BLACK and COMMISSIONER FOR CONSUMER PROTECTION
[2017] WASAT 149
•24 NOVEMBER 2017
BLACK and COMMISSIONER FOR CONSUMER PROTECTION [2017] WASAT 149
| STATE ADMINISTRATIVE TRIBUNAL | Citation No: | [2017] WASAT 149 | |
| ASSOCIATIONS INCORPORATION ACT 2015 (WA) | |||
| Case No: | CC:723/2017 | 30 OCTOBER 2017 | |
| Coram: | MR D MACLEAN (MEMBER) | 24/11/17 | |
| 24 | Judgment Part: | 1 of 1 | |
| Result: | Application for review successful | ||
| B | |||
| PDF Version |
| Parties: | ANNE BLACK COMMISSIONER FOR CONSUMER PROTECTION |
Catchwords: | Associations Resembles in a manner likely to mislead Descriptive name |
Legislation: | Associations and Incorporation Act 2015 (WA), s 12, s 12(c), s 12(b), s 12(1)(c), s 169, s 170 Business Names Act 1996 (SA) Companies Act 1929 (UK), s 17 State Administrative Tribunal Act 2004 (WA), s 27, s 29(3), 2 60(2), s 77 The Associations Incorporation Act 1987 (WA), s 8, s 8(1)(c), s 8(1)(b) to (d) The Business Names Act 1962 (WA) Trade Practices Act 1974 (Cth), s 52, s 52(1) |
Case References: | Cardell Insurance Agencies Pty Ltd v Corporate Affairs Commission [2003] SADC 137 Drake v Commissioner for Corporate Affairs (unreported, WASC, Library No 990193, 19 April 1999) Giftpan Enterprises Pty Ltd v Corporate Affairs Commission & Ors [2010] SADC 78 McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394 Office Cleaning Services, Ltd v Westminster Office Cleaning Association [1944] 2 All ER 269 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 148 CLR 191 Subiaco's Past Players and Officials Association Incorporated and Commissioner for Consumer Protection [2009] WASAT 2 Woollard and Australian Electoral Commission [2001] AATA 166; (2001) 32 AAR 492 |
Orders | For the reasons given above the Tribunal makes the following orders:,1. The application for review is successful.,2. The letter of 11 April 2017 is set aside,3. The decision of 11 April 2017 is set aside and substitute the decision that the applicant be permitted to incorporate the association by the name Husky Rescue WA Inc with the Commissioner pursuant to s 12 of the AI Act.,4. The respondent is directed to incorporate the association. |
Summary | The applicant applied to incorporate Husky Rescue WA Inc. The respondent considered that the name resembled the name of an existing association, namely Husky and Malamute Rescue Inc in a manner likely to mislead the public and rejected the application to incorporate the association. The applicant sought a review of the respondent's decision. On review the Tribunal found that there was a significant difference between the two names, that the name described the object that the applicant hoped to meet and that the name was not misleading and further that the name was not in any event likely to mislead. The Tribunal set aside the decision and directed the respondent to incorporate the association. |
JURISDICTION : STATE ADMINISTRATIVE TRIBUNAL ACT : ASSOCIATIONS INCORPORATION ACT 2015 (WA) CITATION : BLACK and COMMISSIONER FOR CONSUMER PROTECTION [2017] WASAT 149 MEMBER : MR D MACLEAN (MEMBER) HEARD : 30 OCTOBER 2017 DELIVERED : 24 NOVEMBER 2017 FILE NO/S : CC 723 of 2017 BETWEEN : ANNE BLACK
- Applicant
AND
COMMISSIONER FOR CONSUMER PROTECTION
Respondent
Catchwords:
Associations Resembles in a manner likely to mislead Descriptive name
Legislation:
Associations and Incorporation Act 2015 (WA), s 12, s 12(c), s 12(b), s 12(1)(c), s 169, s 170
Business Names Act 1996 (SA)
Companies Act 1929 (UK), s 17
State Administrative Tribunal Act 2004 (WA), s 27, s 29(3), 2 60(2), s 77
The Associations Incorporation Act 1987 (WA), s 8, s 8(1)(c), s 8(1)(b) to (d)
The Business Names Act 1962 (WA)
Trade Practices Act 1974 (Cth), s 52, s 52(1)
Result:
Application for review successful
Summary of Tribunal's decision:
The applicant applied to incorporate Husky Rescue WA Inc. The respondent considered that the name resembled the name of an existing association, namely Husky and Malamute Rescue Inc in a manner likely to mislead the public and rejected the application to incorporate the association. The applicant sought a review of the respondent's decision. On review the Tribunal found that there was a significant difference between the two names, that the name described the object that the applicant hoped to meet and that the name was not misleading and further that the name was not in any event likely to mislead. The Tribunal set aside the decision and directed the respondent to incorporate the association.
Category: B
Representation:
Counsel:
Applicant : In Person
Respondent : Mr S King
Solicitors:
Applicant : N/A
Respondent : Department of Mines Industry Regulation and Safety
Case(s) referred to in decision(s):
Cardell Insurance Agencies Pty Ltd v Corporate Affairs Commission [2003] SADC 137
Drake v Commissioner for Corporate Affairs (unreported, WASC, Library No 990193, 19 April 1999)
Giftpan Enterprises Pty Ltd v Corporate Affairs Commission & Ors [2010] SADC 78
McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd (1980) 33 ALR 394
Office Cleaning Services, Ltd v Westminster Office Cleaning Association [1944] 2 All ER 269
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 148 CLR 191
Subiaco's Past Players and Officials Association Incorporated and Commissioner for Consumer Protection [2009] WASAT 2
Woollard and Australian Electoral Commission [2001] AATA 166; (2001) 32 AAR 492
Introduction
1 The Commissioner for Consumer Protection (the respondent or Commissioner), received an application for incorporation for Husky Rescue WA Inc on 8 January 2017.
2 By letter dated 23 January 2017, the respondent decided that the application did not conform to the requirements of the Associations Incorporation Act2015 (WA) (The AI Act) for the following reasons.
3 Under s 12(c) of the AI Act, the Commissioner must not incorporate an association by that name if that name is considered:
identical to the name by which an association in existence is, or is taken to be, incorporated under this Act or which resembles any such name in a manner likely to mislead the public[.]
4 The proposed name is considered to be identical to or closely resembles the name of the following incorporated association:
5 Husky and Malamute Rescue Inc A1019589Z
6 The applicant sought a review of the decision by email dated 14 February 2017. The request for review contained submissions and a letter of support to the application from Arctic Breed Rescue Inc.
7 The respondent by letter dated 11 April 2017 informed the applicant that its final decision was that the application for incorporation of the proposed association be rejected.
8 Under s 169 of the AI Act, the applicant has a right to seek a review of the respondent's decision by the Tribunal and on 28 April 2017, the applicant made an application under s 170 of the AI Act for a review of the decision.
9 This application comes under the Tribunal's review jurisdiction.
10 Section 27 of the State Administrative Tribunal Act2004 (WA) (SAT Act), sets out the nature of review proceedings. They are:
(1) The review of a reviewable decision is to be by way of a hearing de novo, and it is not confined to matters that were before the decision maker but may involve the consideration of new material whether or not it existed at the time the decision was made.
(2) The purpose of the review is to produce the correct and preferable decision at the time of the decision upon the review.
(3) The reasons for decision provided by the decision maker, or any grounds for review set out in the application, do not limit the Tribunal in conducting a proceeding for the review of a decision.
11 Under s 29(3) of the SAT Act, when dealing with a matter in the exercise of its review jurisdiction:
The Tribunal may
(a) affirm the decision that is being reviewed; or
(b) vary the decision that is being reviewed; or
(c) set aside the decision that is being reviewed and
(i) substitute its own decision; or
(ii) send the matter back to the decision maker for reconsideration in accordance with any directions or recommendations that the Tribunal considers appropriate,
and, in any case, may make any order the Tribunal considers appropriate.
12 This proceeding is determined entirely on the documents pursuant to s 60(2) of the SAT Act.
13 The documents consisted of:
1) the respondent's statement of issues, facts and contentions;
2) the respondent's book of documents;
3) the applicant's book of documents; and
4) the applicant's reply to the respondents written submissions.
14 The Tribunal has considered the documents in the course of reviewing the decision. The obligation of the Tribunal in these reasons for decision is to include the Tribunal's findings on material questions of fact referring to the evidence or other material on which those findings are based: s 77 of the SAT Act.
Facts not in issue
1) An existing association named Husky and Malamute Rescue Inc was incorporated under the Associations Incorporations Act 1987 (WA) (the Repealed Act) on 9 October 2015 and is deemed to be incorporated under the AI Act.
2) The Repealed Act governed the incorporation of associations in Western Australia prior to 1 July 2016.
3) On 8 January 2017 the respondent received an application for incorporation from Husky Rescue WA.
4) The object or purpose of the Husky Rescue WA Inc is to relieve the suffering of animals by rescuing and rehoming Siberian Huskies, Alaskan Malamutes and other Arctic Breed dogs in Western Australia, thus preventing their unnecessary euthanasia.
5) The AI Act applied to provide the criteria the respondent was required to consider before incorporating an association.
6) On 23 January 2017 the respondent wrote to the applicant advising of the preliminary decision that the respondent could not incorporate Husky Rescue WA Inc.
7) On 14 February 2017 the applicant wrote to the respondent with further submissions in relation to the preliminary decision.
8) On 11 April 2017 the respondent wrote to the applicant affirming the preliminary decision.
9) On 28 April 2017 the applicant made an application to the Tribunal for a review of the decision.
10) A Husky and a Malamute are different breeds of Arctic dog.
11) The grant of monopoly rights to a name is not an object of the AI Act.
15 In his reasons for decision, the respondent also noted as part of the background, his understanding that members of Husky Rescue WA Inc and Husky and Malamute Rescue Inc worked together under the name 'Husky Rescue WA' and that following a schism, Husky and Malamute Rescue Inc applied for registration. The Tribunal does not consider anything turns on this.
16 Section 12(b) of the AI Act precludes the respondent from incorporating an association by a name that is likely to mislead the public as to the object or purpose of the association. There is no suggestion that the incorporation of Husky Rescue WA Inc is likely to mislead the public as to the object or purpose of the association.
17 The issue in this application was whether a name that the applicant wished to incorporate the entity by was one which resembled a name of an association in existence, incorporated under the AI Act which resembled that name in a manner likely to mislead the public.
18 In considering whether these elements are established, it is necessary to consider the meaning and application to the facts of this review of the words:
1) resemble;
2) likely;
3) mislead; and
4) the public.
The respondent's case
19 In his reasons for decision dated 30 June 2017, the respondent referred to Subiaco's Past Players and Officials Association Incorporated and Commissioner for Consumer Protection [2009] WASAT 2 (Subiaco) and the cases referred to in that decision along with the decision of the High Court of Australia in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 148 CLR 191 (Parkdale) and a decision of the South Australian District Court in Giftpan Enterprises Pty Ltd v Corporate Affairs Commission & Ors [2010] SADC 78 (Giftpan) in support of propositions that:
• Mislead involves leading a person into error: to lead astray in action of conduct, to lead into error, or to cause to err.
• Misleading, contrasted with deceptive carries no flavour of craft. Intent is not an element and misleading is to be contrasted with causing confusion which is to create uncertainty, misunderstanding or puzzlement.
• Confusion is not sufficient. The requirement under s 12(c) of the AI Act is that the public not be mislead.
• The authorities regarding registration of business names and political parties concern a different test to that in s 12(c) of the AI Act. The test in the political parties' case and business names cases, is whether the resemblance will cause 'confusion or mistake'.
• The distinction between the public being 'confused' as opposed to 'misled' is a fine one.
• The test of whether conduct is misleading is objective; it does not require anyone to actually be misled. The respondent cited Parkdale in support of this proposition. The respondent further submitted that 'a statement that is technically true can still be misleading. It is a question of the inherent potential of words or conduct to be misleading'.
• The distinction between conduct that is confusing and misleading is difficult to articulate. Confusion may set a lesser standard.
• The difference between the tests for confusion and misleading is subtle. It is useful to consider the authorities dealing with the test of confusion.
• The threshold for 'likely' is 'not very high'. 'Likely' in the context of this decision means 'that there is a risk that is not remote or fanciful that the resemblance between the two names may mislead the public'.
20 The respondent also referred to the AI Act's purpose, in his reasons for decision as:
• The incorporation of associations and not the establishment of property rights.
• The respondent's purpose in the decision is to ensure the statutory prerequisites for incorporation are met.
21 As to the identification of the sector of the public that may be misled, the respondent considered:
• that 'a fairly broad class of people may be affected' and that this may include persons familiar with the relevant breeds of dog, and those who are not'; and
• no particular knowledge of arctic dog breeds or the competing associations is presumed.
22 The respondent decided that the name Husky Rescue WA Inc breaches the prohibition in s 12(c) of the AI Act for the following reasons:
• The difference between the two names is three words 'and', 'Malamute' and 'WA'. Only 'Malamute' is significant.
• A Malamute is taller and heavier than a Husky but not dissimilar in appearance.
• 'Malamute' is not a significantly distinct word and an ordinary member of the public is unlikely to be aware of the difference or able to distinguish between it and 'Husky'.
• The similarity in the names between Husky Rescue WA Inc and Husky and Malamute Rescue Inc may cause a member of the public to think that Husky Rescue WA Inc is simply a shortened version of Husky and Malamute Rescue Inc.
• The names start with the same words, which the respondent says is a factor that was considered relevant in Giftpan.
• The objects and purposes and areas of operations of the incorporations were likely to mislead the public.
• The respondent said that there was evidence that the public had been misled and referred to a letter from Husky and Malamute Rescue Inc dated 9 June 2017. The letter from Husky and Malamute Rescue Inc also recorded their objection to the incorporation of Husky Rescue WA Inc and made allegations as to the quality and intent of Husky Rescue WA Inc's service.
23 The decision in Subiaco considered s 8(1)(b) to (d) of the Repealed Act. Section 8(1)(c) of the Repealed Act was in materially similar terms to s 12(1)(c) of the AI Act.
24 Subiaco concerned an objection made to the Commissioner by an incorporated club to the incorporation of another club on the basis of the similarity of the two clubs names and their objectives. It was also alleged that the second club was being set up for the purpose of confusing the public. The clubs were rival successor clubs which grew out of a split in an original club.
25 In Subiaco at [19] the Tribunal considered the Repealed Act's long title to assist it in determining the proper approach to s 8 of the Repealed Act.
26 The Tribunal found that there was nothing in the Repealed Act that suggests that the grant of monopoly rights to a name is an object of the Repealed Act; rather, incorporation of relevant bodies is the goal. In short, provided the statutory tests are met, competing bodies of and in civil society can have overlapping membership and pursue similar goals. It would not be up to the Commissioner (or, on review, this Tribunal) to make, in effect, judgments about the respective worth of such bodies, provided that the public, generally speaking, is not relevantly misled.
27 It is not urged in this application that the grant of monopoly rights is an object of the AI Act and the Tribunal finds that it is not.
28 In Subiaco, the Tribunal considered authorities in other jurisdictions, which dealt with other statutory regimes as to the naming of an entity. The Tribunal considered Woollard and Australian Electoral Commission [2001] AATA 166; (2001) 32 AAR 492 (Woollard), as well as Drake v Commissioner for Corporate Affairs (unreported, WASC, Library No 990193, 19 April 1999) (Drake) and Cardell Insurance Agencies Pty Ltd v Corporate Affairs Commission [2003] SADC 137 (Cardell).
29 In Subiaco the Tribunal referred extensively to Woollard, a decision of the Administrative Appeal Tribunal (AAT), in which that Tribunal considered a Commonwealth electoral case dealing with the registration of political parties. At [28] the Tribunal stated:
[T]he relevant electoral law provided that parties with certain names were not to be registered. This included the case where the name,
so nearly resembles the name, or an abbreviation or acronym of the name, of another political party ... that it is likely to be confused with or mistaken for that name ...
(emphasis added)
31 Section 12(c) of the AI Act includes the words 'resemble' and 'likely' but does not include 'confusion' or 'mistake'.
32 As cited in Subiaco at [30], the AAT in Woollard, said, of 'resemble':
The first subject of consideration … is the question of resemblance. For one thing to 'resemble' another does not require identity of appearance. The relevant meaning from the Oxford English Dictionary is:
1. to be like, to have likeness or similarity to, to have some feature or property in common with (another person or thing).
33 In Subiaco at [32]; after referring to authority considered in Woollard dealing with the word 'likely' the Tribunal found:
So too, here, I think, where 'likely' would not mean 'more likely than not' but would require a 'practical judgment' to be made as regards the risk, not being a 'remote or fanciful' risk, as to either confusion or being misled in respect of the two names, in the context of the Act's purposes.
34 In Drake, the Full Court of the Supreme Court, heard an application for judicial review calling on the Commissioner to cancel a business name registered under the Business Names Act 1962 (WA) (BN Act). Under s 9 of the BN Act the Minister had given a direction that prohibited the Commissioner from accepting for registration, 'names that are likely to be confused or mistaken for a business name registered in Western Australia'. The issue in that case was whether the names were so similar that they were likely to cause confusion in the public mind. Owen J (with whom Kennedy J and White J agreed) considered that the test was an objective test and not one to be determined by reference to evidence of actual confusion or mistake but by reference only to the likelihood of confusion or mistake. Evidence of actual confusion was a matter to be taken into account but was not determinative.
35 Owen J found that the names, 'Drake's Engineering Inspection Services' and 'Drake Engineering', were quite different. Owen J also found that the business carried on by the applicant was quite different. Owen J was not at all sure that a member of the public seeking a personal placement agency but who contacts a specialist industrial concern by mistake could be said to be confused in the relevant sense. Owen J saw that it might be administratively annoying but not sufficient to establish actual confusion.
36 In Cardell, Robertson DCJ heard an administrative appeal from a decision by the Corporate Affairs Commission, refusing to register a business name under the Business Names Act 1996 (SA) (BN Act (SA)). The issue in that case was whether the name of the applicant for registration was likely to be confused with or mistaken for a previously registered business name. The names of the applicant and the registered business name were 'Australian Seniors Insurance Agency' and 'Australian Pensioners Insurance Agency Pty Ltd'.
37 Robertson DCJ considered that the statements of principle in Drake assisted the resolution of the appeal and considered that relevant to the appeal was that [7]:
one of the purposes of the Act is the protection of the public from being misled by names that are used in business.
38 Robertson found that:
three out of the four words of each of the names were exactly the same with the only difference being the word 'Pensioners' and the word 'Seniors'.
39 At [22], His Honour found that:
… whilst the names are similar the central word in each of them, namely, 'Pensioner' and 'Senior' have different meanings. Added to this, is the evidence of absence of confusion or mistake between the two names over a period of approximately five years in the context that both [organisations] have substantial business operations in the Australian market place. Taking all these factors into account, and applying the test objectively the conclusion is reached that it is not likely there will be confusion or mistake …
40 Robertson DCJ ordered the Commission to register the name.
41 The respondent referred to the decision of Giftpan. This case, decided after Subiaco, concerned an appeal by the owner of a business name 'Villa Homewares & Gifts' against the registration of a business name 'Palmvilla Home & Gifts'. The relevant legislation in the appeal was the BN Act (SA). The BN Act (SA) provided that the Commissioner:
(a) must not … register a business name that is …, likely to be confused with or mistaken for
(i) a registered business name;
… possible for me to objectively compare for myself the two names and determine on an objective basis whether there is a likelihood of mistake at [40] noted that
… the names start with different letters and therefore are likely to be at different locations in a … directory based on an alphabetical order. Essentially the point is that 'Villa' is a different word to 'Palmavilla'. The words do not sound similar as one has an entirely additional syllable to it' at [46]
… decisions in other cases can only be a very general guide at [55] …
43 The respondent referred to Subiaco and the finding in that decision that mislead involves leading a person into error: to lead astray in action or conduct, to lead into error, or to cause to err.
44 In Subiaco the Tribunal considered an application by Subiaco's Past Players and Officials Association Incorporated to review a decision made by the Commissioner to incorporate a rival organisation named the SFC Lions Past Players and Supporters Association. The Tribunal dismissed the application for review. The Tribunal considered that the two clubs did resemble each other in name: at [41], but on the issue of whether the name SFC Lions Past Players and Supporters Association resembled Subiaco's Past Players and OfficialsAssociation Incorporated in a manner likely to mislead the public considered that the question must be answered with the Act's underlying purpose in mind.
… This is to facilitate the incorporation of associations and thereafter to regulate their affairs: at [42] of Subiaco.
45 The Tribunal demonstrated by that decision that it considered that the underlying purpose of the act as a whole was of greater importance then avoiding any confusion as a regulatory value in itself: at [44] of Subiaco.
46 The Tribunal considered that an analysis which paid attention to the underlying purposes of the relevant statute as a whole rather than perhaps overemphasising questions of mere confusion: at [45] of Subiaco.
47 The respondent referred to a decision of the High Court in Parkdale and specifically to Gibbs CJ at [8] in support of its submission as to how the word 'misleading' ought be understood.
48 The respondent contended that contrasted with deceptive, misleading, consistent with analysis in Parkdale, carries no flavour of craft. This analysis is relevant in understanding the word in s 12(c) of the AI Act. Misleading was to be contrasted with causing confusion which according to the decision in Subiaco means uncertainty, misunderstanding or puzzlement.
49 The respondent submitted that the authorities concerning registration of business names and political parties were distinguishable insofar as the test in those matters was whether the name so nearly resembled the name 'that is likely to be confused with or mistaken for that name'. The respondent contended that there is a fine distinction between confusion and misled.
50 The respondent referred to Parkdale in support of its submission that the test of whether conduct is misleading is objective and does not require anyone to actually be misled.
51 The respondent contended that 'confusing' may set a lesser standard then 'misleading'.
52 Parkdale concerned s 52 of the Trade Practices Act 1974 (Cth) (TPA). Parkdale, a furniture manufacturer, had been restrained by injunction from engaging in trade or commerce in conduct that was misleading or deceptive. The injunction was granted in favour of a competitor furniture company. The competitor alleged Parkdale had engaged in misleading or deceptive conduct in by making chairs almost identical in appearance to chairs it made. The competitor complained that Parkdale's conduct in manufacturing the chairs was misleading and deceptive and was likely to mislead and deceive potential customers who saw the chairs and believed they were made by the competitor.
53 The High Court, by a majority of separate judgments, concluded that Parkdale's conduct did not breach s 52 of the TPA. The conduct was not misleading.
54 Chief Justice Gibbs considered that:
[O]ne meaning which the words mislead and deceive share in common is to lead into error at [8] …
55 The Chief Justice referred to the decision of the Federal Court in McWilliam's Wines Pty Ltd v McDonald'sSystem of Australia Pty Ltd(1980) 33 ALR 394 (McWilliam's) where it was, according to the Chief Justice at 198:
… rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source … .
56 The Chief Justice agreed at 198:
[T]hat the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive. …
57 The Chief Justice considered that at 199:
Section 52 does not expressly state what persons or class of persons should be considered as the possible victims for the purpose of deciding whether conduct is misleading or deceptive or likely to mislead or deceive. It seems clear enough that consideration must be given to the class of consumers likely to be affected by the conduct. Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by regarded as contemplating the effect of the conduct on reasonable members of the class. The heavy burdens which the section creates cannot have been intended to be imposed for the benefit of persons who fail to take reasonable care of their own interests. …
58 Mason J considered McWilliam's demonstrated the importance of examining why the alleged misconception arose. Justice Mason referred with approval to the decision of Smithers J, with whom Northrop J generally agreed in McWilliam's, that at 203:
… conduct could not be relevantly misleading or deceptive if 'it tells the truth and issuch that if it is observed by persons who have no false ideas concerning extraneous matters nobody will be misled.
59 Mason J considered that at 205:
… the operation of s. 52 is not restricted by the common law principles relating to passing-off … [T]he section provides the public with wider protection from deception than the common law …
60 Further, Mason J considered at 209:
Conduct does not breach s. 52(1) merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source
61 At [28] His Honour considered that:
conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s 52
62 At [30] (from Parkdale case)
63 Justice Brennan found at [17]:
Conduct cannot be held to fall within s. 52 unless a consumer, not labouring under any mistake or imperfection of understanding of law, would be or would be likely to be misled or deceived by that conduct. Section 52 operates in a milieu of the external legal order, so that the character of conduct which falls for consideration under s. 52 is to be determined by reference to the external legal order as it exists when the conduct is engaged in. Therefore, a manufacturer who exercises his freedom to manufacture goods according to a design which is not protected by valid registration does not engage in conduct which is misleading or deceptive or which is likely to mislead or deceive. If consumers or potential consumers believe that all goods of a particular design are manufactured by him who first establishes a market reputation as a manufacturer of those goods, that belief is or may be erroneous. The error may be attributed to a preconceived belief that the manufacturer who first establishes a market reputation has a monopoly in the manufacture and sale of goods of that kind but, unless the manufacturer has acquired a statutory monopoly, that belief is also erroneous and the error flows from a misconception of law. A later manufacturer who does no more than exercise his freedom to manufacture and sell goods made in accordance with a design in the public domain does not mislead or deceive; and if a consumer has an erroneous preconceived belief that the first manufacturer has a monopoly, a false assumption by the consumer as to the source of the later manufacturer's goods is self-induced. That was the approach taken by the Full Court of the Federal Court with respect to trade names in McWilliam's Wines Pty. Ltd. v. McDonalds System of Australia Pty. Ltd. (72), and I respectfully agree with it. At 225
64 The decision in McWilliams, from which Gibbs CJ, Mason J and Brennan J quoted from and referred to with approval, also considered the issue of whether conduct creating confusion was conduct which is misleading or deceptive.
65 McWilliams sold wine for consumption. It used the expression 'BIG MAC' to describe one of its products. McDonalds was a food retailer and used that expression to describe its hamburgers.
66 McDonalds claimed that the use of the words 'BIG MAC' by McWilliams constituted, in trade or commerce, engaging in conduct that was misleading or deceptive or likely to mislead or deceive within s 52(1) of TPA.
67 The Federal Court determined that in undertaking the analysis of whether a state of affairs that causes confusion is for the purposes of s 52(1) of TPA a different analysis to that undertaken in considering the registration of a trade mark. In the case of a registration of a trademark Smithers J at 398 considered:
a person upon whom an onus lies to establish that use of his mark is not likely to deceive or be otherwise deemed disentitled to protection in a court of justice can hardly succeed unless he establishes that there is no likelihood of confusion. The situation which arises under section 52(1) is different. There, one is concerned with establishing that a person engaged in conduct having certain specified qualities, namely that it is misleading or deceptive or likely to mislead or deceive. In such a situation there is no scope for including in the prescribed conduct any conduct which does not fall within the words of the Act. …
68 McWilliams concerned an application in which the expression 'Big Mac' did not refer to or identify the business entity known as McDonalds. Smithers J considered at 400 that:
If a person did conclude that the advertisement was making a statement about the 'BIG MAC' hamburger it would be natural for [her] to try to make sense of the advertisement. … by using the expression "BIG MAC" … an ordinary person knowing of McDonald's hamburger would understand the advertisement to be referring to or saying something about McDonald's hamburger … it seems reasonable that [she] also should conclude that there is some relevant joint venture. In that case [she] would be misled. Whether [she] would be misled by the advertisement or by some other factor may be a question. But [she] would certainly acquire an erroneous idea of the situation of the parties … But the mere fact that the conduct was a matter constituting one of the factors by reference to which persons formed an erroneous conclusion is not conclusive that the conduct was deceptive at:
69 Smithers J considered whether conduct otherwise neither misleading nor deceptive acquires deceptive quality because persons under the influence of erroneous ideas draw erroneous inferences from that conduct. According to Smithers J at 404:
It is difficult to think that conduct is truly misleading or deceptive if it tells the truth and is such that if it is observed by persons who have no false ideas concerning extraneous matters nobody will be misled[.]
70 Smithers J continued at 404:
A member of the public can hardly complain of being misled by the conduct of another if because of errors made by [herself] erroneously interpreted the nature of that conduct. And one would not contemplate that conduct, only misleading to those who misinterpreted because they apply erroneous assumptions in the exercise of interpretation, would be proscribed by the legislature. Such conduct would not be, one would think, truly misleading or deceptive.
71 Smithers J considered that a certain amount of misunderstanding is tolerable in cases where like descriptive names are used for separate businesses and referred to a decision of Lord Simmonds of the Court of Appeal in Office Cleaning Services, Ltd v Westminster Office Cleaning Association [1944] 2 All ER 269 (Office Cleaning Services).
72 In Office Cleaning Services at 270 Lord Simmonds considered a case of passing off. Lord Simmonds considered that the principles under the general law were extremely analogous to those to be considered under the Companies Act 1929 (UK) s 17, namely that registration of a name by a company is prohibited where the name is identical with that by which a company in existence is already registered or so nearly resembles that name as to be calculated to deceive.
73 A clear difference in that test and mislead and the test in s 12(c) is intent is not an element. However, what is relevant about Office Cleaning Services, and impressive for Smithers J in McWilliam's and relevant for this application were the observations by Lord Simmonds at 270 271 (citations omitted) that:
a distinction has been and must always be drawn between cases in which the trade name or the part of it in question consists of a word or words of ordinary use descriptive of the business carried on or the article dealt in and cases in which the word or words complained of is or are of the character of a fancy word or words and primarily have no relation to such business or article but only to the person carrying on the business dealing in the article … Of course if it can be established that the descriptive word or words has or have acquired among the public or that class of the public likely to deal with the business or goods in question, a subsidiary or secondary meaning denoting or connoting the business or the origin of the article, the person claiming to restrain the use of that word or those words can obtain the relief he seeks … I have always thought, and I still think, that it should be made almost impossible for anyone to obtain the exclusive right to the use of a word or term which is in ordinary use in our language and which is descriptive only … It has often been pointed out by the courts that where the name under which a plaintiff trades is a descriptive one, the court is always reluctant to interfere even where the defendant has taken a name very closely resembling that of the plaintiff … nevertheless, if the plaintiff can show that the name, though composed of descriptive elements, in fact distinguishes his firm or company, the court will restrain the improper use of such name or of a name so closely resembling it as to be calculated to deceive … It must be borne in mind that the plaintiffs have chosen to incorporate into their name the words 'office cleaning' which are descriptive of the business they carry on, and, unless they are in a position to establish a monopoly of the use of these words on the ground that they have acquired a secondary or subsidiary meaning, we do not think, they can obtain such a monopoly by reason of the fact that there is some risk of confusion if those words are also used by another
74 An appeal to the House of Lords against the decision in Office Cleaning Services was dismissed.
Principles
75 Decisions in other cases, concerning resemblance, confusion or mistake can only be a general guide. The trier of fact must objectively compare the names and determine the issue on an objective basis.
76 In cases where the test is likely to be confused or mistaken evidence of actual confusion is a matter to be taken into account but is not determinative.
77 Conduct which merely causes some uncertainty in the minds of relevant members of the public is not misleading.
78 Mislead means to lead into error. It does not mean that people who are mistaken are led to error.
79 It is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source.
80 The Tribunal must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive
81 The reference in s 12(c) to the public must be regarded as contemplating the effect of the conduct on reasonable members of the class.
82 When a provision creates burdens it cannot have been intended that these are to be imposed for the benefit of persons who fail to take reasonable care of their own interests
83 Conduct could not be relevantly misleading or deceptive if 'it tells the truth and is such that if it is observed by persons who have no false ideas concerning extraneous matters nobody will be misled'.
84 Whether or not any degree of resemblance in a manner likely to mislead the public exists is a matter for the Tribunal to decide, on the evidence in this review. It is not a matter for witnesses and is a question of fact.
85 A certain amount of misunderstanding is tolerable in cases where like descriptive names are used for separate businesses.
Analysis
86 The Tribunal places no weight on the applicants contentions that
• other rescues with what are said to be fundamentally similar names are incorporated.
• Husky Rescue WA Inc is said to have been established in 1999 and is said to have become very well known.
• the objectives of Husky Rescue WA differ fundamentally from Husky and Malamute Rescue Inc.
• Husky Rescue WA Inc and Malamute Rescue Inc have different websites and logos; or
• the letter of support from the Artic Breed Rescue dated 2 February 2017.
87 The test in s 12(c) is whether the name Husky Rescue WA Inc resembles Husky and Malamute Rescue in a manner likely to mislead the public.
88 The test in not whether Husky Rescue WA Inc is likely to be confused with or mistaken for Husky and Malamute Rescue.
89 There is a resemblance between the names Husky Rescue and Husky and Malamute Rescue. The likeness is two names both include the words Husky and Rescue in their names and further that a Husky, like a Malamute, is an Arctic dog. The objects, unlike the business in Drake, of the Husky Rescue and the Husky and Malamute Rescue are also similar. However, the Tribunal considers that there is a significant difference between the two names by reason of the words 'and Malamute' which do not appear in the applicants proposed name. The difference is significant. The words are different and the dogs are different.
90 Notwithstanding the significant difference, there is a resemblance so according to the provision the next step is to consider whether the name 'Husky Rescue WA' resembles the name 'Husky and Malamute Rescue' in a manner likely to mislead the public.
91 The parties regard Husky dogs and Malamute dogs as both being Arctic dogs. It is clear that they regard them as being similar but different. There is no evidence before the Tribunal but they are said by the respondent to be not dissimilar in appearance with the Malamute taller and heavier than a Husky. They are not the same, any more than black and tan coloured dogs hailing from Germany, some taller and heavier but not dissimilar in appearance such as a Daschund, a Doberman or a Rottweiler are the same.
92 A person considering the names and concluding that the two entities were the same would have a false idea about an extraneous matter namely that Huskies and Malamutes are the same, so therefore the two entities must be the same.
93 Section 12 of the AI Act is not, as was s 52, to be intended for the protection of consumers. The provision does not, ground an action for its breach as is the case with s 52 and its successor. However the provision may create a burden, in the sense of a consequence, upon an applicant who hopes to incorporate under the AI Act and wishes to do so under a name that might not be capable of being registered if, there is a resemblance and it is likely to mislead the public under s 12(c). Misleading is an element of the provision that must be established if the provision is to bite. A resemblance on its own cannot work to establish that the resemblance is misleading.
94 The importance of identifying why the alleged misconception arose is important in understanding whether a member of the public could likely be 'mislead.' Likely meaning, a practical judgment by the Tribunal as to a reasonable member of the public being misled by the two names and what kind of misconception is required in in order for the restriction in s 12 of the AI Act to operate to prevent the Commissioner from registering the name. A member of the public being a member of a very broad class of people including those who may wish to adopt, rehome a dog, or to volunteer to assist in relieving the suffering of animals, or to otherwise donate or contribute to the promotion of those objects.
95 The AI Act's purpose is the incorporation of associations. It is not for the registration of a trade mark or for the protection of a monopoly or a property right. The observations made by the High Court in Parkdale assist in identifying the critical issue, that is, whether a mistake about a name, which in this review is not caused by the name, since it is descriptive of what the entity to be named does, can be misleading?
96 The respondent, in its decision, submitted that a statement is technically true can still be misleading, the Tribunal considers that the name, Husky Rescue WA Inc, is not a statement that is technically true in any limited, strained or restricted sense, but is manifestly objectively true when matched with the proposed objectives of the organisation. The title describes the service. Further, the respondent's submission, against the facts of this review, is not consistent with the analysis of Smithers J in McWilliams and the Tribunal does not consider that it is correct or applicable to the facts of this review.
97 The Tribunal does not place any weight on the letter from Husky and Malamute Rescue. The objection and the grounds alleging matters going to the service to be provided by Husky Rescue WA are irrelevant to the matters which the Tribunal is required to consider in the resolution of this review.
98 The Tribunal does not accept that there is evidence that members of the public have already been misled by the resemblance between the two names as posited by the respondent's reasons for decision at paragraph 63 and which was said to be evidenced by attachments to the letter from Husky and Malamute Rescue. The Tribunal is not satisfied that the events recounted there are evidence of mistake in the relevant sense and is not satisfied that the events demonstrate anything with regard to the complaint that the Facebook posts, referred to in the letter from Husky and Malamute Rescue, evidence mistake, the Tribunal prefers the applicant's position, as expressed in her reply at paragraph 32.2 that members of the public often post updates on their dogs for many reasons. It does not follow that a publication on a group page is evidence of a mistake.
99 Confusion is not the same as misleading. Section 12(c) does not proscribe confusion and confusion should not be read into the provision to equate or replace mislead. The Tribunal does not accept the respondent's submission that the resemblance between the two names … is extremely significant such as to require the respondent to refuse incorporation. The names are significant because they describe the objects and purposes of the applicant and of the Husky and Malamute Rescue. The names describe their activity. The Tribunal rejects the respondents submission that if this resemblance is not likely to mislead the public, then it is difficult to envisage when the 'resemblance' limb of s 12(c) will ever operate. The Tribunal considers that the names in this review are descriptive, they have not acquired a subsidiary or secondary meaning that denote or connote the origin of the service, nor are the words, to further borrow the language of Lord Simmonds, fancy words. The Tribunal considers that it is not difficult to envisage a scenario when the resemblance limb of s 12(c) might operate, as it may, for example if the respondent was greeted by an application to incorporate Leelah's Huskee Savyahs when there were already in existence an incorporation named Lila's Huskii Saviors.
Orders
100 For the reasons given above the Tribunal makes the following orders:
1. The application for review is successful.
2. The letter of 11 April 2017 is set aside
3. The decision of 11 April 2017 is set aside and substitute the decision that the applicant be permitted to incorporate the association by the name Husky Rescue WA Inc with the Commissioner pursuant to s 12 of the AI Act.
4. The respondent is directed to incorporate the association.
I certify that this and the preceding [100] paragraphs comprise the reasons for decision of the State Administrative Tribunal.
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MR D MACLEAN, MEMBER
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