Federation of Australian Accountants Inc & Anor v Australian Society of Accountants

[1989] HCATrans 63

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry

Melbourne No Ml3 of 1988

B e t w e e n -

FEDERATION OF AUSTRALIAN

ACCOUNTANTS INC. and

KEITH LAWRENCE DRAPER

Applic.ants

and

AUSTRALIAN SOCIETY OF ACCOUNTANTS

Respondents

Application for special
leave to appeal

MASON CJ DAWSON J McHUGH J

Accountants

TRANSCRIPT OF PROCEEDINGS

AT MELBOURNE ON FRIDAY, 17 MARCH 1989, AT 3 .11 PM

Copyright in the High Court of Australia

MlT9/l/PLC 1 17/3/89

MR: J. PERTL:  May it please Your Honours, I appear for the

intended applicants, Mr Draper and the Federation of

Australian Accountants. (instructed by Joseph Pertl)

MASON CJ: Well, he is the applicant, is he not? He is not

intending. His intentions have come to fruition.

MR PERTL:	He is the applicant in these proceedings, very well.
MR D. SHAVIN:	If the Court please, I appear on behalf of the

respondent. (instructed by Arthur Robinson and Hedderwicks)

MR PERTL_:_ This is an application for special leave pursuant to

section 35A of the JUDICIARY ACT, may it please Your Honours,

which provides that - - -

~..ASON CJ: Well, we are aware of the section.

MR PERTL:  I particularly wish to highlight section 35A(i)

which talks about the - that the case is, in fact, of

public importance, whether its of"general application or

otherwise." Although I will rely on the whole of the

section, of course, not just that particular - - -

MASON CJ:  Can you identify any question of principle that is

involved in this case?

MR PERTL:  May it please Your Honour, the matter was actually

based on the advertisement. In the transcript of

proceedings at page 6 Your Honours will find that there

is, in fact, an advertisement that the Federation of

Australian Accountants placed in the Financial Times or

Financial Review and that is displayed there which reads

that:

The Federation of Australian Accountants

wish to invite suitably qualified accountants

to join our federation. We are currently

running examinations to increase your status

to CPA.	Any accountant who wishes to do so
with our federation is encouraged to inquire.

Any accountant that becomes a CPA with our

federation will be allowed to use our logos

for advertising purposes.

And then follows, in fact, an application for membership

and you will in particular notice that in the application

for membership that the only ones that, in fact, can apply

would he-eithe1,; for the associate membership or membership

or a fellowship which are ennumerated 1, 2 and 3.

The Australian Society of Accountants obviously did

not like that advertisement appearing or what it actually
said and so it made an application for interlocutory relief
to the Federal Court.

MASON CJ: Yes. Well, we are aware of the history of the matter

and we-are aware of the issues involved but what I would

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like you to do if you can is to explain to us why we

should grant special leave in this case because it seems

to turn on the construction of this particular advertisement

what it would convey to people and what the consequences

of that would be.

J:1R PERTL:	Yes.
MASON CJ:	Now, that does not seem to raise any question of

general principle.

J:1R PERTL:  I would submit to Your Honour that it does in this

particular way: first of all, I would submit that the

case is of public importance and the reason why the case

is, in fact, of public importance is - and that has been

actually set out fairly concisely by His Honour

Mr Justice Woodward at page 10 where he talk about, in

his findings - and this is in the last paragraph on that

particular page:

Having studied the affidavits, and

considered counsel's arguments, I am left in
no doubt that, over the last three years, the

applicant has gone to great trouble and expense - to the tune of over $3m - to establish the status of its qualification of Certified Practising

Accountant or CPA.

And then, in fact, at page 11, in the second paragraph

His Honour then mentions that:

The applicant is a large professional

organization of accountants, having some 53,000

members.

And then he goes into the history of that and I will not

go into all the details.

Now, first of all, my submission is that this case,

in fact, touches, as far as I can see, in its enormity,

every State and Territory throughout the whole Commonwealth

of Australia.

MASON CJ: That may be so but you have got to identi.fy the

question of law being of some public importance.

J:1R PERTL:  I am coming to that, may it please Your Honour. I

just wanted to stress the enormity of this particular

matter. It touches every accountant; it touches every

student in that particular field; it touches every member

of either commercial, private or public sector dealing

with accountants.

Now, my argument or my submission to this Court is,

first of all, that the crux of this particular case, of
course, is the advertisement that I have referred to and

that the Federation, in fact, advertises examinations to

increase the CPA with FAA, not with ASA. Now, I am coming

to the point that Your Honour has actually invited me and that is that the words complained of, in fact, were "CPA"

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or the equivalent., as His Honour found at page 8 , the

last paragraph, that those words, when they were referred

to by the ASA, meant "Certified Practising Accountant".

If we look at the interpretation of "CPA", that is actually

given as "Certified Public Accountant", and this is at

page 14 of the transcript. And the interpretation of

intent to advertise as a CPA alone is not borne out by
the advertisement as there is no separate classification

of CPA.

Now, CPA can only be used together, we would submit,

with one of the designations in the advertisement, in

other words, with FAA, CPA or, alternatively, if we are

looking at the ASA qualifications, AASA or FASA and then

CPA, and here I refer specifically to pages 12, 73 and 78

of the transcript or the supplementary transcript.

If, in fact, CPA means a "Certified Practising

Accountant" or if it means a "Certified Public Accountant"

or if it, in fact, has a meaning - and there are a great

variety of meanings suggested at page 50 of the books -

then I would submit that they are merely descriptive

words and that they are, in fact, not fancy words.

His Honour Mr Justice Woodward, in his judgment

commencing at page 7 and then, in particular, at page 16,

says - and at page 16, that is the third paragraph from

the top~

However I am satisfied that these three

words -

and he was referring to "certified", "practising" and

"accountant" -

used in combination, have acquired a secondary

meaning and become distinctive.

McHUGH J:  That is a question of fact. Where is the question of

law? What is the question of law of public importance,

Mr Pertl? You have not yet articulated it.

MR PERTL:  I think that the combination - I am sorry, I think

that the words "Certified Practising Accounting" is not

only just a matter of fact but also it is a question of

law. I think it is a combination of the two together. I

would not just simply say it is just a straight-out

question of fact.	I think it is also a question of law
on its own.

McHUGH J:  The question of fact is whether or not the letters

"CPA" have acquired a special meaning in relation to

accountants in Australia. The trial judge held that it

did. His judgment has been upheld unanimously by the

Full Court of the Federal Court and it has been held

that your client is in breach of section 52 of the

TRADE PRACTICES ACT

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l1R PERTL:  I understand that perfectly but where the problem

actually does arise in connection with that is that the

test propounded by His Honour Mr Justice Woodward is, in

fact, the wrong test.

McHUGH J: Well, where is that test that you say is wrong?

l1R PERTL:  The test, in fact, is the test of whether, in fact,

the words are descriptive or fancy, not whether the words,

in fact, have acquired a secondary meaning or become

distinctive.

MASON CJ:  But it is well established that words which are

inherently descriptive are capable of acquiring a secondary
meaning as designating a particular identity for goods or

services of someone.

l1R PERTL:  Unless, of course, they become fancy words, then they

remain descriptive words and consequently they cannot, in

fact, become distinctive nor can they, in fact, have

secondary meaning.

McHUGH J:  But this is a question under the TRADE PRACTICES ACT.

l1R PERTL: Well, it is but what we are really saying, may it

please Your Honour, is that, in fact, the TRADE PRACTICES

ACT does not tell us exactly what words to use and what

words not to use. Words are used - - -

McHUGH J:  It says you shall not make statements that are false

or misleading or likely to mislead.

l1R PERTL: Exactly. I accept -

McHUGH J: Well, His Honour has found that your client's use

of the letters "CPA" is likely to mislead a significant

section of the public.

l1R PERTL:  But where we actually take issue in that particular

case, may it please Your Honour, is because what we say

is that, in fact, the words on which he made the findings

were actually descriptive words and they were actually not,

in fact, fancy words.

McHUGH J:  It does not matter how you describe them, the question

is whether, to ordinary Australians - well, not ordinary

Australians but a relevant section of the community

would have understood them in a particular way.	His Honour
held that they would.

l1R PERTL:  I do not think that is the law at all, may it please

Your Honour, and I think that is where His Honour actually

erred and so did the Full Court. At page 41,

Mr Justice Lockhart, in his judgment, in the last major

paragraph - first of all, he commences with the words,

"In my opinion". and, eventually, he says:

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The point which resolves the central issues

in this appeal is that the letters CPA have

plainly acquired a special and distinctive

meaning in relation to the accountancy profession

in Australia.

There His Honour actually used a different type of

test, I would submit, and instead of using the test of

Mr Justice Woodward, which I say is wrong anyhow and

I will explain to you shortly why, he used the words

"special and distinctive meaning". "Distinctive" is

the same sort of test that His Honour Mr Justice Woodward

actually applied.

McHUGH J:  But these are not legal tests. The ultimate issue is

whether there is a breach of section 52.

MR PERTL: Exactly, and - - -

McHUGH J: His Honour might - "unique meaning" or "special

meaning" or "secondary meaning", it does not matter.

MR PERTL: Well, I personally think and I will personally submit

that it does matter. The reason why I say it does matter

is that one of the judges on the Appeal Court,

Mr Justice Ryan - and his judgment commences at page 43,

and then at page 44, in the second paragraph, he says:

It also follows from the resolution in favour

of the Society of the factual question whether the acronym "CPA" had become identified in the contemplation of that section of the public

concerned with accountancy qualifications with

a qualification or status of the Society, that

the Society is entitled to relief restraining
the Federation and its members from passing off
the status or qualification "CPA" as and for its

or their status or qualification.

And then His Honour goes and cites the case of SOCIETY

OF ACCOUNTANTS AND AUDITORS V GOODWAY AND LONDON

ASSOCIATION OF ACCOUNTANTS LIMITED, (1907) 1 Ch 489
and, in particular, at page 497.	I took the liberty of

having that particular judgment a.nd a few others

actually - I have got a photocopy of those particular

judgments and I would like to have a look at that

particular case and see, in fact, what - - -

MASON CJ:  How does this case help you?

MR PERTL: Well, I think it r..elps me very much in this particular

instance.

MASON CJ: Well, can you tell us how it does?

.MR PERTL:  Yes, yes, yes, certainly. First of all, we had two

professional bodies in that particular case, one,

Society of Accountants and Auditors, on the one hand, and on the other hand - the other one was London Association

of Accountants, Limited. Now, the Society of Accountants

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was a body of accountants incorporated by

registration and then in 1886, shortly after the

incorporation of the society, its counsel recommended
the members to adopt as their professional designation

the term "Incorporated Accountant" and emphasized

that recommendation in their report. So, Your Honours

will see, particularly, the use of two words or the

combination of two words, "incorporated" and

"accountant".

Now, what happened next is that a large number

of the members of the other association - sorry,

the large number of its members described themselves

and had for some years described themselves on their

letterheads or other business documents as

"Incorporated Accountants". And then subsequently

the London Association of Accountants was also
registered, this time in 1905, and in the opinion of

the counsel of the London Association of Accountants

many members including Mr Goodway, who is mentioned

as one of the parties, adopted and used on their
business cards and letter paper and upon door plates

the designation "Incorporated Accountant" or some abbreviation of those words and so the Society of

Accountants was not very happy about that situation

and so they brought an action against the London

Association and Goodway, claiming that Goodway be

restrained and, secondly, that the association

also be restrained.

MASON CJ:	And they succeeded.
MR PERTL:	And they, of course, succeeded.  And I notice that

the argument of Mr Warmington, KC, for the Society of

Accountants said in his argument that:

Tne phrase "incorporated accountant" as

a phrase is ridiculous. A person cannot be

incorporated. They shews, therefore, that the term is not a descriptive, but a fancy

term - - -

MASON CJ:  That is the basis on which the case was decided:

it was not descriptive, it was a fancy term;

therefore, the plaintiff was entitled to succeed

because the term designated something that was

associated with the plaintiff.

MR PERTL: Exactly, so therefore -

MASON CJ: How does that help you?

MR PERTL: Precisely. So, in fact, the argument then went on

to say that there must be, in fact, some secondary

meaning attached to that particular description.

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MASON CJ:  But it does not deny that a term which is prima facie

descriptive can acquire a secondary meaning and

therefore entitle a plaintiff to succeed. It does

not deny that anywhere.

MR PERTL: Well, His Honour Mr Justice Warrington in that

particular judgment at page 497 refers, down the

bottom - he says:

The case of CELLULAR CLOTHING CO V MAXTON

& MURRAY -

and there is a reference there to (1899) AC 326 -

in my opinion establishes that if a term

is merely descriptive of the class of goods -

that being, of course, strictly a case of

passing off goods as and for the goods

of another - it is extremely difficult for

a plaintiff to prove that it has lost that

meaning and has come to denote exclusively

goods of the class in question of his

(the plaintiff's) manufacture.

MASON CJ: True enough but not impossible.

MR PERTL:	What I am saying is, in fact, may it please Your Honour,
that there is, in fact, this particular distinction

between description and, in fact, the fancy words.

That is what I am really saying. That is the whole

point of this particular argument. And he says that:

I think that case also establishes that the

Court ought not to be astute to find that a

plaintiff, in cases similar to the present,

has acquired a monopoly; on the contrary,

I think the case establishes this -' and I

certainly am applying myself to the present

case with that view - that the Court ought

rather, in the interests of the public, to

see that nothing in the nature of a monopoly

is established except upon good and sufficient

grounds.

And then he says:

In reference to the first principle which

I have mentioned as having been established

by CELLULAR CLOTHING CO V MAXTON & MURRAY,

I should say this. I must determine this

further question, Is the term "incorporated

accountant" a descriptive term, or is it -

to use a convenient phrase, though not, I

think, quite an accurate one - a fancy term?

I only use that phrase as opposed to the

expression "descriptive term." In my opinion

it is not descriptive.

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And at page 499, His Honour says:

I find as the result of that evidence

that the designation "incorporated accountant"

had by the year 1905, when the society was

established, come to denote, with persons who

had to deal with accountants, an accountant

who was distinguished from the rest of the accountants' profession by being a member of that society -

and he goes on at the next page, 500. He says:

What I am satisfied of is that they considered

that that designation denoted membership,

not of any society whatever of accountants which was incorporated, but membership of the definite

incorporated society which, by its tests and

examinations and by its rules and requirements

as to qualifications, conferred on its members

a status different from that of other members

of the profession who had not the same

qualification.

particular case was the·use of the word 11 incorporated 11 -	So, in that particular case, what the point of that
the "accountant" obvfously is an ordinary corrnnon word
but the use of the word naccountant" together with the word "incorporated" gave it that particular class;
it took it out of the descriptive into a fancy type of
a description which, in fact, then exclusively identified that particular name with that particular accounting body. What my submission actually is is that, in fact, in this particular instance the words "certified practising accountant" has not, in fact, acquired that distinction, that secondary meaning, that fancy
exclusiveness.

McHUGH J: Well, all the judges have found it has. That is

just a pure question of fact.

MR PERTL:  May it please Your Honour, but this is the great

difficulty about this particular type of a case.

Are we going just simply to regard the judges'

decision on corrnnon descriptive words which do not, in

fact, have a fancy meaning - are we, in fact, going to

just simply say, "Well", you know, "the judges said

so and that's the end of that particular situation."?

What I am saying is because the words are, in fact,

ordinary plain corrnnon words which do not, in fact,

have a particular hallmark about them, then they cannot

possibly be described as a fancy phrase and

consequently they cannot be alienated or accepted -
sorry, they cannot be just simply accepted by that
particular society. That is what I am really saying -

is that there was just simply a very big fundamental

error in the way that the judges have actually

interpreted the case law on that particular subject-matter.

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MASON CJ: Well now, Mr Pertl, I think you have thoroughly

canvassed this point. There is not much more you

can say about it, is there, usefully, I mean?

MR PERTL:  May it please, Your Honour, not quite, I am sorry.

There is another case which shows the very same sort

of thing, and the other case that shows the very same

sort of thing - - -

MASON CJ: Well, if it shows no more than this case, it is

hardly worthwhile looking at, is it?

MR PERTL: Well, I think it is worthwhile looking at. If I

did not think it was worthwhile looking at I would

not bother to mention it.

MASON CJ:  But if it is only repeating what is in this case,

it is not going to advance us any further.

MR PERTL: Well, I think it will clearly show what the courts

think about that sort of situation. The particular

case that I had in mind was the case of RE INTERNATIONAL

TRADE CONSULTANTS LIMITED; TRADE CONSULTANTS LIMITED V

REGISTRAR OF COMPANIES & ANOR, (1987) 3 NZCLC 96-141

at page 99,983. In that particular case we had two

companies; one is called Trade Consultants Limited,

the other one was called International Trade Consultants

Limited. And very briefly, in that particular case,

the issue there was whether, in fact, the use of the

name by the company was actually undesirable, in

other words, where the two names were similar

were "Trade Consultants Limited". In fact, the only

differentiation between the first company, Trade

Consultants Limited, and the second one, International

Trade Consultants Limited, was the addition of the

word "International", that is all, nothing else. And

in that particular case - I have handed up that

particular judgment to Your Honours - Mr Justice Tompkins

said - and this is at page 99,987:

The second factor to be considered

is the nature of the applicant's and the second
respondent's names.	The applicant has adopted

what in the cases is described as a
descriptive or cotillilon name, as distinct from

a distinctive or fancy name. Its name is

descriptive of the activity of a trade

consultant. It does not incorporate any

distinctive or fancy words. This distinction

has long been recognised as relevant in

judging the likelihood of confusion.

And then - - -

McHUGH J:  Mr Pertl, really, you have put this point. The

learned judges in the court below were well aware

that they had to determine that these words had a

secondary meaning and they held that it did.	Now,
that is the beginning and end of the case.

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MR PERTL: Well, with respect, may it please Your Honour,

that cannot be the end of the case. The reason why

it cannot be the end of the case is because we have

got three words; they just make a determination.

On what particular basis do they make that particular

determination? Just because they take a fancy to

the - - -

McHUGH J: Well, they had a great deal of evidence that

$3 million had been spent and, indeed, the evidence

probably was capable of finding that your client

deliberately set out to appropriate the goodwill

acquired by these names.

MR PERTL:  Precisel~ but if they only addressed their own mind

as to whether they were ordinary descriptive words,
in that particular case they could not possible make

that particular finding. And what I am really

submitting is that they did not, in fact, address

their mind to that particular point, to that

particular issue, and that is why they are not only

wrong in fact but they are also wrong in law.	And
the reason why I say that they did not address

their minds properly to that particular situation

is because their judgment actually does not so reveal.

If they, in fact, said, "Right, in this particular

case these particular words are, in fact, not

descriptive, they are, in fact, fancy words and

they are fancy words" and they could identify

that fancy description or fancy connection in some
particular way like it did in the other case that I

have cited, the word "incorporated",- in that

particular case I would agree with that, but they

could not possibly do that and because they did not
do that, they did not aver to that particular point,

they did not actually address their mind to that

particular situation. And common knowledge will

tell you that, in fact, every accountant is a

certified accountant. Every accountant is either a

practising accountant or every accountant is a public accountant and every accountant is an accountant. So,

there was nothing particular distinctive, there was

nothing particularly unique, there was nothing

particularly fancy about that particular combination

and that is the very point of the whole situation.

MASON CJ: Well, I think you have managed to get that message

across, Mr Pertl.

MR PERTL:  May it please Your Honour. The other case that

deals with that sort of situation equally is the

case of CHASE MANHATTAN. I have also referred to

that in the authorities that I have handed up and

that is, in fact, the CHASE MANHATTAN OVERSEAS

CORPORATION & ORS V CHASE CORPORATION LTD. The one

that I unfortunately handed up was (1986) ATPR.

However, there is a better reference and unfortunately

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I do not have a copy of that that I did hand up -
is (1986) 12 FCR 375. At page 48,147,

Mr Justice Beaumont, of the Federal Court - - -

McHUGH J: Well, he dissented, did he not?

MR PERTL:  Yes, but what he did was that he actually gave, I

think, just for the sake of brevity, a fairly accurate

description of the facts and that is what I am going

to rely on. That:

The appellants, Chase Manhattan Overseas

Corporation, Chase AMP Bank Limited and The

Chase Manhattan Bank, NA, connnenced proceedings

in this Court against the first respondent,

Chase Corporation Limited, seeking to restrain

the use by Chase Corporation Limited of the

name "Chase", or any similar name, in

connection with the conduct of its business.

The Appellants, which were members of the

Chase Manhattan group of corporations,

claimed that, in the minds of the relevant

section of the public, the word "Chase"

had become associated with that group;
and that the use by Chase Corporation Limited

of the word "Chase" in its name was conduct

likely to mislead or deceive and thus in

contravention of the provisions of sec. 52 of

the TRADE PRACTICES ACT 1974. Alternative,

but similar, claims were made of contraventions

of sec. 53 and 53A of the Act.

.And at page 48,144, Mr Justice Lockhard said:

In my opinion, for the appellants to

succeed in this case would come dangerously

close to conferring upon them a statutory monopoly

in the word "Chase". It is not a descriptive

word in the sense in which that expression is

generally used in this branch of the law,

namely, as descriptive of the nature of the

business or the place or person by whom it is

conducted. Nor is it a concocted or fancy name.

But it is a connnon English word and is

susceptible of various meanings as a reference

to the dictionaries demonstrates.

Mr Justice Lockhard was, of course, on the appeal in

the very case that I am actually arguing in this

particular case. But Your Honours will see in this

particular case of CHASE MANHATTAN OVERSEAS CORPORATION V

CASE CORPORATION that His Honour has actually specifically

addressed his mind to the very points on which I was

actually making my submissions. He was specifically talking about the descriptive nature of the business

and then he was talking about "a concocted or fancy

name".

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MASON CJ:  No doubt he had the same considerations in mind when

he decided the current case but, of course, the evidence

was different and as a result he came to the conclusion

that the letters had acquired a secondary meaning.

MR PERTL: Well, what he said was "special and distinctive

meaning".

MASON CJ: Well, that is what he means.

MR PERTL: Well, my submission is he cannot mean that because - - -

MASON CJ:	He obviously means that, Mr Pertl.
MR PERTL:	May it please Your Honour, with respect, if he did

mean that then he would have used the classical
approach that the Federal Court judges actually should

use and did use and have used in the past.

In this particular - - -

MASON CJ: But they are alternative expressions.

MR PERTL: Well, may it please Your Honour, if they are alternative

descriptions in that particular case, I would, under

no circumstances - I cannot possibly agree that the

"certified practising accountant" can be described as

"a concocted or fancy name" and those are the words

that he himself used in that particular case.

McHUGH J: It is not a question whether you agree, Mr Pertl.

You are here to make submissions.

MR PERTL:  Very well. So, that is my submission, may it please

Your Honour, in thatparticular regard.

MASON CJ:  Now, Mr Pertl, we have spent some considerable time

discussing this. It is a very short point. Have you

not concluded your submissions?

MR PERTL:  No. Can I, please?

M..ASON CJ:  How long are you going to go?

MR PERTL: Well, I have got a few more points to make and I am

duty bound to make them - - -

MASON CJ: Well, would you make them as briefly as possible?

MR PERTL:	Well, yes, I can make them as briefly as possible.	I
also want to refer to the case of AUSTRALIAN SOCIETY
OF ACCOUNTAtrrs V LEYDON and INSTITUTE OF CHA..RTERED ACCOUNTANTS V LEYDON.
MASON CJ:	But how is that going to help us?	These are all

cases dealing with particular factual situations.

MR PERTL:	Yes.
MASON CJ:	They are not going to throw light on this case.

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McHUGH J:  You are not .arguing an appeal, you know.

This - - -

MR PERTL:  I realize that. I am merely trying to go to points.

Of course I realize that I am not doing an appeal.

Anyway, if I can just hand those particular cases up,

please.

MASON CJ:  Now, what are you going to get out of this case?

MR PERTL: Well, first of all, I am going to tell you some of the

facts of that particular case because I cannot very

well tell you about it if I do not tell you.

MASON CJ: What are you trying tu get out of it? What is it

going to demonstrate?

MR PERTL: It is going to, this. particular - can I proceed?

McHUGH J: Certainly. MR PERTL: Thank you.

McHUGH J:  I was pointing out to the Chief Justice it is an

unreported decision of a judge of the local court.

Now, how is that going to help the High Court of

Australia to determine whether or not it should grant special leave?

MR PERTL:  If, may it please Your Honour, there are factual

situations on which the judge of the local court -

and it was also on appeal, as I understand it - makes

a decision, I suppose the High Court can read that

decision and see whether, in fact, it makes sense

and wheth1.~r i;erhaps it cannot also apply the

factual and the. legal situation Ln it.	I cannot see
anything wrong with that.	It is not below our dignity
to go and look at the local court judgments.	Some
of them are, in fa.ct, very good.

MASON CJ:  They may be but what I said to you before was that

these cases all depend upon their own facts and

examination of them, one by one, is not going to be

of assistance to us.

MR PERTL:  I cannot help that, may it please Your Honour. All

I can do, may it please Youc honour, is just simply put my instructions and the matter the way t1ct I see

it and if you do not agree with me I am terribly

sorry. There is nothing else I can do about that

but please let me put the case that I have been

instructed to put, please.

MASON CJ:  No, but, Mr Pertl, we are not here to hear counsel

present submissions that are limitless in time.	We
are hearing special leave applications.	The time we

have available is limited and you are presenting this

case as if it were an appeal.

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MR PERTL: I definitely am not doing that because otherwise - - -

MASON CJ: That is how it appears to me.

MR PERTL:  I am sorry, because - I am not really, because if

I did that I would take that particular judgment

in each particular instance and I would go through

it line by line, item by item and point by point.

I am not doing that. I am merely just selecting a particular - - -

MASON CJ: But you are taking us to particular cases that

depend on their own facts and that is not the way a

special leave application ought to be presented.

MR PERTL:  May it please Your Honour, all cases in the very

long run depend entirely in the way that they are

presented.

MASON CJ:  Not the question whether an application for special

leave to appeal ought to be granted or refused.	It
does not hinge on questions like that.

MR PERTL: Well, it does not and the other thing, may it please

Your Honour, is that on the question of time, I am

sure that I am not taking as much time as the case

that I had before myself.

MASON CJ: But it is a much simpler case, this one, than that;

very much simpler.

MR PERTL:  I realize that it is much simpler and I accept that

particular situation without any reservation and I

am trying to make it as concise as I possibly can

and that is all there is to it. I am really trying.

MASON CJ: There is a lot more - - -

MR PERTL:  I realize that you have got time limits. I know

all that but, please, let me get on with the submissions

that I need to make.	If you do not want to hear from
me you have got every right to tell me to sit down.

MASON CJ:  I am not going to tell you to sit down. What I am

asking you to do is to present your argument

succinctly and shortly. Now, would you please present

the remainder of it and as succinctly as possible.

MR PERTL:  May it please Your Honour, of course. In that

particular case that I just simply handed up, at

page 4 Her Honour said:

In my opinion, the words Australian

Accountants are descriptive words.

The factual situation is set out very briefly in that

particular case, it is not a long one at all, beginning

on the very first page, down the bottom, that in:

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1978, Keith Lawrence Draper, a member

to section 5 of the said Act, of his intention to incorporate an association under the name Federation of Australian

of the Federation of Australian

Accountants. Both appellants gave notices

of objection in writing within one month -

and you will particularly notice that the objectors,

in this particular case, was Australian Society of

Accountants and also the Institute of Chartered

Accountants of Australia. The saga or the battle

between Australian Society of Accountants and

the Federation of Australian Accountants is, as

Your Honours can see from that particular case,

going back to 1979. It appears to me, quite clearly,

that all that the Australian Society of Accountants

are trying to do is they are just trying to monopolize

their particular field and they are trying to get

anybody, including people like Mr Draper on behalf

of the Federation of Australian Accountants, out
of that particular field by hook or by crook, and

that is exactly what is happening.:

I am not going to labour the question of"the

descriptive and fancy" any further but what I am

going to say, and I hope that I will conclude my

submissions fairly soon, may it please the Court, is

this:  that in my submission there is actually no

statutory way that the Australian Society of Accountants
could, in fact, acquire the proprietorship in that

particular combination of words, "certified practising

accountants" so they, in fact, choose the TRADE PRACTICES

ACT to get that particular statutory - or, virtually,

semi-statutory recognition and as we all know

perfectly well, that names of that particular description

could not possibly have been either obtained under the·

BUSINESS NAMES ACT or TRADE MARKS ACT or even as a

corporation. So, in fact, the TRADE PRACTICES ACT

was used to give legal sanction to such a situation

as this. In my submission, and my instructions are that

this, in fact, has become a monopoly to squash and to
squeeze out all accountancy bodies out of the accountancy

market. ·

,Now, another po·int that I am duty bound to take,

and this is extremely important, is this: His Honour

Mr Justice Woodward, at page 17 of his reasons,

second paragraph, said:

Finally, it was argued that if orders

were to be made against any of the respondents,

who had only acted 11 in his corporate capacity". they should not be made against Mr Draper,

In fact I have no doubt that Mr Draper was

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was knowingly involved in, and in fact

procured, the contravention of the Act

by the third respondent.

Now, here is a very strange thing that His Honour

actually found and I will tell Your Honours why I

find that as a very strange matter, indeed. If

one looks at page 7 of what His Honour stated for

reasons for judgment in the very first paragraph,

His Honour says:

This is an application for interlocutory

relief under ss.52 and 53 of the TRADE

PRACTICES ACT 1974 and under the common law

of passing off. It is agreed between the

parties that this hearing should be treated as the trial of the action.

Now, at page 10 of his reasons, he says:

It was agreed between the parties that

the matter would be tried on the affidavits,

without pleadings, and that no deponent

would be required to attend for

cross-examination.

And then Your Honours will see that at page 13 -

and I am not going to read that because I do not

find it necessary - he deals with the evidence of

Mr Draper and he follows that through somewhat at

page 14 as well.

Now, what I find very amazing, and this is my

submission to this Court, is that in fact His Honour

had no way of making a finding based on affidavits

that have not, in fact, been tested, cross-examined,

to make a finding that, in fact, Mr Draper was

knowingly involved in and in fact procured the

contravention of the Act by the third respondent.

It was incumbent, in my submission, that if, in fact -

and Mr Draper, as I understand the situation,

absolutely denied his individual involvement with

the placing of the advertisement or having anything

to do with that. I find it strange, unbelievable

and legally totally unacceptable that His Honour

can then make a finding.

MASON CJ:  It is not a question of what you find or what you

believe. We are here to hear submissions, not to hear

what your beliefs or findings are, Mr Pertl.

MR PERTL:  May it please Your Honour. Well, in that particular

case my submission is this: that His Honour could not,
as a matter of law, on the affidavits that have not

been tested - and the other side did not require

Mr Draper to come in to make that particular sort of

finding and if we are going to have findings just simply

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based on affidavits in that particular case, then

our law is just going in the wrong direction.	The
only way that we can possibly make findings in

relation to any factual situation is by having the

individuals present in the court and being

cross-examined and if the other side, namely, the

Australian Society of Accountants do not actually
require the presence of Mr Draper for cross-examination,

in that particular case, my submission is that they

are stuck with what Mr Draper says and if Mr Draper

denies any involvement personally in relation to this

particular matter, then His Honour cannot, should not

and must not, in fact, make such a particular finding
and if, in fact, that turns out to be the law, well,
in that particular case I think that that particular

law is wrong and I think that this particular Court

should, in fact, give leave for Mr Draper to enable

him to appeal to argue that particular point fully

and completely. I have only been invited to make

the points and that is all I am doing, I am not

arguing the appeal itself, so that this sort of

situation - so that this sort of injustice, in my submission, will not be perpetrated either in his own particular case or in any other case in

Australia. And so I am making that particular point

especially for and on behalf of Mr Draper in that

particular context. The other points were made, not

only on behalf of the Federation but Mr Draper as well.

This particular point specifically applies to

Mr Draper and to Mr Draper alone.

I do not think I have any other submissions,

may it please Your Honours.

MASON CJ:  The Court need not trouble you, Mr Shavan.

Essentially, the question which the proposed appeal seeks to raise is a question of fact and on

that question of fact there are concurrent findings

of fact adverse to the applicants.

Apart from that, the Court is not persuaded

that there is any error in the judgment of the

court below. The application is therefore refused

and it is refused with costs.

AT 4.05 PM THE MATTER WAS ADJOURNED SINE DIE

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