of those years.

The mail appeals are carried out by a team of three full-time and three part-time staff. They establish and maintain computerised lists of donors and potential donors, who are approached by means of letters and brochures. GD NSW also solicits bequests, by advertising in journals and otherwise encouraging people to make wills in favour of the organisation.

The table shows net income from telemarketing and merchandising amount to approximately $317,000 in 1995/1996 and $247,000 in 1996/1997. This income is derived from the activities of GD NSW's telephone marketing department, which invites people to purchase household items over the telephone. The department also sells wines, GD NSW receiving a commission from the sales. It relies on three permanent staff and about thirty casual or part time staff to canvass members of the public. The activities of the department also generate a relatively small amount in donations ($49,000 in 1996/1997). Some people canvassed prefer to give donations rather than, or in addition to, purchasing goods.

From 1962, when Royal GD established the NMC at Kew in Victoria, clients of GD NSW were sent to Kew for initial training with a guide dog. While at Kew, clients stayed at the residential quarters of the NMC, usually for a period of about four weeks. Clients being trained with their second or subsequent dog (for example, because the first dog had died) either attended the NMC or were trained at their home (or both). Training at home is known as "domiciliary training", while a combination of both types is known as "Res/Dom training".

From 1964 to 1980 GD NSW placed an entry in the Sydney White Pages. In the 1980 directory the entry was as follows:

SEEING EYE DOGS (Guide Dogs For The Blind Asscn of NSW) 5 Northcliff Mlsns Pt-922 4211.

The entry for all previous years was similar but not identical because the telephone numbers changed from time to time.

Mr Jones, who was GD NSW's executive officer from 1964 to 1990 and its executive general manager from 1990 to 1993, gave affidavit evidence that he had been responsible for placing the initial entry in the 1964 Sydney White Pages. He said that he had done so because he knew that members of the public seeking to contact GD NSW were just as likely to look under the name "seeing eye dog" as under the name "guide dog". However, Mr Jones conceded in cross-examination that his recollection had been faulty, since his employment at GD NSW had not commenced until after the first entry had been placed. He accepted that the entry had simply been continued thereafter (subject to changes in telephone numbers), until it was withdrawn in 1980. Mr Jones was not party to the decision to withdraw the entry, that being the responsibility of a public relations department that had been formed by that time. No one was called from that department to explain the decision to withdraw the entry.

GD NSW has never been involved in the breeding of guide dogs. However, in about 1980 it became involved in dog training on a limited basis, and its involvement has intensified since that time. According to Mr Finucane, in March 1998, there were 177 working guide dogs in New South Wales and the Australian Capital Territory, of which sixty-three were trained in New South Wales. There are thus many more dogs in New South Wales and the Australian Capital Territory trained by Royal GD or GD NSW than there are dogs trained by GDOFA.

In 1996, GD NSW initiated a pilot scheme for the training of clients with guide dogs. Under this scheme, clients train with guide dogs on weekdays over a four week period. During this period (other than weekends), they are accommodated in hotels or motels in Camden, which is adjacent to the training centre at Catherine Field. As at March 1998, twenty-four clients had been trained with a guide dog in this manner. Training using hotels or motels as a base is called "Regional Training", while combined training at hotels or motels and the client's home is known as "Reg/Dom training". Clients do not pay for the training received by them.

The following table shows the type of training undertaken by the 177 persons identified by Mr Finucane as working with a guide dog in New South Wales:

THE SUBMISSIONS

GDOFA's Contentions

Mr Ellicott advanced four principal propositions in support of GDOFA's case.

(i)

The expressions "seeing eye" and "seeing eye dogs" have become distinctive of GDOFA and are understood by the "blind community" to refer to guide dogs trained and provided by GDOFA. The blind community, for this purpose, includes

(a)

blind and vision-impaired persons;

(b)

organisations of and for the blind;

(c)

families of blind and vision impaired persons;

(d)

supporters and volunteers of the various organisations of and for the blind and vision impaired persons;

(e)

donors and potential donors to such organisations; and

(f)

purchasers and potential purchasers of merchandise.

(ii)

The use of the words "seeing eye" and "seeing eye dog" by each of the respondents was misleading or deceptive or likely to deceive, within the meaning of s 52 of the TP Act. Any use by the respondents of these expressions was likely to mislead or deceive the relevant class (that is, members of the blind community) because

(a)

the respondents did not describe their own dogs as "seeing eye dogs", but as "Guide Dogs" (except in the telephone listings);

(b)

the use by GD NSW of the expression "SEEING EYE DOGS" in the listings (that is, in inverted commas and capitals) conveyed to the reader the notion that GD NSW provided a product under that name which in fact it did not;

(c)

if a person hearing or seeing the use by the respondents of the expression "seeing eye" made inquiries about obtaining a "seeing eye dog", he or she would be supplied with a guide dog, not a "seeing eye dog" (that is, a dog trained by GDOFA); and

(d)

neither of the respondents has used or intend to use the business name "The Seeing Eye" registered by Royal GD.

(iii)

The use by each of the respondents of the expression "seeing eye" was "in trade or commerce" for the purposes of s 52 of the TP Act. Each respondent, despite its charitable status, undertook substantial marketing activities and used the expression "seeing eye" in connection with those activities. Moreover, the mere registration of the business name "The Seeing Eye" by Royal GD was conduct in trade or commerce.

(iv)

The respondents used the expressions "seeing eye" and "seeing eye dog" in circumstances where they knew that GDOFA's dogs were known as "Seeing Eye Dogs" and where they used only the expressions "Guide Dogs" or "guide dogs" to describe and promote their own dogs.

In the alternative, GDOFA submitted that the respondents, by their conduct, had passed off their services and the guide dogs trained by them as those of GDOFA. Mr Ellicott contended that the case in passing off did not require GDOFA to demonstrate that the respondents' activities were in trade or commerce.

The Respondent's Submissions

The respondents' principal contention was that the expressions "seeing eye" or "seeing eye dog" were essentially descriptive when applied to guide dogs trained for and used by blind people. The very descriptiveness of the expressions meant that they could not have become distinctive of GDOFA or its guide dogs. In any event, the evidence established that the expressions were understood in a generic sense in the general community. That evidence, and the limitations on GDOFA's evidence of reputation, precluded any finding that the expressions had become distinctive of GDOFA or its guide dogs. Thus the foundation of GDOFA's case was lacking.

Then the respondents said that even if the expressions had to some extent become distinctive of GDOFA or its guide dogs, the respondents had not engaged in any conduct that was likely to mislead or deceive. The telephone directory entries merely represented (correctly) that dogs described by the general community as "seeing eye dogs" could be obtained from GD NSW. These entries were no more misleading than GDOFA's use of the words "Guide Dogs" (forming part of its corporate name) in its own entries in telephone directories.

Next, the respondents challenged the proposition that their conduct had been "in trade or commerce". According to Mr Macfarlan's written and oral submissions, GDOFA's claim was fatally flawed because neither of the respondents had used the expressions "seeing eye" or "seeing eye dog" in trade or commerce. Mr Macfarlan contended that, if the respondents' first two submissions were correct, GDOFA's causes of action under the TP Act 1992 and its claim in passing off were bound to fail. In supplementary written submissions, however, the respondents conceded that, in light of the decision of the New South Wales Court of Appeal in Holy Apostolic and Catholic Church of the East (Assyrian) v Attorney General; ex rel Elisha (1990) 18 NSWLR 291, a passing off action can be maintained where an applicant is a charitable organisation not having commercial goodwill in the ordinary sense. Although they did not expressly say so, it appears that the respondents intended also to concede that a charitable organisation can establish a claim in passing off even if the infringing party has not itself acted in trade or commerce.

The respondents further submitted that there was no basis for finding that they had deliberately set out to mislead members of the public. They also pressed their pleaded defence, that GDOFA should be denied any relief to which it otherwise might be entitled by reason of its lack of clean hands.

LEGAL PRINCIPLES

The TP Act

Most of the argument in the present case focussed on the principles governing the application of s 52 of the TP Act, despite GDOFA's reliance on the doctrine of passing off. Section 52(1) provides as follows:

"A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive."

For present purposes, the general principles governing the application of s 52 of the TP Act were conveniently stated by Hill J in Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431 (FCA/Hill J), at 440-441:

"1.

For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: [Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (FCA/FC)], at 202....

2.

There will, however, be no contravention of s 52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: [Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, at 198-199, 209-210]; Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) [2 FCR 82 (FC), at 91].

3.

Conduct will be likely to mislead or deceive if there is a 'real or not remote chance or possibility' of misleading or deception regardless of whether it is less or more than 50 per cent: Global Sportsman at [91]. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu, at 198-9.

4.

Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at 209; Bridge Stockbrokers Ltd v Bridges (1984) 57 ALR 401, at 413 per Lockhart J. Since actual deception need not be shown the court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v Katies Ltd (1977) 29 FLR 336, at 343. The test in passing off cases is usually expressed as being whether a 'substantial number of persons likely to become purchasers...are liable to be deceived by the defendant's use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff's goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question' (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v Odhams Press Ltd [1962] RPC 163, at 168 and see Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, at 175-6; 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299, at 315, per Gummow J).

5.

In a case such as the present applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area: Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC 202; BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However, at least in some circumstances, very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country: Miki Shoko Co Ltd v Merv Brown Pty Ltd [1987] ATPR 40-858.

6.

Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu, at 197 and a corporation which acts honestly and reasonably may none the les engage in conduct that is likely to mislead or deceive: Yorke v Lucas (1985) [158 CLR 661, at 666]."

The judgment of Deane and Fitzgerald JJ in Taco Bell sets out (at 202-203) guidelines for the application of s 52 of TP Act, in a case where the suggested misrepresentation has not been expressly made.

"First, it is necessary to identify the relevant section (or sections) of the public (which may be the public at large) by reference to whom the question of whether conduct is, or is likely to be, misleading or deceptive falls to be tested...

Second, once the relevant section of the public is established, the matter is to be considered by reference to all who come within it, 'including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations...

Thirdly, evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself conclusively establish that conduct is misleading or deceptive or likely to mislead or deceive. The court must determine that question for itself. The test is objective.

Finally, it is necessary to inquire why proven misconception has arisen: Hornsby Building Information Centre v Sydney Building Information Centre (1978) 147 CLR 216, at 228). The fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of misleading or deceptive conduct on the part of the respondent."

Passing Off

In the present case, because of the concessions made by the respondents in relation to GDOFA's passing off claim, it is necessary to consider whether a charitable or non-profit organisation can maintain a case in passing off, even where the respondent's conduct has not been in the course of trade (or, to use the language of s 52 of the TP Act, in trade or commerce). Ordinarily, of course, the passing off action is invoked in a dispute between traders. The elements of the cause of action in passing off in such a case were stated by Lord Diplock in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731, at 742:

"(1)

a misrepresentation

(2)

made by a trader in the course of trade

(3)

to prospective customers of his or ultimate consumers of goods or services supplied by him

(4)

which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and

(5)

which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."

That statement has been accepted in Australia: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, at 443-444, per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed); Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, (FC), at 310, per Lockhart J.

The principles stated in Erven Warnink require some modification when applied to non-traders such as charitable organisations (although of course some charitable organisations do engage in trade). Elisha, to which I have referred, concerned a dispute between two groups of members in Sydney of the Holy Apostolic and Catholic Church of the East. The plaintiff sought an order that the first defendant change its name to one that did not lead to confusion between the Church and the first defendant. The order was sought under both the TP Act and the general law of passing off. The trial Judge rejected the TP Act claim, on the ground that neither of the bodies had engaged in trade or commerce: Attorney-General ex rel Elisha v Holy Apostolic and Catholic Church of the East (Assyrian) Australia NSW Parish Association (1989) 37 NSWLR 293 (Young J), at 317. However, his Honour upheld the passing off claim (at 318):

"[A]s a matter of general principle, I cannot see any reason why a religious organisation should not have the same protection as to the goodwill in its name as is afforded by the law to commercial organisations. Surely whilst religious organisations may not have ordinary commercial goodwill, they have something closely analogous thereto in that their reputation will be damaged by people falsely ascribing as an adjunct to them the organisation which is holding itself out by a deceptively similar name."

The Court of Appeal specifically approved this passage (at 292). In addition to citing a number of American authorities, the Court relied on two English authorities as supporting the principle stated by Young J. In one of these, British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555 (Ch D/Farwell J), the plaintiff had been formed by a Royal Charter in 1925, to take over the organisation and property of an unincorporated association formed in 1921 to make provision for the welfare of service personnel and their families. The name "British Legion" had become associated with the plaintiff which, as the Court pointed out in Elisha, was a benevolent or eleemosynery body. Farwell J granted an injunction to restrain the defendant, a non-political social club, from using the name "British Legion". His Lordship said this (at 563):

"I think it is clear on the authorities that the basis of an action of this kind is damage, that is to say, that there must be evidence either of damage already committed, or the circumstances must be such as that the Court can properly come to the conclusion that there is a serious risk, a real tangible risk, of damage in the future; further, it must be damage to property in the sense that the Plaintiff association must have something which is capable of being damaged, but if the Plaintiff association has something which is capable of being damaged, and if the Court comes to the conclusion that there is a real risk of damage in the future, then, as it seems to me, the Plaintiff association is entitled to relief, because if the Plaintiff association has once got a legal title to the name which it uses and its property is likely to be damaged by something which the Defendants are doing, then the Court will interfere to prevent such damage happening in the future."

Nothing in the judgment suggests that the plaintiff had to establish any trading or business activities on the part of the defendant in order to succeed. The second case relied on in Elisha, Dr Barnardo's Homes v Barnado Amalgamated Industries Ltd (1949) 66 RPC 103 (Ch D/Vaisey J), was a brief interlocutory judgment but is consistent with British Legion.

These authorities indicate that Mr Macfarlan's concessions (including the implicit concession to which I have referred) were properly made. A charitable or non-profit organisation may be entitled to obtain injunctive relief in respect of actual or threatened damage to its reputation or goodwill, notwithstanding that neither it nor the infringing body has acted (to use the language of the TP Act) in trade or commerce. The passage I have cited from British Legion suggests that it is necessary for a charitable institution claiming injunctive relief for infringement of its reputation or goodwill to show that there is a "serious" or "real, tangible" risk of damage in the future. This formulation is very similar, if not identical, to the test applied under s 52 of the TP Act, to determine whether conduct "is likely to mislead or deceive", which is that there must be a "real and not remote chance or possibility regardless of whether it is less or more than fifty per cent": Global Sportsman, at 87. It may be that the test stated in British Legion requires some modification in view of the use of the word "probably" in the fifth proposition stated by Lord Diplock in Erven Townend, but that is not an issue I need pursue at present.

The result of the authorities, therefore, appears to be that a charitable or non-profit organisation may obtain injunctive relief to restrain another organisation making misrepresentations, or perhaps engaging in other conduct, which threaten harm to the first organisation's goodwill or reputation. The passing off action available to a such an organisation, although not identical to the remedies provided under the TP Act in respect of conduct likely to mislead or deceive, is very similar. The gist is not conduct that is misleading or deceptive or likely to mislead or deceive, but conduct that appropriates goodwill or harms reputation. However, very often, the two categories of conduct will coincide. The major difference is that charitable or non-profit organisations relying on passing off need not establish that the offending conduct is in trade or commerce, or in the course of a business undertaking.

The Test of Distinctiveness

It is not necessary to consider whether the conduct which gives rise to a cause of action in passing off in a charitable or non-profit organisation is the same as conduct which involves a contravention of s 52 of the TP Act (assuming it to be in trade or commerce). Both parties were content to approach this case on the basis that, in order to succeed, GDOFA had to demonstrate, at the least, that the expression "seeing eye" and "seeing eye dog" were distinctive of it or its guide dogs and that the respondents had, by their use of those expressions, misrepresented (to a relevant class of persons) that they had an association or affiliation with GDOFA.

It follows that, whether GDOFA's case is founded on the TP Act or in passing off, the first and critical question is whether the expressions "seeing eye" and "seeing eye dogs" had become distinctive of GDOFA or of its guide dogs. Some authorities have suggested that a clear distinction should be drawn between a descriptive and non-descriptive trade name. For example, in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216, at 229, Stephen J said this:

"There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39, at 42, per Lord Simonds). As his Lordship said [at 43], the possibility of blunders by members of the public will always be present when names consist of descriptive words - 'So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.' The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe."

However, it is now established that the distinction is not rigid and that a descriptive term may acquire a secondary meaning such that it becomes distinctive of one party's business, goods or services. In Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261 (FCA/FC), at 269, the Court approved the following statement of Hill J in Equity Access, at 448:

"Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between names that contain ordinary English words that are in some way or other at least partly descriptive. The further along the continuum towards the fancy name one goes, the easier it will be for a plaintiff to establish that the words used are descriptive of the plaintiff's business. The closer along the continuum one moves towards a merely descriptive name the more a plaintiff will need to show that the name has obtained a secondary meaning, equating it with the products of the plaintiff (if the name admits of this - a purely descriptive name probably will not) and the easier it will be to see a small difference in names as adequate to avoid confusion."

In Dodds, the Court pointed out that

"[e]ven descriptive words may become distinctive of the business of a particular person and if the use of such words by another is calculated to deceive persons into believing that the business of their originator is carried on by the parasitic user and is likely to cause damage to the originator's business, then a claim for relief for passing off may succeed."

Their Honours cited BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 12 ALR 363, a case where the High Court held (at 369) that the name "Budget Rent A Car" had become distinctive of the respondent's business notwithstanding that it was composed of ordinary descriptive words. They also referred to Reddaway v Banham [1896] AC 199, in which a jury finding that "Camel hair belting" had become distinctive of the plaintiff's goods was upheld. However, the Court in Dodds referred to Reddaway as an "extreme example" of a case where a descriptive mark has acquired a secondary meaning, a comment echoing observations made in The Cellular Clothing Company Ltd v Maxton & Murray [1899] AC 326, at 336, per Lord Halsbury LC; at 339-340, per Lord Hand; see also McCain International Ltd v Country Fair Foods Ltd [1981] RPC 69 (CA).

In Dodds itself, the Full Court upheld a finding by the trial Judge that the expression "solar tint" had not become distinctive of the appellant's business which involved the insulation of polyester-based film on motor vehicle and flat glass windows. The Court observed (at 269) that "the issue of distinctiveness is one of fact, to be determined on the available evidence".

DISTINCTIVENESS?

Use by the Parties

The evidence establishes that, except for the telephone listings from 1964 to 1980 and from 1994 to 1997, neither respondent had ever used in its literature any expression to refer to its dogs other than "guide dogs" or "Guide Dogs". Mr Finucane, for example, accepted that GD NSW had used those expressions in its annual reports and other literature and, except for the directory entries, had never used the expression "seeing eye dogs". Mr Ritter agreed that, for as long as he had been at Royal GD, that organisation had never described its dogs as "seeing eye dogs". Indeed, he accepted that Royal GD had "gone out of its way to call its dogs 'guide dogs'".

It is also clear that staff of Royal GD and GD NSW has at all material times referred to its dogs as "guide dogs". Ms Massingham, for example, a vision impaired person, had undertaken mobility training at the NMC at Kew for a two week period in 1993. During that period, and during a shorter visit in 1995, she heard the trainers and other people using the dogs refer to them only as guide dogs. Ms Massingham's evidence was consistent with that of other witnesses, including Mr Finucane and Mr Ritter, whose knowledge extended over a longer period than Ms Massingham could refer to.

From GDOFA's perspective, the evidence shows that it has used the expression "seeing eye" to refer to dogs trained by it. Although its name incorporates the phrase "Guide Dog", the LN School contains the expression "'Seeing Eye' Dog" in its full name. GDOFA has for many years published annual reports under the title "Seeing Eye". Its trainers and clients (that is, those trained with guide dogs) have at all material times referred to the dogs as "seeing eye dogs" and not as "guide dogs". There is no doubt that this usage has been encouraged for many years by Mrs Gration and her staff.

Mr Ellicott relied heavily on these factual matters to support the contention that the words "seeing eye" were distinctive of GDOFA and of its guide dogs. However, in accordance with the principles discussed earlier, it is necessary to consider whether the expressions "seeing eye" or "seeing eye dog" should be regarded as closer to the descriptive or invented name end of the continuum. This will influence, if not determine, whether GDOFA has established that the expressions are distinctive of it and its dogs. It is also necessary to bear in mind, as will be seen, that GDOFA has sometimes used the expressions in a manner which suggests that other organisations servicing the blind community employ the same expressions.

A Descriptive Expression?

One approach to the question of descriptiveness is simply to assess, as a matter of impression, whether the expressions "seeing eye" or "seeing eye dogs", when applied to or used in connection with dogs trained to guide blind or visually impaired people, is a descriptive phrase. In the present case, where there was a good deal of evidence relevant to the issue, I think it preferable to provide some background as to the usage of the expressions "seeing eye" and "seeing eye dog". In this connection, the crucial time by reference to which distinctiveness (and therefore descriptiveness) is to be assessed (as Mr Ellicott's submissions implicitly accepted) is the date at which the respondents commenced the activities said by GDOFA to constitute misleading or deceptive conduct or passing off. That date is about early 1994, the time the first "seeing eye dog" telephone directory entry was placed by GD NSW. Neither GDOFA nor the respondents suggested that the usage or character of the expressions used in the directories changed between 1994 and 1997, when the last entry relevant to these proceedings was placed by GD NSW.

The expression "seeing eye", as part of the English language, has ancient and impeccable origins. It was used in the King James version of the Bible (Proverbs, 20:12):

"The hearing ear and the seeing eye,

The Lord has made both of them."

In this century, the expression "seeing eye" became associated with guide dogs for the blind in the United States in part (as the evidence suggests) because of an organisation known as "The Seeing Eye", founded by a blind man, Morris Frank. In 1927, Morris Frank travelled to Switzerland and persuaded an American, Mrs Dorothy Eustis, to use the breeding facilities of her Swiss estate for the development of guide dogs for the blind. Later, Morris Frank set up the organisation known as "The Seeing Eye" in New Jersey.

In 1957, the book "The First Lady of the Seeing Eye", by Morris Frank and Blake Clark, was published in the United States. The book described Mr Frank's experiences over the years. His first guide dog, Buddy, was described on the dust sheet as "the first Seeing Eye dog guide". The book was published or distributed in Australia and a film based on the book was screened in this country shortly afterwards. Mrs Gration said she had read the book and said that the film had been shown widely and was very popular. I infer from her evidence that the expression "seeing eye dog" gained additional currency in Australia in the late 1950s because of widespread public knowledge of the book and film, although I do not think that the use of the expression in this country was exclusively due to that knowledge. (As will be seen, Mrs Gration herself used the expression in 1955, before the book was published.)

This background does not of itself determine whether the expressions "seeing eye" and "seeing eye dog" are essentially descriptive terms when applied to or used in connection with dogs trained to guide blind or visually impaired people, although the history suggests that the expressions are descriptive. Be that as it may, there are three additional factors which, in my view, lead to the conclusion that the expressions, when applied or used in this way, are essentially descriptive.

First, although the expression "seeing eye" is not a single word, it is defined in at least one standard dictionary. The New Shorter Oxford English Dictionary (1993 ed) defines "seeing eye" to mean "the faculty of seeing". This adequately describes the facility provided by guide dogs for blind or visually impaired persons. The definition suggests that the expression "seeing eye", when used in connection with dogs trained to assist blind people, essentially describes the principal function performed by those dogs.

Secondly, the evidence shows that the expressions "seeing eye" and "seeing eye dog" have been and are used widely in the general community to describe guide dogs trained to assist blind people. (This evidence is also relevant to the issue of whether the expressions acquired a secondary meaning distinctive of GDOFA or its dogs.) Mrs Gration herself used the expressions in this way in 1955, when she wrote to the Western Australian Association stating that she would "like to secure a 'seeing eye Dog'" from that organisation. Prior to the establishment of the LN School in 1960, newspaper articles in Victoria used "'Seeing-eye' Dogs" as an expression referring generally to dogs trained to guide blind people.

During the period from 1960 to the present day there is ample evidence of widespread usage of the expressions in the descriptive sense to which I have referred. One way this has occurred is through popular books and television programs. For example, the book "Gone Fishing'" by Nino Culotta (John O'Grady) was published in Australia in 1962 and ultimately (according to the publishers) sold 100,000 copies. It included this sentence (at 82-83):

"An' next time you come out on the River, bring a seein' eye dog with you."

During the period 1993 to 1996 an episode of the popular American television program "The Simpsons" was screened on nine occasions on Australian television stations. The episode, entitled "Whacking Day" was seen in total by well over a million viewers. It used the expression "seeing eye dog" in the same sense as Nino Culotta's book.

During the same period (from the early 1960s until the present day) newspaper articles appeared in at least several States with some regularity, if not frequency, which used the expression "seeing eye dog" in a descriptive manner. It is clear enough that the press has also used the expression "guide dogs" in a descriptive or generic way, when referring to dogs trained to assist blind people. But that does not detract from the fact that the press has regularly employed the expressions "seeing eye" and "seeing eye dog" to describe dogs trained to guide blind people, regardless of the organisation responsible for training them.

Thirdly, the use by the press of these expressions reflects the usage in the general community. A succession of witnesses called by the respondents gave evidence that on hundreds of occasions, or even more frequently, they had heard people in the general community refer to dogs trained to assist blind persons as "seeing eye dogs". The inevitable inference from their evidence is that, generally speaking, sighted persons having no particular association with blind persons use and understand the expressions "seeing eye" or "seeing eye dogs" to describe dogs trained to assist the blind. Members of the general community use the expression "guide dog" in much the same way.

This usage has been extended to regulations and official publications that employ the expression "seeing-eye dog" in a generic sense. Thus the Royal Botanic Gardens and Domain Trust Regulation , made pursuant to the Royal Botanic Gardens and Domain Trust Act 1980 (NSW), provided that certain provisions did not "prohibit a person from bring into the Gardens...a seeing-eye dog that is in harness": reg 16(3). While the 1992 Regulation has been repealed, a similar provision appears in the Royal Botanic Gardens and Domain Trust Regulation 1997, reg 35(2); see also Sydney Opera House Trust By-law 1993, cl 10(2). Similarly, a Determination issued by the Australian Taxation Office in 1992 (TD 92/197), concerning public benevolent institutions referred to information being provided by them concerning such issues as "registering a seeing eye dog for the blind".

GDOFA has chosen to employ essentially descriptive expressions to refer to itself and to the dogs it has trained, albeit expressions that might be thought to have a slight metaphorical element. It follows that the use of those expressions by GDOFA is close to the "descriptiveness" end of the continuum identified by Hill J in Equity Access. In accordance with the authorities to which I have referred, GDOFA has a heavier burden to discharge if it is to show that those expressions have acquired a secondary meaning so as to have become distinctive of GDOFA or its services (including the dogs it trains).

A Secondary Meaning?

It will be recalled that GDOFA's case is that the words "seeing eye" and "seeing eye dogs" have become distinctive of GDOFA and dogs trained by it in the "blind community". Mr Ellicott's submissions defined that community very broadly to include donors and potential donors to organisations of and for the blind and purchasers and potential purchasers of merchandise from such organisations. However, the core group within the blind community, on any view of that term, is people who are blind or seriously vision impaired.

Mr Simpson, the Direct Marketing Manager of the Royal Blind Society of New South Wales ("RBS") estimated that there are about 24,000 blind people in Australia. He made this estimate on the basis that about this number of people receive either the (non-means tested) disability support pension or the aged pension by reason of blindness. Mr Simpson's estimate was consistent with the other meagre evidence on the subject, and I accept it. It is interesting that Mr Simpson, who is himself blind, identified the "blind community", as meaning blind people themselves, organisations of blind people (such as RBS) and smaller networks of blind people. This definition excludes the three parties to the present litigation, since Mr Simpson regards these bodies as agencies for the blind. He saw organisations of this kind as coming within the "blindness sector", which in his view comprises the blind community, together with organisations for the blind.

In considering whether the relevant expressions have become distinctive of GDOFA and its services, in relation to the "blind community" as defined by it, the evidence must be scrutinised carefully. In particular, it is necessary to consider the limitations on the evidence adduced on behalf of GDOFA as to the extent to which the expressions have become associated with it and the dogs trained by it. In my view, those limitations are important.

First, the literature published by GDOFA has often used the expression "seeing eye" in a context which recognises that it is not a term that can be applied distinctively to GDOFA itself or to its dogs. For example, at an early stage in its history GDOFA referred to LN School as the "original 'seeing eye' dog school and rehabilitation centre in Victoria", implying (as was the case) that there was one other "'seeing eye' dog school" in the State.

This reference would not be particularly significant had it been an isolated phenomenon. But the annual reports (published under the name "'Seeing Eye'") contain similar references. For example, the 1992 annual report referred to the LN School as

"the first school to cause legislation to be passed giving blind persons accompanied by a 'seeing eye' dog the right to enter any place and travel on any form of public transport."

Since the legislation was not confined to persons using dogs trained by the LN School, the expression "'seeing eye' dog" was clearly used in a generic or descriptive sense. The 1995 and 1996 annual reports (and others) described the LN School as "the first 'Seeing Eye' dog school in...Victoria". Despite Mrs Gration's reluctance to concede that these references are significant, they demonstrate that GDOFA itself has not used the expressions "Seeing Eye" or "seeing eye" to refer exclusively to its own dogs, but has frequently and consistently used them to refer generally to dogs trained to guide blind or visually impaired people.

Secondly, the use of the expressions "seeing eye" or "seeing eye dogs" by GDOFA, in its published material, is closely associated with references to the "Lady Nell School". For example, for many years GDOFA has regularly placed an advertisement in the Australian Law Journal which invites solicitors to recommend to clients making a will that they should make bequests to "The Lady Nell 'Seeing Eye' Dog School & Rehabilitation Centre". The form of the advertisement appears to have changed little over the years. It uses the expression "'Seeing Eye'" four times as part of references to the LN School (which is described twice by its full name and twice by the shorter phrase "The Lady Nell 'Seeing Eye' Dog School"). The advertisement also says that the LN School provides "seeing eye dogs free to blind persons resident in Australia", but there is nothing to suggest that the expression is being used other than in a generic sense.

Similarly, the annual reports published under the name "'Seeing Eye'" contain prominent references to "Lady Nell". The title page, for example, refers in prominent type to the LN School (under its full name) and to the Queensland Branch of the LN School. The 1996 report also refers to the "LADY NELL 'SEEING EYE' DOG SCHOOL SYDNEY BRANCH". I have already noted that the annual reports contain language suggesting that "seeing eye dogs" is not a term that can be applied distinctively to GDOFA or its dogs.

Thirdly, the witnesses called by GDOFA, although generally stating that they associated the expression "seeing eye dog" with GDOFA and its dogs, for the most part acknowledged implicitly or explicitly that this understanding was shared only by a small group of particularly well-informed people. Some illustrations demonstrate the point.

Mr Simpson, in his affidavit, stated that in the blindness community and the blindness sector (as he defined those terms) he had only ever heard the words "seeing eye" and "seeing eye school" used in relation to the LN School. In his oral evidence, when asked whether he had heard of dogs other than Lady Nell dogs being referred to as "seeing eye" dogs, he answered in the negative, but went on to say that

"in the blindness community which is the group that I, I particularly relate to, it is my understanding that the organisations and the terms are very well known within the blindness community."

Later, he addressed the use of the words "guide dog":

"I thought you said earlier that 'guide dog' was a generic term in your understanding?---Not within the blindness community where people are very much aware of the organisations and the terminologies they use."

Mr Cox, who swore two affidavits, was trained as a guide dog instructor and until 1988 worked at the NMC at Kew. In that year, he moved to New Zealand to take up the position of General Manager of the Guide Dog Services for the New Zealand Foundation for the Blind, a position he continues to hold. In his affidavits, Mr Cox said that in twenty years of working within the "blind community" he had only heard or seen the words "seeing eye dogs" used in connection with the LN School. In his second affidavit, he defined the expression "blind community" broadly, to include not only blind and vision impaired persons, but their families, organisations of and for the blind and donors and supporters of various organisations.

However, in his first affidavit, Mr Cox said that the

"blind community is an extremely small, 'niche' community in which you invariably find that the organisations involved know each other and have knowledge of other organisations that exist and provide goods or services for blind, vision impaired persons and their families".

This statement is not easy to reconcile with the broad definition of "blind community" put forward by Mr Cox, having regard to the fact that organisations such as the respondent received donations and other support from many people in the general community. Moreover, when asked to give examples of the usage of the expression "seeing eye dog", Mr Cox gave illustrations of the expression being used by persons who had trained at the LN School in the course of their dealings with other blind people or with a State organisation for the blind. He accepted that these illustrations, which concerned events which occurred many years ago, were "fairly representative" of his experience.

Mr Peterson, who was employed as Executive Director of the Royal Victorian Institute for the Blind from 1970 until 1990, said that within the blindness community the dogs trained by the LN School were known as "seeing eye dogs". He explained that he used the term "blindness community" to mean the senior management of organisations of and for the blind and their clients. Mr Peterson said this:

"It may not be the most frequent use [that is, in a generic sense] but you have at times heard the expression 'seeing eye' dogs used in a similar fashion, have you not?---By whom?

Well, let us start with the people in the blindness community?---No. I think the blindness community were very clear in distinction between the two organisations and the dogs that they trained.

Then outside the blindness community?---The general public I don't think are greatly aware of the difference."

He gave as illustration of conversations in which the expression "seeing eye dogs" was used, those which involved employees or board members of his organisation who themselves had guide dogs trained at the LN School.

Ms Nilsen has provided services to the blind community in Victoria, including braille books, talking libraries and computers, for a lengthy period. In her affidavit, she said that, based on her experience with the blind and vision impaired community, she had only ever heard the expressions "seeing eye" and "seeing eye dog" used by or in relation to the LN School. In the course of her cross-examination, Ms Nilsen accepted that the specific term "seeing eye" was predominantly used by people who themselves have guide dogs or perhaps are closely associated with the LN School. She also said that people who do not work in the blindness "industry" would not know the difference between "seeing eye dogs" (products of the LN School) and "guide dogs" (trained by GD NSW or Royal GD).

Fourthly, many of the witnesses called on behalf of GDOFA acknowledged that when the expression "seeing eye dogs" had been used within the blind community (as variously understood by them) to describe GDOFA's dogs, it was often connected with a reference to "Lady Nell". Mr Blyth, for example, is the Manager of Government Relations for the Royal Victorian Institute for the Blind. He said that he really had heard "seeing eye dogs" used only in relation to dogs from the LN School or from the "Seeing Eye" organisation in New Jersey. However, he conceded that he did not often have conversations with people who spoke either of "guide dogs" or "seeing eye dogs". Usually he referred within the "industry" to "dog guides", unless intending to nominate a particular training organisation. When such a specific reference was made, he accepted that the words "Lady Nell" or "Royal Guide Dogs" (depending on which organisation was referred to) would be likely to be mentioned.

Mr Hoare, the President of the Blind Welfare Association, said that the context in which he had heard the expression "seeing eye dog" used was that of a particular blind person going to Victoria to get a new dog. He had

"probably asked the question which organisation they have gone to and [been] told that its the Lady Nell, we're going to get a seeing eye dog".

Mr Hoare agreed that the expression "Lady Nell dogs" was frequently used to describe such dogs, although there were only a few dogs trained at the LN School in South Australia.

Mr Jolly, the Executive Officer of the National Federation of Blind Citizens, acknowledged that he had heard the expression "Lady Nell dogs" used within the blind community. He accepted that the term "seeing eye" had quite commonly been used by the LN School in conjunction with a reference to the "Lady Nell" name itself. The only example he gave of "seeing eye dog" not being used in conjunction with "Lady Nell" was when blind people referred to their own guide dogs as "seeing eye dogs".

Fifthly, outside the well-informed members of the blind community (in the sense of blind people themselves and active members of organisations of and for blind people), the expressions "seeing eye" and "seeing eye dogs" are and have been used generically to describe dogs trained to guide blind or visually impaired people. I have already referred to usage over the years in newspapers, in books and film, on television and, recently, in regulations and a taxation determination. I have also referred to the usage in ordinary conversations, as recounted by a succession of witnesses called by the respondent. I do not think it is necessary to analyse the evidence of these witnesses in detail. It is sufficient to refer, by way of illustration, to the evidence of Ms Lovett.

Ms Lovett's evidence was particularly helpful because she described herself as "legally blind" (she has three per cent sight in her right eye), yet has had extremely extensive contact with sighted people and limited contact with other blind and visually impaired people. Ms Lovett, who has had three guide dogs, is an equestrian and a Paralympian. She has raised large sums of money for charities, the vast bulk of which are not associated with services to blind people. She undertakes public speaking for a living, and has spoken to many disparate groups, including business groups, sporting associations, schools and clubs.

Ms Lovett acknowledged that she referred to her own dog as a "guide dog", since the dog had been trained at the NMC. She also acknowledged that she would expect someone with a dog from the LN School to refer to it as a "seeing eye dog". But she said that she had heard the expressions "seeing eye" and "seeing eye dogs" used on thousands of occasions in a generic sense, at the meetings she had addressed, and in ordinary conversation. She gave these as typical questions asked of her:

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"How old are seeing eye dogs when they are trained?"

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"Does your seeing eye dog go with you in taxis, planes and other public transport?"

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"Did your seeing eye dog go with you to Atlanta?"

Ms Lovett said that the expression "guide dog" was used at least as often as "seeing eye dog", but in the same generic sense. The clear inference from her evidence and from other witnesses who gave similar evidence is that both expressions are used and understood by the non-blind community as generic terms, not distinctive of either GDOFA or the respondents. Indeed, several witnesses called by GDOFA explicitly acknowledged that this was the case.

I have not overlooked that Mrs Gration and some other witnesses called in GDOFA's case characterised the use of these expressions in a generic sense, both in the media and by the general community, as mistaken. But the mere fact that GDOFA may have wished to appropriate these expressions does not mean that the continued usage of these terms by the wider community became erroneous. There is a difference between an organisation wishing an expression to become distinctive of its activities and succeeding in implementing that desire.

Findings

I make the following findings, based on the evidence to which I have referred:

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GDOFA itself, although referring to its own dogs as "seeing eye dogs", has consistently used this expression in its literature in a generic manner. That is, it has used the expressions "seeing eye" and "seeing eye dog" to refer generally to dogs trained to guide blind and visually impaired people. It has therefore acknowledged that the expressions are not exclusively associated with GDOFA, nor with dogs trained by it.

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A group of well-informed people within the blind community understands (and has understood) the expressions "seeing eye" and "seeing eye dogs" to refer to GDOFA or to its dogs. By "blind community" I mean blind and seriously visually impaired people (about 24,000 nationally) and persons actively involved in organisations of and for blind people. Not all blind people have this understanding of the expressions, since the proportion of such people with guide dogs is very small and I infer that some blind people would have little knowledge of the activities of GDOFA and the respondents, insofar as they relate to guide dogs. However, most blind people are likely to have the understanding to which I have referred.

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GDOFA's use of the expressions "seeing eye" and "seeing eye dogs" has been closely associated, in its publications, with references to "Lady Nell" or the "the Lady Nell School". Consequently, a significant proportion of people within the blind community (as I have defined it) link the expressions to GDOFA and its dogs because the expressions are often used in conjunction with "Lady Nell" and "the Lady Nell School". I cannot quantify the proportion.

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Persons outside the blind community as I have defined that term (and some within it) understand the expressions "seeing eye" and "seeing eye dogs" as generic terms, not distinctive of either GDOFA or the respondents.

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With few exceptions, members of the blind community having the understanding to which I have referred appreciate that the wider community uses and understands the expressions "seeing eye" and "seeing eye dogs" in a generic sense.

In my view, having regard to these findings, GDOFA has not established that either of the expressions "seeing eye" or "seeing eye dogs" have become distinctive of it or the dogs trained by it. I qualify this conclusion by noting that a small group of well-informed people within the blind community understand these expressions to refer to GDOFA and dogs trained by it. However, as I have said, some of these people have acquired that understanding because the expressions have been used in conjunction with the terms "Lady Nell" and "Lady Nell School" and, with few exceptions they appreciate that the expressions "seeing eye" and "seeing eye dogs" are not understood this way in the general community. This group of people is and has been well aware of the activities of GDOFA (on the one hand) and GD NSW and Royal GD (on the other).

MISLEADING CONDUCT OR PASSING OFF?

The Entries in the Directory

GDOFA's principal complaint against GD NSW relate to the entries placed in the telephone directories from 1994 to 1997. Those entries used the expression "SEEING EYE DOG", in conjunction with GD NSW's name. In each case, the entry invited the person consulting the directory to refer to another entry under GD NSW's name or, in the case of the 1995 Yellow Pages entry, to an advertisement incorporating GD NSW's name. Neither the advertisement nor any entry under GD NSW's name contained any reference to "seeing eye dogs".

The entries in the telephone directories were clearly placed by GD NSW in order to attract support for its activities. As I have explained, GD NSW has systematically engaged in fund raising and merchandising on a substantial scale, in order to generate an income stream. In this connection, it has aimed to attract as much support as possible from the sighted community. The major purpose of inserting the entries was to attract the interest of members of the sighted community who might wish to support GD NSW as an organisation which (inter alia) trained and provided guide dogs to blind and visually impaired people. However, access to the entries in the directories was not confined to the sighted community. Obviously, blind persons could have had the entries read to them if they wished to contact an organisation involved with "seeing eye dogs". Thus, if a blind person wished to support an organisation involved in the training of "seeing eye dogs" or to inquire about obtaining such a dog, he or she might have consulted the telephone directories.

On the approach suggested by Deane and Fitzgerald JJ in Taco Bell, the section of the public by reference to which the question of whether conduct is or is likely to be misleading or deceptive falls to be determined, is the general community from which GD NSW seeks support. This includes members of the blind community (in the sense of blind people and persons actively involved with organisations of and for the blind). As Taco Bell suggests, the matter is to be considered by reference to all who come within the class.

The difficulty facing GDOFA, in relation both to a claim under the TP Act and in passing off, is that it has failed to establish that the expressions "seeing eye" and "seeing eye dogs" had become distinctive of it or its activities. This is so whether the position is considered in Australia generally, or by reference only to New South Wales. GD NSW has simply used a generic expression to draw attention to, and invite support for, its activities. That generic expression, as used by GD NSW, did not convey to those likely to read it a representation that GD NSW's dogs were trained or approved by GDOFA, nor that GD NSW's services were licensed, approved by or affiliated with GDOFA. On the findings I have made, members of the general (sighted) community would have understood the entries in the telephone directories as conveying the (correct) impression that GD NSW trained dogs to guide blind and visually impaired people.

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.

GDOFA did not lead evidence that any potential benefactor or purchaser of merchandise had been confused in consequence of the entries placed by GD NSW in the telephone directories. Of course, such evidence is not essential in order to make out a case of misleading or deceptive conduct, or of damage to reputation or goodwill, although such evidence will often be helpful to an applicant. Mr Ellicott, however, put to Mr Finucane an example of how confusion might have arisen. He posited the case of a potential benefactor who had noticed a guide dog in fact trained at the LN School, and resolved to assist the very organisation that had trained that particular dog. Mr Ellicott suggested that the potential benefactor might have understood the dog to be a "seeing eye dog" (in the sense that he or she understood that a particular organisation was responsible for training the dog), and might subsequently have consulted the telephone directory in order to ascertain the name of the training organisation.

Mr Finucane fairly acknowledged that this was a possibility, but rejected the suggestion that it was likely that anybody would be confused in this manner. I agree that, although confusion of the kind referred to by Mr Ellicott is possible, it does not rise to the level of a "real or not remote chance or possibility" to use the language of Global Sportsman. A sighted person observing a dog in fact trained at the LN School would see on the harness not merely the words "Seeing Eye Dog", but (as the evidence shows) "Lady Nell Seeing Eye Dog School. Do Not Touch". He or she would therefore associate the dog with the LN School. A person speaking directly with one of the relatively few blind persons in New South Wales with a dog trained at the LN School, if he or she made an inquiry concerning the dog, would very likely be informed or infer that the dog had been trained at the LN School. Someone relying on the relevant telephone directories would be likely to notice the entry immediately below that of GDOFA referring to "'Seeing Eye' Lady Nell Dog School", and conclude (correctly) that there is more than one organisation responsible for training "seeing eye" dogs. Doubtless, as Mr Ellicott suggested, not every benefactor would have a clear recollection, when consulting the telephone directories, of the events that prompted them to consider making a donation or bequest. Nonetheless, taking into account the possibility of imperfect recollection, I do not think that there was not a real chance of confusion in the case posited by Mr Ellicott.

Even if confusion were to be caused to some people in the manner suggested by Mr Ellicott to Mr Finucane, the confusion would not result from any misleading or deceptive conduct by GD NSW, nor by any misrepresentations made by it. Nor would it indicate that GD NSW had appropriated GDOFA's goodwill or damaged its reputation. Any confusion would be the consequence of GDOFA's decision to use a generic expression to describe itself and its dogs. As Stephen J observed in Hornsby Building Information Centre v Sydney Building Information Centre (at 229), some risk of confusion must be accepted if the alternative is to give one who appropriates to himself or herself descriptive words an unfair monopoly on those words.

I should add that I do not think the evidence relating to the Windang Bowls Club advances GDOFA's position. It was common ground that, on 13 July 1997, Ms Tolias, a clerk employed by the club, drew a cheque for $442.70 in favour of "Seeing Eye Dog Ass". The cheque represented moneys donated by club members and guests through a collection box in the form of a plastic model of a dog. The cheque was sent to GD NSW. Following a telephone conversation between Ms Tolias and Ms Thurecht, Mr Finucane's personal assistant, a replacement cheque was issued by the club, payable to "Guide Dog Association". Ms Tolias and Ms Thurecht gave slightly different versions in their respective affidavits of the conversation which led to the replacement cheque being issued. Ms Tolias was cross-examined, but Ms Thurecht, because of illness, was unavailable for cross-examination.

The evidence clearly establishes that GD NSW had provided the plastic model of a dog, which had been on the club premises for about ten years. During that period, apparently with one exception, the club forwarded a cheque to GD NSW corresponding to the amount collected. As the chief executive officer of the club said in a letter, the club's intention was that donations collected from the box, together with other donations from members, should go to the body that provided the model - that is, GD NSW. The model bore words to the effect of "Support Guides for the Blind".

In her affidavit, Ms Tolias attributed to Ms Thurecht words to the effect:

"We are no longer the Seeing Eye Dog Association any more. May we send your cheque made out to the Seeing Eye Dog Association back to you, and then would you draw another cheque in favour of the Guide Dog Association?"

In cross-examination, understandably, Ms Tolias was somewhat uncertain as to precisely what was said. Having regard to the history of the relationship between the club and GD NSW, I think it more likely that Ms Thurecht (as she said in her affidavit), merely informed Ms Tolias that the name of GD NSW was not "Seeing Eye Dog Association" and requested her to replace the cheque.

In the result, the club sent the cheque to the organisation which it intended to benefit. GD NSW did nothing to mislead the club or its members. The club made the cheque out incorrectly, in the first instance, because of an incorrect assumption about GD NSW's name, for which GD NSW was not responsible. There was nothing in the evidence to suggest that the club or its members intended to benefit GDOFA.

The Logo

GDOFA's case in respect of the "logo" rests on a photograph used by GD NSW and billboard advertising, undertaken in late 1996. The photograph, which appears on the left-hand side of the billboard, depicts three guide dogs, two white and one black. The two white dogs are shown in profile, sitting on their haunches next to each other. They look ahead (that is, to the viewer's right). The dog in the foreground partially obscures the second white dog. The black dog is also shown in profile and looking ahead, but in a resting position. It, too, is partly obscured by the white dog.

The heading on the billboard, in large lower case letters, is as follows:

"They're two-thirds of our name but only a fraction of our services."

The billboard contains a good deal of information about GD NSW. One theme of the text is that the training and supply of guide dogs constitute only a fraction of the services provided by the organisation to blind and visually impaired persons. This particular billboard was one of a number set up by or on behalf of GD NSW to promote its activities. The others incorporated different photographs of one or more guide dogs. No complaint is made about them.

It is said by GDOFA that the photograph of the three dogs, which I have described, was deceptively similar to a photograph used by GDOFA in some of its promotional activity. That photo also depicts three dogs, two of which are white and one black. They, too, are each in harness. However, the positioning of the three dogs is quite different than on GD NSW's billboard. The black dog, which is on its haunches, is between the two white dogs. The dogs are not shown in profile, but look directly at the camera, although one of the white dogs has its head slightly tilted. One of the white dogs is shown in a resting position.

Mr Finucane was asked why GD NSW had included the photograph of the three dogs in its billboard advertising. He responded that the photograph had been chosen because it had been considered appropriate to the specific public awareness of which the billboards formed part. The photograph illustrated the theme that guide dogs constituted two-thirds of GD NSW's name ("Guide Dogs Association"), but only a fraction of the services provided. I accept Mr Finucane's evidence that the photograph was adopted for this reason. I find that its selection had nothing to do with the photographs used by GDOFA to promote its activities.

I accept that, as Mr Ellicott submitted, the approach to deceptive similarity under the TP Act is that stated by Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407, at 415. Thus, the question is to be answered, not by a close analysis of (in this case) the photographs placed side by side, but taking account of the perceptions ordinary people would have, bringing with them perhaps an imperfect recollection of the photograph used by GDOFA in order to publicise its activities: 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 (FCA/FC), at 315-316, per Gummow J; Dial-An-Angel Pty Ltd v Sagitaur Services Systems Pty Ltd (1990) 96 ALR 181 (FCA/Wilcox J), at 193-194.

In my view, taking this approach, 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.

Mobility Services

This aspect of GDOFA's case rested on statements made by GD NSW in its billboard advertisements. The text of such an advertisement, which appeared on a billboard on display in November 1996, included the following:

"So how do we decide whether a client gets a cane, a canine or one of other aids, such as an electronic sensor? We don't decide. They do.

And as the only provider of the full range of mobility services in NSW and ACT, their options are considerable."

The billboard containing the photograph of three dogs, to which I have already referred, included a similar passage. After posing the question of whether GD NSW should "turn a blind eye" to visually impaired people for whom a guide dog is not appropriate, the text of the billboard (which also appeared in late 1996) said this:

"As we're the only provider of the full range of orientation and mobility services in NSW and the ACT, that's clearly out of the question."

An identical statement appeared on a different billboard on display in about March 1997.

GDOFA's case was that the bolded words in the text reproduced on the billboards were likely to mislead and deceive members of the public. The particulars of falsity alleged that the representation by GD NSW was false because

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GD NSW did not provide accommodation for all students and staff in NSW;

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GD NSW did not provide accommodation for students and staff in the ACT; and

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GD NSW was not the only provider of services in the ACT, since GDOFA also provided services in the ACT.

As I understood Mr Ellicott's submissions, he did not press the first and third of the particularised grounds of falsity. In any event, the evidence did not support those grounds. As far as the third ground is concerned, at the time the billboard advertisements appeared, GDOFA had no office in New South Wales. Further, it did not (and still does not) provide a full range of mobility services in New South Wales and the ACT, although visually impaired persons from New South Wales and the ACT were and are able to travel to Victoria to receive the services offered by GDOFA. In relation to the first ground, while GD NSW does not provide persons being trained with accommodation at its own premises, it has provided and paid for motel accommodation for those persons during their period of training.

The only ground pressed was that GD NSW did not provide all services in the ACT. However, Dr Black gave evidence that GD NSW did provide the full range of mobility services in both New South Wales and the ACT. In particular, he gave evidence that GD NSW has provided domiciliary training in the ACT for visually impaired people resident in the Territory. The training was provided by permanent staff employed in the ACT. His evidence was supported by documentation.

In my view, GDOFA has not established that the challenged statement in the text of the billboards was false in any material particular. Thus it has failed to establish that the statement was likely to deceive or mislead members of the public.

Business Name

I have held that the insertion of the entries in the Sydney White Pages and Sydney Yellow Pages by GD NSW constituted neither conduct in contravention of s 52 of the TP Act nor passing off. Mr Ellicott did not suggest that, in the event that I reached this conclusion, the registration of the business name "The Seeing Eye" by Royal GD was nonetheless capable of contravening s 52 or amounting to passing off. Having regard to the findings I have made concerning the lack of distinctiveness of the expression "seeing eye", I see no basis for concluding that registration of the business name by Royal GD was conduct likely to mislead or deceive members of the public or which constituted passing off. Since Royal GD has never used the business name and does not intend to do so, GDOFA's case against it under the TP Act or in passing off has less strength than the case against GD NSW.

ALLEGATIONS OF INTENTIONAL WRONGDOING

It will be recalled that both in the pleadings and in Mr Ellicott's opening, GDOFA alleged that GD NSW had intended to mislead members of the public into believing that GD NSW's services were those of GDOFA. The findings I have made thus far dispose of this issue, since no member of the public was misled in the relevant sense. However, even if GDOFA had succeeded in establishing that the expressions "seeing eye" and "seeing eye dogs" had become distinctive of it and its dogs, I would not have accepted the submission that the respondents deliberately set out to mislead the public or, for that matter, to take advantage of any reputation GDOFA may have had in these expressions. This follows from my assessment of the principal witnesses called by the respondents.

Mr Finucane gave evidence that he had been involved in the decision to make the listings appearing in the Sydney White Pages for 1994 and subsequent years. Mr Ellicott put to Mr Finucane that he had caused the entry to be made because he wished to take advantage of the confusion which he believed existed in the community about the meaning of the expression "seeing eye dog". Mr Finucane rejected that proposition, having previously explained that the entry had been made in consequence of an increase in referrals to GD NSW at that time. I accept Mr Finucane's evidence on this issue. I should add that he was not asked about his motives for approving the insertion of the "seeing eye" entry in the Yellow Pages for 1995.

Mr Finucane was also asked about the decision by the Royal GD in 1992 to register the business name "The Seeing Eye" in a number of States and Territories. While Mr Finucane was not an officer of Royal GD, he had agreed with the action, which had been approved at a meeting of chief executives of State and Territory Associations. Mr Finucane denied that the registration of the business name had been effected in order to prevent GDOFA expanding its activities into other States or Territories. He gave as the reason for registration of the business name concern that an American body providing services to blind persons (including the supply of guide dogs), known as "The Seeing Eye", might set up an organisation in Australia. Accordingly, the registration was a "protective measure" directed at the American body. Once again, I accept Mr Finucane's evidence.

Finally, Mr Ellicott asked Mr Finucane why a photograph of three dogs had been included on billboard advertising for GD NSW undertaken in late 1996. Although it was not suggested directly to Mr Finucane that the photograph was chosen in order to mislead members of the public, the questioning might be thought to have had that proposition in mind. Mr Finucane said that the photograph had been chosen because it was appropriate to the specific public awareness program of which the billboards formed part. That program had the theme that guide dogs constituted "two thirds of our name [Guide Dog Association] but only a fraction of our services". A photograph showing two white dogs and one black dog was considered illustrative of the theme. I accept Mr Finucane's evidence on this issue.

Mr Ritter was not connected with the Royal GD at the time the business name "The Seeing Eye" had been registered and had no knowledge of why registration had been arranged. However, he had subsequently become the chief executive of Royal GD. He was asked whether part of the reason for the Royal GD maintaining the registration was to prevent GDOFA from expanding its activities under the name "seeing eye". Mr Ritter denied that this had ever been his intention. I accept his denial.

In view of these findings, I consider that whatever the position concerning distinctiveness, there is no factual basis for concluding that either of the respondents intentionally set out to mislead members of the public into believing that services provided by them were those of GDOFA or were associated with GDOFA.

ADDITIONAL COMMENTS

I noted at the outset that these proceedings involve three bodies enjoying charitable status under Commonwealth and State law. The trial occupied seven hearing days. The case clearly involved extensive preparation by the parties, including discovery of documents dating back to the 1950s. Thus, unless special fee arrangements have been made (as to which I have no information) the parties have incurred very heavy legal costs by reason of the litigation.

There is a substantial literature dealing with the economic characteristics of non-profit organisations: see R A Posner, Overcoming Law (Harv UP, 1995), at 112-117. These are usually defined as organisations barred from distributing net earnings to individuals exercising control such as office-bearers, employees, board members and trustees: H B Hansmann, "The Role of Nonprofit Enterprise" (1980) 89 Yale LJ 853, at 858. One theme of the literature is that non-profit organisations are not necessarily subject to the same incentives to achieve efficiency as profit-making firms: B Weisbrod, The Nonprofit Economy (Harv UP, 1988), at 14. Consequently, controllers of non-profit organisations (which can and sometimes do generate substantial, albeit non-distributable, surpluses) may have an incentive to convert what would otherwise be profits into different kinds of advantages for the controllers. These advantages may or may not take the form of direct pecuniary rewards: E G West, "Nonprofit Organizations: Revised Theory and New Evidence" [1989] Public Choice, 165, at 167-168.

As I have discussed, the law in its present form provides for a non-profit organisation, enjoying charitable status, to seek relief, including injunctive remedies, for damage to its reputation occasioned by the activities of another non-profit organisation. It may be that the law is somewhat too generous in this regard and requires reconsideration. Be that as it may, so long as actions of this kind are permitted, there is much to be said for regulators scrutinising carefully the actions of charitable organisations in instituting and conducting litigation of this kind, particularly where it is directed against other charitable bodies. One obvious reason for scrutiny is to ensure that donors and potential donors are fully informed as to the extent to which the organisation's funds have been expended on litigation and are also informed of the outcome of that litigation.

I do not, by this comment, mean to imply that any of the parties to the present proceedings will not make full public disclosure of these matters. Arguably, the occasion for doing so has not yet arrived. Nor do I suggest that any of the parties has used its funds for purposes other than those fully disclosed to donors or potential donors. These are not issues I have been required to decide. The point I make is a general one, prompted by the unusual and unfortunate nature of the present litigation and the policy questions it presents.

CONCLUSION

GDOFA has failed to establish any contravention of the TP Act by the respondents. Nor has it established its case in passing off. There is therefore no need to consider whether, had GDOFA made out its claims under the TP Act or in passing off, it should be denied relief because of a lack of "clean hands" or on discretionary grounds.

The application must be dismissed. My present view is that GDOFA should pay the respondents' costs and I shall make an order to that effect. I shall stay the costs order for seven days to provide the parties with an opportunity, should they wish to do so, to file written submissions proposing different orders as to costs. If such submissions are filed I shall extend the stay order to enable the submissions to be considered.