Hindmarsh Medical Clinic v Hindmarsh Family Practice Pty Ltd

[1997] FCA 546

CATCHWORDS

TRADE PRACTICES - misleading or deceptive conduct - passing off - use of geographically descriptive name - whether distinctiveness or secondary meaning established.

PRACTICE AND PROCEDURE - application to reopen case after judgment reserved - discretion - relevant considerations - application refused.

Trade Practices Act 1974 s 52
Fair Trading Act 1987 (SA)

Evidence, Its History and Policies, Professor Julius Stone,
     revised by WAN Wells, Butterworths, 1991, at 626-629

Hornsby Building Information Centre Pty Ltd v Sydney Building
     Information Centre Ltd (1977-78) 140 CLR 216
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982)
149 CLR 191
Barry v Lake Jindabyne Reservation Centre Pty Ltd (1985)
8 FCR 279
Chase Manhattan Overseas Corporation v Chase Corporation Ltd
(1986) 8 IPR 69
Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd
(1993) 26 IPR 261
Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302
Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177
Erven Warnink BV v J Townsend & Sons (Hull) Ltd [1979] AC 731
A G Spalding & Bros v A W Gamage Ld (1915) 32 RPC 273
Handley v Snoid [1981] ATPR 40-219
Equity Access Pty Ltd v Westpac Banking Corporation (1989)
16 IPR 431
Fine Cotton Spinners and Doublers' Association Ltd v Harwood
     Cash & Co Ltd [1907] 2 Ch 184
Wallace v Baulkham Hills Smash Repairs Pty Ltd (1995)
32 IPR 443
Street v Jedminster Pty Ltd (1988) 11 IPR 520
Burswood Management Ltd v Burswood Casino Motel/Hotel Pty Ltd
(1985) 7 FCR 186
George v Bentley (1972) 3 SASR 170
Snyman v Cooper and Others (1990) 97 ALR 653
Betts v Whittingslowe (No 1) [1944] SASR 163
Home Management Maintenance Pty Ltd v Doyle (1992) 107 FLR 225
Smith v New South Wales Bar Association (1992) 176 CLR 256
Londish v Gulf Pacific Pty Ltd (1993) 45 FCR 128
Jesseron Holdings Pty Ltd v Middle East Trading Consultants
     Pty Ltd (No 2) (1994) 122 ALR 717

No SG 21 of 1997
HINDMARSH MEDICAL CLINIC v HINDMARSH FAMILY PRACTICE PTY LTD
(ACN 075 416 410) and SAMER SHAHIN

Mansfield J
Adelaide
23 June 1997

IN THE FEDERAL COURT OF AUSTRALIA )
  )
SOUTH AUSTRALIA DISTRICT REGISTRY )    No SG 21 of 1997
  )
GENERAL DIVISION                 )

B E T W E N:

HINDMARSH MEDICAL CLINIC

Applicant

- and -

HINDMARSH FAMILY PRACTICE
  PTY LTD (ACN 075 416 410)

First Respondent

- and -

SAMER SHAHIN

Second Respondent

MINUTES OF ORDER

Coram:    Mansfield J
Place:    Adelaide
Date:     23 June 1997

THE COURT ORDERS THAT:

1. The application be dismissed.

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

IN THE FEDERAL COURT OF AUSTRALIA )
  )
SOUTH AUSTRALIA DISTRICT REGISTRY )    No SG 21 of 1997
  )
GENERAL DIVISION                 )

B E T W E E N:

HINDMARSH MEDICAL CLINIC

Applicant

- and -

HINDMARSH FAMILY PRACTICE
  PTY LTD (ACN 075 416 410)

First Respondent

- and -

SAMER SHAHIN

Second Respondent

REASONS FOR JUDGMENT

Coram:    Mansfield J
Place:    Adelaide
Date:     23 June 1997

Introduction

The applicant Hindmarsh Medical Clinic ("the applicant") is a partnership of seven medical practitioners, which has since 25 March 1985 carried on the business of a medical practice under the name 'Hindmarsh Medical Clinic' on premises situate at 275 Port Road, Hindmarsh in South Australia.  The name 'Hindmarsh Medical Clinic' has, since 12 March 1985, been a business name registered under the Business Names Act 1996 (SA) or its predecessor. The applicant, or more correctly
members of that partnership from time to time, have been the proprietors of that business name.

The applicant's business is a busy and substantial one.  It normally has three doctors on duty during its normal consulting hours, between 8.00am and 10.00pm seven days a week.  It promotes its name modestly by signage and advertising, and it is asserted in the pleadings that it is well recognised within the suburb of Hindmarsh and adjacent suburbs.  At the premises at 275 Port Road, Hindmarsh or adjacent premises there is also provided, through other persons, other paramedical services including podiatry, dentistry, psychology and optometry services.  A business known as "The Hindmarsh Physiotherapy and Sports Injury Clinic" also operates from those premises.

The respondent, Hindmarsh Family Practice Pty Ltd ("the first respondent") became a duly registered company on 28 August 1996, and the respondent Samer Shahin ("Dr Shahin") is a shareholder and one of its two directors.  It is plain that Dr Shahin is the driving force behind the first respondent.  Since 2 December 1996, the first respondent has carried on the business of a medical practice under the name 'Hindmarsh Family Practice Pty Ltd', from premises situate at 500 Port Road, Welland in South Australia.  That location is about 1.1 kilometres from the practice of the applicant.  Dr Shahin is also the registered proprietor since 8 January 1996 of the business name 'Welland Medical Centre', also a
business name registered under the Business Names Act 1996 (SA).

There is no dispute that the business of the first respondent, through which Dr Shahin practices medicine, is in competition with that of the applicant.  They are unrelated entities.  The applicant complains in this proceeding that the use of the name 'Hindmarsh Family Practice Pty Ltd' or 'Hindmarsh Family Practice' constitutes conduct which is misleading and deceptive, or is likely to mislead and deceive; that the first respondent's business is, or is associated with, the applicant's business contrary to s52 of the Trade Practices Act 1974 and s56 of the Fair Trading Act 1987 (SA); Dr Shahin is said to have been knowingly concerned in that infringement. There is nothing which indicates that the claim under s56 of the Fair Trading Act 1987 adds in any relevant way to the claim based upon s52 of the Trade Practices Act 1974, and it is unnecessary therefore for me to separately consider it. The applicant also complains that, by its conduct, the first respondent is passing off its business as, or as associated with, the applicant's business. That conduct is said to arise, in particular, from:

.the use of the word 'Hindmarsh' to describe a medical practice, because that word is associated with the applicant's business

.the fact that the respondent's business does not operate in or from the suburb of Hindmarsh, but in or from the suburb of Welland, and

.the close physical proximity of the two business premises, on the same main road and a little over 1 kilometre apart.

The applicant therefore seeks permanent injunctive relief restraining the first respondent from practising medicine from that location (and from any nearby suburb) under the name 'Hindmarsh Family Practice Pty Ltd' or 'Hindmarsh Family Practice'.

The evidence and findings

There is really little dispute about the facts.

The business of the applicant conducted under the name 'Hindmarsh Medical Clinic' is located at 275 Port Road, Hindmarsh.  As the evidence shows, Port Road is a major arterial road running from the City of Adelaide north-westerly to the Port Adelaide area.  As one proceeds on Port Road from Adelaide, the premises are on the eastern or right hand side of the road.  Hindmarsh is the first suburb on Port Road after leaving the West Parklands area.  On the western side of Port Road there are the suburbs of West Hindmarsh and then Welland.  Welland is a smaller suburb and, at least in the perception of Dr Shahin, much less well known than Hindmarsh. 
On the eastern side of Port Road, there is also a series of suburbs, although it is unclear whether their boundaries are Port Road itself or an approximately parallel road just east of Port Road in some instances.  The applicant's premises, and the first respondent's premises are within the general area of what was called in 1996 the Corporation of the City of Hindmarsh and Woodville, now part of the City of Charles Sturt.  The first respondent's premises are on the western side of Port Road, or the left hand side as one travels from the city, and north west of the applicant's premises.

The name 'Hindmarsh Medical Clinic' was chosen by Dr David Fitzgerald on behalf of the applicant (as then constituted) in 1985.  His conception was for a medical practice in part with a "casualty" focus.  The premises were in the suburb of Hindmarsh.  They were located very roughly about half way between the casualty and intensive services provided through the public hospitals Royal Adelaide Hospital in Adelaide itself and Queen Elizabeth Hospital, further to the north west of Hindmarsh.  Over time, he contemplated the provision from the premises of a range of medical related services as well as medical services; that conception is now well towards fruition.  It was with those plans in mind that the name was chosen.

The applicant's business is run from premises acquired by two of the partners in 1985.  The premises were quite run down,
and were renovated for the purpose of running a medical practice from them.  Initially that medical practice operated only as an after hours service, but soon was operated as a 24 hour service open 7 days a week.  In 1989 the daily hours reverted to 8.00am to 12 midnight on each day, and in 1993 from 8.00am to 10.00pm on each day.  The hours have been of that order since 1993.

Dr David Fitzgerald and his father Dr Ronald Fitzgerald were the owners of the premises, and Dr David Fitzgerald initially lived at the premises to support that very extensive service and later at the premises at 281 Port Road, Hindmarsh, which were acquired in 1986.  The applicant or Dr Fitzgerald's family interests now own the premises at 269, 275 and 281 Port Road, Hindmarsh, with 275 and 281 adjoining and in fact joined by a common waiting area.  There is a separate detached cottage between 269 and 275 Port Road.  The entire premises are occupied by the applicants but then in part sublet in some way to those providing paramedical services.  It is not necessary for the purposes of this judgment to explore those arrangements or to discriminate in any way between the buildings at the premises.

The medical practice from its inception was called 'Hindmarsh Medical Clinic'.

In 1989 the business known as 'The Hindmarsh Physiotherapy and Sports Injury Clinic' also began to operate from the premises,
still under the banner of the 'Hindmarsh Medical Centre', which included the medical practice.  The premises were further extended by the addition of the premises at 269 Port Road, Hindmarsh in 1991, and progressively other paramedical services have been provided:  podiatry, dentistry, psychology and optometry.

It is necessary to trace the nature of the medical practice from time to time to determine whether it has such goodwill in the name 'Hindmarsh Medical Centre' as to entitle it to the relief claimed.

The size of the applicant's practice increased quickly during 1988 and 1989, so by 1990 and still there were seven doctors working in it.  Its patients are, on the evidence, separately identified as 'day patients' and 'after hours' patients although inevitably there would be some commonality or interchange between those groups.  The 'day patients' by 1990 and since comprised mainly, that is about two-thirds or more, patients from the local area within a radius of 1.5 kilometres or so, although over time that radius has extended to up to about 2 kilometres.  Thus the pool of potential "local" patients extends to a number of suburbs adjoining Hindmarsh and indeed beyond those adjoining suburbs.  The 'after hours' patients, as one might expect, were and are less from the immediately local areas; Dr Fitzgerald estimated that only about one quarter of the after hours patients come from within a 2 kilometre catchment area, although the majority come from
within about a 4 kilometre radius of the premises.  There were in 1985 only two other small medical practices in the Hindmarsh suburb, but neither used the name 'Hindmarsh'.

The applicant has not vigorously promoted the name 'Hindmarsh Medical Clinic'.  It may be that its limited advertising is a consequence of guidelines of its professional association, although I do not need to address that question.  When it started business in 1985 it caused a small article to be published in the local newspaper.  It has maintained an entry in the White Pages of the telephone directory, currently under the name 'Hindmarsh Medical Clinic' in bold print, and then with the description 'Day Night Surgery 7 Days', the address, and then separately the names of the doctors practising medicine at that address, and the names of the physiotherapists, dentists, psychologists and of the podiatrist practising at that address and identifying their particular specialty.  It has also maintained a standard entry in the Yellow Pages of the telephone directory both in the alphabetical section with the wording 'Hindmarsh Medical Clinic Day/Night Surgery' with a list of doctors' names underneath, and in the locality guide under Hindmarsh with the same entry.  It has also sent "flyers" to its own patients from time to time.  At its premises there is a prominent sign on the front wall facing the street 'Hindmarsh Medical Clinic'.  There is also a larger sign overhanging the footpath, which is illuminated at night, containing in large print the words 'Day/Night Surgery' but which does not contain the name of the applicant.  The evidence discloses that it is quite noticeable at night.  The wall sign also sits under much weaker lighting and is legible but not prominent at night.  The telephone is answered with the name of the applicant.  As the after hours business of the applicant also includes referral work from other nearby medical practices, the applicant conducts what Dr Fitzgerald called an education night available for all doctors in the general area on a regular basis.  Such after hours referral work is the subject of a report to the referring practice, presumably in the expectation that the patient will return to that practice.  The evidence does not disclose how the referring practices arrange for their patients seeking after hours treatment to go to the applicant's practice but I assume there is at least in some instances a telephone message identifying it at least by address or by telephone number as well as by name.

The applicant has not otherwise promoted its business, except no doubt by reliance on word of mouth through its patients.

The patients of the applicant are recorded in a computer data base, and are broken into four groups.  There are about 6000 current 'permanent' patients who have been recurrent patients within the previous two years.  There are next a group of 'semi-permanent' patients who had been recurrent patients but beyond the previous two years.  The third group are 'casual' patients, who have been to the practice once or twice only.  Finally, there are the 'archived' patients, whose
details are no longer retained on computer records.  In all the names so retained are in the order of 50000-60000.  It is not clear on the evidence whether "flyers", when sent, are sent to all such patients or only those whose records are retained on computer.

The applicant also practises medicine from two other locations, but under different names.  Dr Ronald Fitzgerald, prior to 1985, practiced from premises at Woodville North and the applicant continues to do so.  There was no direct evidence of the name of the applicant's practice from those premises, although in the 1997 Yellow Pages there is an entry under both the general alphabetical listing, and in the locality listing under Woodville North, referring to 'Hanson Road Medical Centre' at 193 Hanson Road, Athol Park with the initials and names of four of the seven members of the applicant, plus one other doctor, and with the after hours number the same as that appearing for the applicant.  The applicant also practises, so I was told, from 1993 at premises at Prospect, and it is at those premises that the educational evenings for other doctors are conducted.  The evidence did not directly disclose the name or address of that practice, but again the 1997 Yellow Pages in evidence before me reveals that in the alphabetical and geographical sections for medical entries there is an entry under the name 'Fitzroy Medical Clinic' at 42 Prospect Road, Prospect, with the initials and names of two of the members of the applicant and of two other doctors, also with the applicant's after hours telephone
number.  I infer that those are the two other places from which the applicant practices about which Dr David Fitzgerald gave evidence.

The practice at Hindmarsh sees some 1000 medical patients each week, and the practices at Woodville North (or Athol Park) and at Prospect each see some 300 medical patients each week.

Apart from Dr David Fitzgerald's evidence as to the nature of the applicant's business and the goodwill said to arise from its name, the only other evidence led by the applicant on that score was from two patients, each of whom described himself as "a patient of Dr David Bowler at the Hindmarsh Medical Clinic".  To understand their evidence, it is necessary to refer to the steps taken by the first respondent to establish its business.

Dr Shahin had been practising medicine in a country area of South Australia.  It was planned that he should return to the city to practise.  On 22 December 1995 Shahin Enterprises Pty Ltd as trustee for the Shahin Superannuation Fund contracted to purchase the premises at 500 Port Road, Welland.  Settlement took place on 27 February 1996.  The purchase was initially simply as an investment by the family trust.  It appears that, soon after the contract, the plan was formed to put those premises to use as the location from which Dr Shahin would practise medicine.  On 8 January 1996, Dr Shahin's father arranged for the business name 'Welland Medical Centre'
to be registered in the name of Dr Shahin.

When Dr Shahin's plans became more specific, he considered the name under which he wished to practice.  He did not think 'Welland Medical Centre' was an appropriate name because it is a small suburb, and not very well known.  He had inspected the general area, including that of other medical practices, and was aware of the applicant's name and its manner of presentation of its premises.  He then considered several names, including 'Hindmarsh Family Practice', 'Woodville Medical Centre', and several others, and arranged for their availability to be checked.  It was as a result of that inquiry that he was told that the first respondent's name was available, and he selected it.  He was aware then of the shopping plaza near the premises at 500 Port Road, known as 'Welland Plaza'; it is of moderate size with two supermarkets and some speciality stores including a chemist shop.  He did not associate that shopping facility with the name Welland.  Other evidence shows that Welland Plaza is known, at least to some, by that name.  His perception may well have been flawed.  But I accept his evidence that that was his perception.  He was not then aware of the full range of paramedical services which were offered from the applicant's premises.  His evidence was that he did not, at that time, think that the name 'Hindmarsh Family Practice' would be confusing with the applicant's name, nor lead to any issue that his medical practice was or would be associated in some way with the applicant's business.  I accept that evidence.  I think it is consistent with the general enquiries he made, including his observation of the way the applicant's premises are physically set up; he did not, of course, know the history or size of the applicant's business or how it had developed over some ten years or so.  It is consistent also with a desire to identify his proposed practice geographically in an area well known (in his judgment) and identified roughly with his locality.  There was no other evidence as to the conception of 'Hindmarsh' as an area, or 'Woodville', or the numerous suburbs individually within the City of Hindmarsh and Woodville by members of the public in that broad geographical area.  I accept the evidence of Dr Shahin to the general effect that Hindmarsh was a name used to describe a more general area than that of the precise suburb itself, and is more well known than Welland.  The evidence of Dr Fitzgerald did not gainsay that.  On the evidence, Australia Post does not identify delays or problems in mail delivery if the respondent uses Hindmarsh as the relevant suburb, nor complain of the first respondent using Hindmarsh as its postal address.  Hindmarsh and Welland share the same postcode.

On 28 August 1996 the company Hindmarsh Family Practice Pty Ltd was registered with Dr Shahin as one of the directors.  In about October 1996 refurbishment of the first respondent's premises was commenced at 500 Port Road, Welland.  That work was completed so the first respondent commenced business as a medical practice under the name 'Hindmarsh Family Practice' at those premises on 2 December 1996.  That work included the
erection of a large overhead sign at the premises.  That sign is illuminated at night.  It was that sign which attracted the attention of the two witnesses called by the applicant.

In November and December 1996 that sign was oval in shape, the centre portion of which had the words "Medical Centre" in large lettering with the number "500" above it but in smaller print and the perimeter of which had in smaller and less obvious lettering the word 'Hindmarsh' at its top and the words 'Family Practice Pty Ltd' at its bottom.  The inner print is light on a dark background, and the outer print is dark on a light background.

The evidence of Patrick Gerard Harvey is that he knows Dr Bowler socially, and his children are treated by Dr Bowler.  In late 1996, whilst driving along Port Road, he saw the respondent's sign which he described as "the sign 'Hindmarsh Family Practice'".  He thought that the use of the word "Hindmarsh" meant the practice of Dr Bowler, and thought Dr Bowler was therefore moving.  He contacted Dr Bowler, but was told it was a different practice.  I do not know why he first thought the practice was that of Dr Bowler, especially given his description of the sign (as distinct from what it may have conveyed to others).  It may be that he thought Dr Bowler's was the only practice in Hindmarsh, or that it was increasing its promotional activities, or that it was changing its name by referring to 'Family Practice', or that he had some reason to think Dr Bowler might want to move to newer
premises.  What it was that led him to describe the focus of the sign as Hindmarsh Family Practice is not clear.  What is apparent from his evidence is that he associated a medical practice with the name 'Hindmarsh' in it with the applicant's business.  What he thought about the words 'Family Practice', or how he identified Dr Bowler's practice in relation to the full name 'Hindmarsh Family Practice' is not explained.

The affidavit evidence of Desmond Liam O'Mahoney, who has been a patient of Dr Bowler at the Hindmarsh Medical Clinic for many years was also tendered.  Upon seeing the first respondent's sign in early 1997, he associated the premises with the applicant, and assumed Dr Bowler was moving to newer premises, apparently because of the use of the word 'Hindmarsh' associated in some way with medical practice.  Whether the particular get-up of the sign, including, the focus on the words 'Medical Centre' played a part in his forming that view is not explored.  Although the first respondent's business was then operating, he nevertheless went correctly, and as he intended, to Dr Bowler's Hindmarsh Medical Clinic for his next consultation, although he then asked Dr Bowler when he was moving.  Why he should ask that, when those premises were operating, or how he nevertheless went to Dr Bowler's practice in any event is not explored.

In Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1977-78) 140 CLR 216, Stephen J (with whom Jacobs J agreed) at 228 said in respect
of some evidence that persons had been misled into believing that the Hornsby centre was a branch of, or otherwise associated with, the Sydney centre:

"The Sydney Centre tendered some evidence that persons had been misled in this way and for present purposes I will assume that this has occurred.  But to determine whether there has been any contravention of s 52(1) it is necessary to inquire why this misconception has arisen in the minds of others."

and he added, at 229, that where the name in question comprises descriptive words, generally

"... the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be."  The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe."

The passage quoted by Stephen J contains remarks of Lord Simonds in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 at 42. Comments to similar effect were made by Mason J in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 209 where his Honour said:

"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."

See also Barry v Lake Jindabyne Reservation Centre Pty Ltd (1985) 8 FCR 279 per Toohey J at 284-285; Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 8 IPR 69 per Neaves J at 74. It is therefore necessary to examine such evidence carefully to identify clearly what amounts to the confusion deposed to, and to identify the reasons why such confusion arose. It is only by doing so that it can be determined whether such evidence supports, in the case of a name involving descriptive words, a secondary meaning involving goodwill in that name properly protected by the law: Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261.

I do not place much weight on that evidence for that purpose, partly for reasons expressed above and partly because it is the name of the respondent itself, and not the particular get-up or wording of the sign, which is objected to by the applicant.  I have described the nature of the sign in a little detail above.  As it was first set up the principal focus is on 'Medical Centre' and the word 'Hindmarsh' appears above that.  The name of the first respondent was not so prominent as the words 'Medical Centre'.  Thus, the sign which the two witnesses were attracted to might well have provided a focus on 'Hindmarsh Medical Centre' rather than on 'Hindmarsh Family Practice'.  I am not asked to determine that question.  The applicant positively eschewed any complaint as to the presentation of the first respondent's business by reason of the sign itself, as distinct from its name wherever and however presented and including in the White Pages and the Yellow Pages of the telephone directory.  Its concern was to
preserve, within the medical practices in the general locality at least, the use of the word 'Hindmarsh' exclusively so that the first respondent, however it depicts itself in signage, could not use that word in association with 'Family Centre'.  Accordingly, whether the particular presentation through the signage itself could give rise to a cause of action was not one that arose in the action.  The affidavit evidence of Dr Bowler's patients, prompted as it was from the signage, do not persuade me that an entry in the telephone book under the first respondent's name or the general use of the name 'Hindmarsh Family Practice' would itself lead to an apprehension that the first respondent's business was, or was in any way associated with, the applicant's business.  Nor was I asked to determine whether the use of the words 'Medical Centre' on the sign gave rise to any cause of action against the first respondent, or to treat the first respondent as practising, or as holding itself out as practising, under the name 'Hindmarsh Medical Centre'.

For those reasons, whilst I accept the evidence of those two witnesses, I do not think it really assists the applicant in establishing goodwill in the name 'Hindmarsh Medical Clinic' sufficient to warrant the orders sought.

I note that the first respondent has since December 1996 changed that sign by including the word 'Welland' as part of the inner lettering but in letters smaller than the lettering of the words 'Medical Centre' and in April 1997 by increasing
the size of the lettering of the word 'Welland' to prominent size adjacent to the words Medical Centre.  How either of those two witnesses would react now to signage in that form I do not know.

One issue at trial about which there was some dispute was as to the terms of a conversation between Dr Fitzgerald and Dr Shahin.  In about November 1996, the applicant received at its premises an account dated 31 October 1996 directed to 'Hindmarsh Medical Centre' at 500 Port Road, Hindmarsh in respect of the illuminated sign of the respondent.  Dr Fitzgerald took it to the first respondent's premises and confronted Dr Shahin.  It was clearly not an entirely amicable meeting.  There is some disagreement between them as to the details of that conversation and as to its tone.  I do not think either was attempting to mislead me as to that conversation, which was clearly prompted by Dr Fitzgerald and his concern that the first respondent might be passing off its business as that of the applicant.  During the discussion, Dr Fitzgerald complained to Dr Shahin about the respondent using the name 'Hindmarsh Family Practice'.  His evidence is that he asked Dr Shahin to use the name 'Welland Medical Clinic', but that Dr Shahin told him that that name was not available.  Dr Fitzgerald certainly left the conversation in the belief that Dr Shahin had told him the name 'Welland Medical Centre' was not available to him, but Dr Shahin doubts that he said that.  It is not an important issue except to the extent that any deliberate dissimulation by Dr Shahin might lead to a view that, in other ways, he was not fully honest in his evidence and in particular his assertion as to the reasons why he selected the name 'Hindmarsh Family Practice', and his belief that there was no risk of confusion between the two names.  The corollary would be that, in selecting the name, he did intend to take advantage of the applicant's name.

An intention to improperly take advantage of another's name is not a necessary element of a cause of action based upon s52 of the Trade Practices Act 1974: Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, nor for passing off: Singer Manufacturing Co v Loog (1882) 8 App Cas 15. The relevance of such an intention was discussed by Lockhart J in Conagra (above, at 344-346) where his Honour referred to a number of authorities on that question.  As he concluded, such an intention may assist in establishing the requisite misrepresentation, as the Court will not be astute to find that a respondent has failed in such a design.  But even such an intention does not necessarily lead to the success of such a claim:  Ronson Products Ltd v James Ronson Pty Ltd (No. 2) [1957] VR 731. In the light of my findings of fact it is not necessary to further explore that issue.

I had the benefit of hearing both Dr Fitzgerald and Dr Shahin giving evidence.  There was no challenge, even inferentially, to Dr Fitzgerald's credit.  In my view Dr Shahin too was truthful on those important matters and generally.  I accept what Dr Shahin said as to why he selected the name 'Hindmarsh
Family Practice', and that he did not think it would be confused with the applicant's business.  If the applicant is to succeed, proof of its case will not be facilitated by any finding that Dr Shahin chose the name 'Hindmarsh Family Clinic' for any "nefarious design" (to use an expression of Lockhart J in Conagra, above at 345.)  I do not make that finding.  Dr Shahin certainly did advert to other business names possibly available to the first respondent, and Dr Fitzgerald may well have come away with the impression that he had been told that the name 'Welland Medical Centre' was not available.  I think it is likely that Dr Shahin did not positively assert that he was the registered proprietor of that name, but did not want to use it.  The occasion was one where stating that could have been somewhat provocative.  He probably did say that a number of other names had been applied for, and not granted, and was content if - without having positively asserted an untruth - he obfuscated to the extent that Dr Fitzgerald went away from the occasion with the belief that he did.  Even so, in my view, that conduct by Dr Shahin does not in the context of the meeting indicate anything touching upon his creditworthiness more generally.  If he was less than frank and fully open with Dr Fitzgerald on that occasion, it was an understandable response to Dr Fitzgerald's complaint and the manner in which he pursued it.

Following that meeting, there followed a series of letters between the applicant and the first respondent, or their respective legal advisers.  It is unnecessary to refer to that
correspondence in detail.  In the course of it Dr Shahin indicated that "as a gesture of goodwill" the first respondent would insert the word 'Welland' on the face of the signage.  As noted above, he subsequently arranged for that to occur.

The only other evidence of confusion adduced by the applicant was a letter received on about 10 December 1996 at the applicant's premises but addressed to Dr Shahin at 'Hindmarsh Medical Centre, Port Road, Hindmarsh'.

In my view neither that letter, nor the letter which prompted the visit by Dr Fitzgerald to the first respondent's premises, indicate any confusion between the applicant's name and that of the first respondent.  Neither was addressed to the first respondent's name, but each was to the Hindmarsh Medical Centre.  The reasons for that are not explained.  Whether the misdelivery would have occurred had the addressee been Hindmarsh Family Practice is not apparent.  Whilst the absence of evidence of misdelivery of letters addressed to Hindmarsh Family Centre does not prove that there is no confusion between the names, such evidence might support that conclusion in a way which the two letters, addressed the way they were, fail to do.

Of course that observation does not confront the applicant's real complaint, namely that the first respondent's use of the geographical description 'Hindmarsh' as part of its name is sufficient to make out the causes of action.  To succeed in
that claim, it must in effect claim a monopoly in the geographically descriptive word 'Hindmarsh' in respect of businesses of the same or similar nature as its own business and in the same general locality.  It thus claims that, irrespective of whether the descriptive words as to the nature of a medical practice are the same as, or similar to, or dissimilar from, its own, so long as one descriptive word in the name is the geographical word 'Hindmarsh' the name will mislead and deceive members of the public in the way alleged.

The applicant's concern is that, if the respondent continues to conduct the business of a medical practitioner at the location at 500 Port Road, Welland under the name 'Hindmarsh Family Practice', it will suffer loss of patients and diminution of its business.  It accepts that it must be exposed to competition, and its potential consequences, but only so long as it is fair.  The use of the name 'Hindmarsh Family Practice' by the respondent, it asserts, has led and will lead to members of the public being misled that the respondent's business is either the applicant's practice or is in some way related to it so that its patients or its potential patients may be misled into going to the respondent's practice.  In the vernacular, it claims that by use of the name, the respondent will pinch its clients.

The presentation of the first respondent, apart from the sign, is also not in issue.

Its business cards all have the words 'Hindmarsh Family Practice', with the address and the names of the two doctors at the practice each included on one version of those cards.  There is no reference to the words 'Medical Centre'.  The first respondent also arranged on 18 December 1996 promotional publicity by means of advertising and a feature article in the local newspaper.  It was all clearly under the name 'Hindmarsh Family Practice' at 500 Port Road, Hindmarsh, and the work team was depicted in a photograph.  The first respondent has also, since that time, maintained a small advertisement in that newspaper under the name 'Hindmarsh Family Practice'.

The first respondent's business presently consists of two medical practitioners, a physiotherapist, and supporting staff.  It sees about 60-70 patients per week.

The respondents also led evidence from three patients of its business.  None had previously been regular patients of the applicant, although two had earlier used its services.  There is no suggestion from any of those three witnesses that they came to the first respondent's practice due to any confusion with the applicant's practice, or that they did not appreciate that the first respondent's practice was other than a new practice to the area.  The selection of the first respondent's practice was, in each instance, for its convenience geographically and in one case due to its hours of operation, together with some unease about the doctors who those persons
had been consulting prior to that time.

The first respondent plans to operate as a 7 day per week medical centre, with extended hours if there is a demand for them, and with a range of paramedical facilities also available.  Its plans therefore mirror to some degree the existing practice of the applicant.

The law

The elements of the causes of action based upon s52 of the Trade Practices Act 1974, and upon passing off are well known. It is unnecessary to repeat them here. I refer to Parkdale (above), Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177; Hornsby (above); Erven Warnink BV v J Townsend & Sons (Hull) Ltd [1979] AC 731; A G Spalding & Bros v A W Gamage Ld (1915) 32 RPC 273. There is clearly a considerable overlap between the two causes of action, although as Stephen J explained in Hornsby (at 226), the remedy under s52 is directed to preventing deception of the public, in cases like the present, that one trader's business is, or is associated with, the business of another trader whereas the remedy in passing off is founded upon protection of that trader's goodwill itself. Thus, the law of passing off is relevant directly to s52, and cases on one cause of action can be of assistance in relation to the other: see the remarks of Ellicott J in Handley v Snoid [1981] ATPR 40-219, and of Stephen J in Hornsby (above, at 226).

In Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431, Hill J at 440 noted the overlap of the area of operation of the two causes of action, and that the ambit of proceedings based upon s52 of the Trade Practices Act 1974 are not confined to reference to the prior learning on the tort of passing off concerning the protection of proprietary rights of traders. His Honour continued:

"The scope for the operation of s52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of the name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail ...".

In the present case the misrepresentation is said to be that the use of the name 'Hindmarsh Family Practice' carries with it the message that it is, or is associated with, the applicant's medical practice conducted under the name 'Hindmarsh Medical Clinic'.  Thus it is necessary, as was accepted by counsel for the applicant, that the applicant establish that it has acquired the necessary reputation in the name; that is that its name has become distinctive of its medical practice at least in the general broad locality of Hindmarsh.  I have found that that is an area much wider than the suburb of Hindmarsh itself, and extends probably beyond a 2 kilometre radius from the applicant's premises.  In accordance with the guidelines set out by Deane and Fitzgerald JJ in Taco Bell (above, at 202-203), I have set out at least in general terms the evidence upon which I shall assess the relevant section or sections of the public by reference to whom the question of whether conduct is, or is likely to be, misleading falls to be tested, including such evidence as was adduced of actual confusion, and my observations about that particular evidence as to whether it is proven that such confusion arose from the conduct of the first respondent which is complained of, namely the use of the name 'Hindmarsh Family Practice'.

As Lord Fraser observed in Erven Warnink (above, at 754-755), some measure of distinctiveness is essential for a business name or description to be capable of giving rise to a claim for relief in passing off, and the same applies in the case of a claim based upon s52: Hornsby (above, at 226). The terms "descriptive" and "distinctive" are not however mutually exclusive.  In Hornsby (above), the problem confronting the applicant was that its name consisted of three descriptive words prefaced by a word of locality. In respect of such a name, Stephen J at 229 said:

"There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name.  Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public.  In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (36), per Lord Simonds)."

although, as Stephen J recognised, a person may not use even that persons own name if it be deceptively similar to that of a plaintiff with an established reputation:  Fine Cotton Spinners and Doublers' Association Ltd v Harwood Cash & Co Ltd [1907] 2 Ch 184 at 190.

In Equity Access (above, at 445-448), Hill J reviewed a number of decisions touching on that question. I respectfully adopt that review, and the conclusions his Honour reached. Whilst it may be easier as a matter of evidence to prove the necessary element of distinctiveness in the case of a fancy or concocted name compared to one that is merely descriptive, that is a matter of proof rather than a distinction of law. There is, to use his Honour's expression, a continuum with at the extremes purely descriptive names at the one end and completely invented names at the other. He concluded:

"The closer along the continuum one moves towards a merely descriptive name the more a plaintiff will need to show that the name has obtained a secondary meaning, equating it with the products of the plaintiff (if the name admits of this - a purely descriptive name probably will not) and the easier it will be to see a small difference in names as adequate to avoid confusion."

The failure to establish the necessary secondary meaning in the case of a geographical descriptive name, so that no relief was granted, is illustrated by Barry v Lake Jindabyne Reservation Centre Pty Ltd (above), and by Wallace v Baulkham Hills Smash Repairs Pty Ltd (1995) 32 IPR 443, but, at least at an interlocutory stage, a sufficient case was made out
to support an injunction based upon a geographical name in Street v Jedminster Pty Ltd (1988) 11 IPR 520 and in Burswood Management Ltd v Burswood Casino Motel/Hotel Pty Ltd (1985) 7 FCR 186, although in that case the injunction was granted only in relation to the description 'Burswood Casino Motel/Hotel' and not for any hotel or motel business simply using the locality name Burswood (see per Toohey J at 192).  An illustration of a case where use of a personal name was not proved to have given rise to the necessary degree of distinctiveness is provided by George v Bentley (1972) 3 SASR 170.

The decision as to whether the applicant has made out the necessary degree of distinctiveness, or secondary meaning as it is described in some of the cases where the name in issue comprises descriptive words including geographically descriptive words, is to be made upon the whole of the evidence.  It is to be decided objectively.  It is a decision to be made in context and not by selecting some words only and to "ignore others which provided the context which gave meaning to the particular words":  Gibbs CJ in Parkdale (above, at 199). See generally the observations of the Full Court of this Court (Gummow, French & Hill JJ) in Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (above), which concluded on this aspect with the observation:

"Mere expressions of opinion that the use by another trader of the same name is surprising or confusing does not go any way to establishing distinctive or secondary meanings for substantially descriptive words.  In our opinion this aspect of the appeal fails."

Conclusion

I then turn to consider whether, in the light of those authorities, the applicant has established the necessary reputation in the name 'Hindmarsh Medical Clinic' to give it a distinctiveness or secondary meaning among a relevant class of persons, at least in respect of medical practices in the broader Hindmarsh area, sufficient to support its claim for what is in effect a monopoly on the use of the word 'Hindmarsh'.  I must also consider whether it is proved that, among that class of persons, there are persons who will mistakenly infer from the first respondent's use of the name 'Hindmarsh Family Practice' that it is, or is associated with, the applicant's business.

I have set out above the evidence adduced by the applicant in support of those matters and my findings of fact in relation to matters in contest.  It is clear that the applicant and the first respondent are, or will be, in competition for patients and, if Dr Shahin's plans come to fruition, probably more so over time, not simply in respect of the suburb of Hindmarsh but from a somewhat wider geographical area.  I have found that, although the first respondent's business is located in the suburb of Welland, there was in the selection of its name nothing sinister in the sense that it was selected in any way
to take advantage of the applicant's name or its reputation.  That, of course, does not mean that, if such a reputation is made out, it may not be found to do so, or to be likely to do so.

I have considered both those critical questions from the perspective of a number of potentially relevant groups of persons.  There are, firstly, the existing permanent or semi-permanent patients of the applicant.  The evidence does not satisfy me that the applicant's name has achieved such a significance to those persons as to amount to the degree of distinctiveness, or secondary meaning, contended for.  The promotion of its name by the applicant over the last ten or twelve years has not provided a particular focus on the name 'Hindmarsh' to suggest it conveys now to those persons anything more than that the applicant's business is conducted at premises at Hindmarsh.  It has not assumed any greater or different significance.  I have given my reasons above for why the affidavit evidence of the two persons presented by the applicant on that topic do not lead me to a different view.  Indeed, those two witnesses' focus was to a significant extent on the name of Dr Bowler, a member of the applicant.  The applicant's publicity generally, including in the telephone directory, lists the names of the doctors under its name no doubt at least in part for that very reason.  Clearly, most other group practices also adopt that presentation.  There is, in the context of the full names, no material on the evidence which indicates that the use of 'Hindmarsh Family Practice' by
the first respondent is the same as, or is associated with, the applicant's practice.  The only common feature of what are both descriptive names is the geographical locality.  Unless the applicant has made out that its name has the secondary meaning contended for, that cannot lead to the conclusion of misleading conduct or of passing off.  The muted manner of the applicant's promotion of its name and the get-up of its premises do not support any especial reputation or goodwill that it enjoys under that name, even accepting that the name has been in use for some time.  Any confusion which arises between the two businesses will not, in my view, be a consequence of the applicant having established a distinctive or secondary reputation as it contends.  I am not satisfied that any such patients of the applicant who may go to the first respondent's practice will do so because they think or may think that the first respondent's business is, or is associated with, the applicant's practice.  If such patients use the telephone directory and see the two names under discussion, even if the first respondent's telephone number is selected, that would not in my view reflect any more than that the necessary degree of distinctiveness, or secondary meaning, has not been made out.

There are other categories of clients or patients of the applicant to consider.  The after hours patients come apparently partly by referral, and partly without referral.  Those who come by referral presumably do so by some arrangement with their existing doctors.  There is no evidence
from which I find that either those doctors, or the patients they refer in some way, attribute to the applicant's name such a degree of distinctiveness, or secondary meaning, as to support the first matter the applicant must prove.  Nor do I find that, in any event, those doctors or their patients, are or would be, or are likely to be misled in any way into thinking, by reason of the first respondent's name, that the first respondent's practice is that to which the referral relates.  I reach similar conclusions with respect to the non-referral after hours patients:  there is no evidence upon which I am satisfied either that the applicant's name has a distinctive or secondary meaning to them, or that even if that were so they are or are likely then to be misled by the use by the first respondent of its name into thinking that the first respondent's practice is, or is associated with, the applicant's practice.  I have reached the same conclusions with respect to what was identified as the remaining group of potential patients, namely those who have not been to the applicant's practice before or at least not for some considerable time.  I am not satisfied that, to them, the applicant's name has the necessary degree of distinctiveness or secondary meaning required, nor even if it did that the use by the first respondent of its name would be misleading or deceptive, or would amount to the first respondent passing off its practice as, or as associated with, the applicant's practice.  I observe in passing that my conclusions of fact are therefore similar to those reached by Merkel J in Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387,
although of course each case must be separately considered on its own merits.

I have not overlooked the decision of the Full Court of this Court (Jenkinson, Spender and French JJ) in Snyman v Cooper and Others (1990) 97 ALR 653. In that case, the appellant ran a florist shop at Indooroopilly Shoppingtown, a large suburban Brisbane shopping centre. The respondents also ran a florists business from Annerley, a Brisbane suburb a considerable distance from Indooroopilly, but advertised in the Brisbane Yellow Pages telephone directory in a manner which was found to convey the false assertion that their shop was situated in the Indooroopilly Shoppingtown complex. The Court reached a conclusion in favour of the appellant because that false assertion might lead some of the appellant's customers and prospective customers who would patronise that shop as it was, or might be, known as the only florist shop in that complex, to give their business to the respondents. The Court (at 662) was at pains to stress that the appellant was not asserting, and could not assert, any right to the geographical name 'Indooroopilly'.  It was only so long as the appellant's shop remained the only florist shop in that shopping complex that the necessary goodwill premised upon that fact could be made out.  It was not an issue in that case that no other person could operate a florist shop in that complex, or in the Indooroopilly area, which included the name Indooroopilly.  Thus, I do not think that that case is of assistance in resolving the present issues.  I have already found that the
name 'Hindmarsh' had a wider connotation than the strict suburban boundaries to which I was referred in evidence, and encompassed the first respondent's premises.  This case is not, therefore, one where I regard its use in the first respondent's name as per se misleading.  In Street (above) one ground urged in support of the interlocutory injunction which Spender J specifically rejected was that the respondent's premises were just outside the boundary of Caboolture, and for similar reasons (see at 528). As I have found, I do not think the applicant has established that its name has such a degree of distinctiveness, or a secondary meaning, as to entitle it to assert a monopoly in the use of that geographical word as against any medical practice whether operating from the Hindmarsh suburb or the wider Hindmarsh locality.

In my judgment, therefore, this application must fail.  I may apply some words of Stephen J in Hornsby (above at 230), albeit as to words describing in identical terms the nature of the business rather than the locality:

"Any deception which does arise stems not so much from the Hornsby Centre's use of the descriptive words as from the fact that the Sydney Centre initially chose descriptive words as its title and for many years thereafter was the only centre in Sydney which answered the description which those words provide.  In consequence members of the public have come to associate its particular business with that type of activity.  Evidence of confusion in the minds of members of the public is not evidence that the use of the Hornsby Centre's name is itself misleading or deceptive but rather that its intrusion into the field originally occupied exclusively by the Sydney Centre has, naturally enough, caused a degree of confusion in the public mind.  This is not, however, anything at which s 52(1) is directed."

I do not think the applicant has got beyond that point, if indeed it has got that far.  On the evidence, it is no more than the fact that it has been the only medical practice for some years, and until 2 December 1996, which has operated in the general area with the name 'Hindmarsh' as part of its name that could give use to confusion.  Even then, the name of the first respondent is, in my judgment, not one which it has been proved is misleading or deceptive or one which involves the first respondent in passing off its business as, or as associated with, that of the applicant.

Shortly before delivering judgment in this matter, the applicant applied for leave to re-open its case solely to adduce evidence of an application for registration of the business name 'Welland Medical Centre' signed by Dr Shahin and received by the State Business and Corporate Affairs Office (SA) on 8 January 1996.  The application is a pro forma document, with the details of the application partly typed and partly hand printed.  It applies for four business names.  In sequence of listing, they are 'Welland Medical Centre', 'Welland Medical Clinic' (both typed on the form), 'Hindmarsh Medical Center' and 'Beverley Medical Center' (both hand printed on the form).  Dr Shahin has signed it above the hand printed words "Sam to sign".  That document was obtained from the State Business and Corporate Affairs Office by application made after Dr Shahin had given evidence.  The purpose of that application, which was not accompanied by an application for leave to further cross-examine Dr Shahin, was to prove that document as it "goes to the question of credit and intention".

I rejected that application.  It is plain that it was within my discretion to grant it:  Betts v Whittingslowe (No 1) [1944] SASR 163, although it would generally be unwise to do so simply to allow the fortification of evidence by further evidence which might readily have been adduced at trial. See also Home Management Maintenance Pty Ltd v Doyle (1992) 107 FLR 225. The test of whether it will be proper to grant such leave in the circumstances is not so stringent as that which applies to the admission of fresh evidence on an appeal: Smith v New South Wales Bar Association (1992) 176 CLR 256 at 266-276 and Londish v Gulf Pacific Pty Ltd (1993) 45 FCR 128 at 138-140, but see also Jesseron Holdings Pty Ltd v Middle East Trading Consultants Pty Ltd (No 2) (1994) 122 ALR 717 at 719. In "Evidence, Its History and Policies", by Professor Julius Stone and revised by WAN Wells (Butterworths, 1991, at 626-629) the learned authors suggest that, to achieve the obviously necessary objective of avoiding trials that are "interminable and chaotic", such newly discovered evidence should be admitted only if it is "vital" to the case and only if reasonable diligence and skill would not have discovered it in due time.  That stringent test is, I think, somewhat higher than recent cases have applied, and I have not applied it to the present application.

However, in my view, the proposed evidence was of peripheral significance only.  In so far as it was to go to the credit of Dr Shahin, for reasons which appear above, it would not be helpful to the applicant as I have decided the matter adversely to it without Dr Shahin's credibility being critical.  The applicant fails in its claim in part because it has not established the necessary secondary meaning in its name to give rise to the cause of action.  To the extent that it was said to be a piece of evidence which might have cast doubt on Dr Shahin's credibility, and thereby enable me more readily to infer that Dr Shahin chose the name 'Hindmarsh Family Practice' to take unfair advantage of the applicant's name, even accepting the document on its face would not have led to me reaching that conclusion.  The document is not directly inconsistent with Dr Shahin's evidence, as the references to the transcript which counsel for the respondents demonstrated, and it tends in some respect to confirm Dr Shahin's evidence that he was unhappy about using the name 'Welland Medical Centre' and sought the availability of other names.  It would not in fact cause me to alter my assessment of Dr Shahin's evidence.  Even if Dr Shahin did, in some way, think that the first respondent's name would somehow unfairly derive benefit from the applicant's name, for reasons set out above, I would not have concluded that the use of the name 'Hindmarsh Family Practice' would have been misleading or deceptive or have passed off its business as that of, or as associated with, the applicant.  Finally, I accept the submission of counsel for the respondents that the proposed evidence was really only to rebut an alleged denial by Dr Shahin, and would not itself be probative of a matter directly in issue.

The application is dismissed.

I certify that this and the preceding         pages are a true copy of the Reasons for Judgment of the Honourable Justice Mansfield.

Associate:

Dated:

Counsel for the applicant            :    Mr S Walsh QC

Solicitors for the applicant     :    Reilly Basheer
  Downs & Humphries

Counsel for the respondents      :    Mr J Wells QC
  with him
  Mr A Collett

Solicitors for the respondents       :    Johnston Withers

Hearing Dates  :    20, 21, 23 May and
  20 June 1997