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

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

Case [1998] FCA 480 5 May 1998

Trade Practices Act

Passing Off

Jurisdiction

Admissibility of Evidence

Intellectual Property Law

Civil Litigation & Procedure

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IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NG 948 of 1996

BETWEEN:

THE GUIDE DOG OWNERS’ & FRIENDS’ ASSOCIATION INC
(ACN 004 758 641)
APPLICANT

AND:

GUIDE DOG ASSOCIATION OF NEW SOUTH WALES & ACT
(ACN 000 399 744)
FIRST RESPONDENT

ROYAL GUIDE DOGS ASSOCIATIONS OF AUSTRALIA
(ACN 008 427 423)
SECOND RESPONDENT

JUDGE:

SACKVILLE J

DATE:

5 MAY, 1998

PLACE:

SYDNEY

RULING ON EVIDENCE

Mr Ellicott QC, who appears with Mr Studdy for the applicant (“GDOFA”), has objected to the reception into evidence of certain passages in the affidavit of Mr Finucane. Mr Finucane is the Chief Executive Officer of the first respondent (“GD Association”). Mr MacFarlane QC, who appears with Mr Leopold for the respondents, seeks to read the disputed passages in support of the respondents’ case.

The applicant can be described, for present purposes, as a charitable organisation. For many years, it has conducted, inter alia, a training centre in Victoria for guide dogs for the blind, under the name of “Lady Nell Seeing Eye Dog School and Rehabilitation Centre”. The first respondent can also be described as a charitable organisation. It operates primarily, but not exclusively, in New South Wales and the Australian Capital Territory. It trains guide dogs at centres in New South Wales and, to a more limited extent, in Victoria. The second respondent has been described as an “umbrella” organisation. Its membership includes State associations of which the GD Association is one.

GDOFA’s case, insofar as relevant, is that it has used the words “seeing eye” and “seeing eye dogs” extensively throughout Australia in its various activities, including the promotion, advertising and training of “seeing eye dogs”; the training of blind and visually impaired people with those dogs; and the provision of rehabilitation and mobility services. GDOFA claims that the words “seeing eye” have a distinctive character and meaning whereby they are or have become distinctive of GDOFA, its dogs, and services and merchandise. It says that the respondents have used these words to promote their own organisations and services, thereby attempting to take advantage of the substantial reputation built up by GDOFA. According to GDOFA, the respondents’ actions constitute misleading and deceptive conduct in contravention of ss 52, 53(c) and (d) of the Trade Practices Act 1974 (Cth), as well as the tort of passing off.

The respondents resist GDOFA’s claim on a number of grounds. Relevantly, they say that both before and after the establishment of the Lady Nell Seeing Eye Dog School and Rehabilitation Centre, the expression “seeing eye dog” was used as a purely descriptive term for a dog trained to assist blind persons. Consequently, the expression had never become distinctive of GDOFA, its dogs or the services provided by it. At all times, it had been a generic term for a dog trained to assist blind people.

Paragraphs 19 and 20 of Mr Finucane’s affidavit read as follows:

“19. Since I became Chief Executive Officer of the Association, I have had extensive dealings with…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Guide Dog Owners' & Friends' Association Inc v Guide Dog Association of New South Wales & ACT [1998] FCA 480
Case: [1998] FCA 480
Decision Date: 5 MAY, 1998

CaseChat Overview and Summary

In the Federal Court of Australia, the Guide Dog Owners' & Friends' Association Inc. (GDOFA) brought an action against the Guide Dog Association of New South Wales & ACT (GD Association) and the Royal Guide Dogs Associations of Australia (RGD Associations), challenging the use of the terms "seeing eye" and "seeing eye dogs" by the respondents. GDOFA claimed that these terms had become distinctive of their organisation, its dogs, and services, and that the respondents' use of these terms constituted misleading and deceptive conduct under the Trade Practices Act 1974 (Cth), as well as the tort of passing off. The respondents defended the case by asserting that "seeing eye dog" was a generic term used to describe a dog trained to assist blind people and had never been distinctive of GDOFA or its services.

The legal issue before the court was whether certain passages in the affidavit of Mr Finucane, the Chief Executive Officer of the GD Association, should be admitted as evidence. Specifically, Mr Ellicott QC objected to the last sentence of paragraph 19 and the entirety of paragraph 20 of Mr Finucane’s affidavit, arguing that they were prejudicial and lacked probative value. Mr MacFarlane QC, on behalf of the respondents, sought to admit the disputed passages under section 78 of the Evidence Act 1995 (Cth), which allows for the admission of lay opinion evidence if it is based on the witness's personal perception of a matter or event.

Justice Sackville ruled that the last sentence of paragraph 19 should be excluded. He found that, even if it could be considered an opinion under section 78, its probative value was substantially outweighed by the danger of it being unfairly prejudicial to GDOFA. The sentence in question purported to summarise the effect of numerous conversations without providing sufficient detail to allow for proper cross-examination or to assess the weight of the opinion. In contrast, paragraph 20 was admitted as it recorded the substance of particular conversations without characterising their effect in terms of the issues in the case. The court found that paragraph 20 was relevant to the facts in issue and did not suffer from the same defects as the excluded sentence.

Orders