se ee pe ae a eee ee tee --- -— ~-— —-- . '2s 4- NOT FOR DISTRIBUTION No. G.131 of 1387 Ber ee THE ANIMAL WELFARE LEAG' Applicant GEORGE ALEZANDER AND CTE S atta Rezpondent SUMMOW J. 5 MAY 1987- REASONS FOR JUPGMENT (EXTEMDODE } St a ae ke These proceedings were commenced ty application filed on 23 April 1987. At the directions hearing on 1 May 1987 I indicated that the Court would be able to give a final hearing in the matter in eight or nine weeks time. Today I have given dicacticns that will have the matter ready for a two day final nearing co commence on l July 1987. Also at the directions hearin on 1 May 1987 'tha eresent2i cn thiz applicaticn for interlesutsry relief i1iffar in substance and form from those that will govern the result of 2 final hearing. They differ in form in that there was on 1 May no cross-ezamination upon affidavits and at the final hearing the affidavit material may be supplemented or 3uperseded. The issues differ in substance because here I am dealing with (a) the question of prima facie case and (5) the question of balance of convenience, not with the ultimate issues of contravention of 3s. 52 and 55 of the Trade Practices: Act and of passing-off. The applicant wag incorporated in New Scuth Nalez in Pp rey w w a re]q i ra =I me ral @o rey tr bat] Q B a o tb x Lay'S re) fa] row zi ey a rp) % Ga rt Pt) an affidav res cw » ia the Presidant cf 'tha arpilicant. Tn ats affidavit, Mr Drummond deposed that the main aims and objectives of the applicant are, tc aid in the relief 37 animals that are suffering or are in distress, so find homes for abandoned and unwanted animals and 30 avoid their unnecessary destruction, toa encourage pet cwners to contrcl the lation ez a3 os leaticn <2F unwantas animals 5 - ny "vf "ts gvammas, ts oppos2 ail fsrmz2 cf cruelty ani neglect aed animals wherever it is fcund,tc pErcsecute persons whe subdect - wpa te - - - Rot invcive animals, 2¢ eutend xnowlecge and understanding esd eh - o- a "~ FA within the communit oi The née|adc3 of aninalz bath wild and Les) * domestic) with an appreciation of their role in the natural order, to educate the public (particularly the young) on the role of animals in society, to disseminate information to make owners aware of their responsibilities in the proper care, control and support of their animals, and to support farmers and wild life authorities in gcod management prcgrammes to ensure proper balance of animals and preserve the ecolcgy. The applicant has a current membership cf just over 2000 persons and it has received, from its member3 and from members of the general public who are ccncerned fcr the welfare of animals, over 33 millicn in legacies and Leques<3. The legacies and bequests come 'from many people ncot readily 'now to the applicant and at present mors ncn-members leave legacies than members. A number of bequests to the applicant do not give its full corporate name. The applicant's principal activities include the conduct of ar animal care centre at West Hoxton. is handles unwanted aninals and holds them until they can be placed in suitable homes. At present the centre has cat w , dogs, horses, zheep, gcats3 ducks and ge2sse. Not unexpectedly, the main ow activity at che centre concerns cats ard dogs ani through th 3 dvertisements many people visit the animal cars centre and o:tain an animal if the centre has what chey are looking for. The applicant also ctenducts what is callei an "Sutreach visitation" programme trained owner whereby a suitable animal and visit by arrangement nursing homes so as td assist elderly persons otherwise denied access to pets. The total staff number The principal advertising undertaken by the applicant is televising of 30 and 60 second community service free of charge by three applicant also publishes a Zouth Nalas Animal Nelfare to the material appearing in th journal hag a circulation of abcut 3500, mainly ts to libraries, Nalaa. The applicant alga South Wales advertising pages Australian Law Journal. The first, active in the affairs of she Animal origina of the body are found called the "Council for Resgpensible minutes of anméxure ta the affidavit of Weilara FPaderation of Australia, resecndernt. The ninutes ateering committee tha meeting of 17 October include of the applicant {3 about 15. che announcements Sydney television channels. The quarterly journal known as the New League News and I shall refer later at izsue for March 1997. Tuis including mest school libraries in New Ssuth advertises frequently in th New of the monthly publicaticn, The second and third respondents have heen a presently unincorporated bedy which Welfara Fedaratisn of Australia. The Animal Management". The 1986 are in avideancea a2 an the President of the Animal 4e George Alezandar, the first tne fcllawing: "GA fECmeaning Mr Alexander] introduced Dr H. Frederick who advised the meeting of his experiences in the formation of a similar group in the US. This group, The Farm Animal Welfare Committee was forned in Washingtcn Dc approximately five years ago and was established initially to combat the attack by animal rightists on the veal raising industry. A list of suggested names was circulated and committee members were individually asked for opinions. There was consensus that the name should te 3imple and include the words "Australia", "Federation", "Welfare", and "Animal". "Animal Welfare Federation of Australia" was accaptei by all present. It was thought an advantage to 2zpress the philoscphy of the federation in the form of guiding principal objectives and activities. The following will be presented '5 voting at the general meeting." What then follows in the minutes includes a statement of objectives and activities. Amongst activities are "development of a network of trained spokespeople to present the views of the Federation and redres3 erroneous extravagant and misleading statements about the keeping of animals; provide expert advice in appropriate cases; presenctaticn to committees of inquiry and to seek repre3zentatisn on animal welfare statutory bcdies; solicit and monitor community attitudes to animal welfare; advise member3 cn measures tr counter the activist wing of the animal rights movement". Shortly after this mesting - that is t3 say on 21 October 1986 - an item appeared in the "Financial Review". The item was headed "Animal Rights Mcvement Check" and stated that a new crganisation had been formed to keep the animal rights movement in check. It said that the organization had been convened by CSIRO chief research scientist, Dr George Alezander, and that the organization aimed "to see all animal users get a fair go". The article reported that Dr Alexander had said his concern about the animal rights movement stemmed from personal attacks on scientists who were licensed to conduct experiments on animals. The item also reported that it was expected that groups such as the National Farmers ray Federation,. CSIRO Officers Aassccitation, Agricultural Veterinary Chemicals Asoctation and Science Taacherz sf Australia would be among the groups that would beccme members. Mr Drummond wrote to the Corporate Affairs Ceommigzgicn in Sydney on 24 November 1986. Correspondence followed ending on ll March 1987. Included in the correspondence i3 a letter dated 14 January 1987 from the Corperate Affair3s Commission to Me Drummond which states that: "The Commission has received an application 'to reserve the name "Animal Welfare Feceration sf Australia" a3 a proposed as3cciatic t The referenca to the term "association" ig to the New Ssuth Nales Associations Incorporation Act, 1984. The letter goes on to state that this name has been made available for registration and that the Comnfasion is of 'the view that tha mame 13 not likely ts be confused with or mistaken for Mr Drummend's organization, notwithstanding tha comments nade D7 him in previous correspondence. In the last 'letter in the a ee me ae re ee ee en ne ee ee — -— —. correspondence, that of 11 March 1987, the Corporate Affairs Commission informed Mr Drummond that there were no grounds on which the Commission could refuse to register the name "Animal Welfare Federation of Australia". Concurrently with the approaches to the Corporate Affairs Commission, Mr Drummond approached the Trade Practices Commission. By letter to him dated 24 February 1987 an officer of the Trade Practices Commiasion indicated that that body would not take any action as regards the Animal Welfare Federation of Australia. In addition, Mr Drummond commenced correspondence on § February 1987 with officers of the new body. On 24 February 1987 the respondents' solicitors wrote tc him. He received this letter on 4 March 1987. In this letter the rspondents' solicitors said that an application had been made to the New South Wales Corporate Affairs Commission for reservation of the name Animal Welfare Federation of Australia Incorporated and that the intention was to register it as an as3oczatisn under the Associations Incorporation Act 1984 (MEW). The letter went on to say that the unincorporated associaticn, as it then was, was firmly of the view that the aims and objects £ Mr Drummond's League would not in any way ke confusing to the gublic or to the media. The letter continued: The AWFA (Cmeaning the proposed Federation intends to do nothing more than provide an information source to the media and interested individuals and organizations. It also intends to apply for registration as a charity but will not be trading or having any relationship with consumers. The members of the AWFA are members of substance and reputable standing in the community and will be most concerned to ensure that there 13 no confusion between your league and the subject federation and will endeaveur to ensure that there are no activities conducted by the AWFA which will in any way mislead the public. The letter concluded by stating that the solicitors were happy to provide Mr Drummond with a copy of the body's constitution ag submitted for registration and they anclosed with th letter a copy of the application for incorporaticn of th iy yar tay | ad (s). t bp <3 @ Federation. The necessary formalities for inc a | rs) = Pod (tT ne19e4 a n rea not yet been completed but incorporation under appears to be imminent. In the issue of the applicant's magazine for March 1987, a full page statement appeared under the heading "ANIMAL WELFARE FEDERATION OF AUSTRALIA BEWARE THIS NAME. The zltatement included the following: This is not a charity and in ne way is itr to The Animal Welfara League. In the pas months a group of about 100 erganizations symed a 'Council For Responsible Animal Management' and then changed its name to She above. The grcuss, some of which to give you a cross-3ecticn aca listed below, have a working relationship with animals or dependence on animals. These roups include farmers and gyraziers, clentists in medicine, veterinary and aninal husbandry research, cuztodians of captive animals, ecucaticnaifats in schools and universities, groups concerned with recreation and a en te et ee et 9. entertainment and industrial groups that rely on activities of those other groups. Upon hearing of this proposed name your League petitioned the Corporate Affairs Commission to seriously examine any approach for the registration of the above name and not to approve it. We consider the name to be a misrepresentation of the aims and objectives of the group with welfare as is generally understood not being substantiated. Unfortunately the Corporate Affairs Commission is not designed to determine the rights of claimants to competing > names or interests and registration does not confer any proprietary rights. The newsletter from this organization is said to be an appropriate forum for, amongst other things, to counter the activist wing of the animal rights movement. Our 'hands on' welfare of unwanted animals is entirely different but yet we have names with similar meaning to the general public. As we are enjoined to beware cf false prophets 30 we should also beware of names cf organizations giving the general public a name which construes a different activity than what appears to be actually intended or generally accepted as interpretation of welfare. A news sheet distributed under the title "Animal Welfare Federation of Australia" and bearing the date April 1987 stated that Elders Pastoral had agre2d to become the major sponsor for the Federation. It also jave details of a "high profile launch" for 9 May 1987 at tne AJC Centre at Randwick in Sydney. At the recent Royal Agricultural 'Sceciety Easter Show in Sydney, Elder3 Pastcral had a stand, along with the applicant. At the Elders Pastoral 2ztand copies were distributed of this news sheet. In adeition abcut 1500 organizations and individuals have received a brochure istributed early in April. This refers to the official "launch" and "public fcrum" to be conducted on 3 May 1987. a tw te en ee. --+ - a a ns ' 10. The first respondent has deposed in his affidavit that the expected cost of this activity is $11,975. It ts agreed that this includes the cost of provision of food and drink. The Federation, according to the first respondent, has had considerable difficulty in arranging for the speakers listed in the announcement of the "launch" and it i3 said that if the "launch" is delayed the Federation would have great difficulty in re-organising this activity and would not he able to do so for many months. In addition, it is said that the costs which have already been committed in relation ¢5 this activity would be thrown away. The applicant seeks interlocutory relief in terms of 3ub- paragraphs (a) and (b) of paragraph 1 of the Application. These read as follows: 1. An order, including an interlocutory order, that the members of the animal Welfare Federation ef Australia ('the Federat:on") be rstrained from (a) in trade or commerce engaging in any of the activities set cut in schedule A under the name "Animal Neliare Federation of Australia" or any name centaining the words "Animal Welfare" (1) among the States, within a Territory, between a State and a Territory or between two Territcrias, oir (il) to She exten: to which any euch activity involves the use 2f pestal, telegraphic sc telephonic servicez or takes place in a radio cr celevizion broadcaat. ll. (b) in trade or commerce engaging in conduct that is liable to mislead the public into believing that any journal, newspaper, periodical or other document published or distributed by the Federation i3 published or distribuited by or with permission of the applicant. Schedule A sets out what appears to be a statement of the objectives of the Federation. It will be apparent that paragraph 1(a)(1) is based on 3.52 of the Trade Practices Act read with $.6(2)(a) thereof, and that paragraph 1(a)(1ii) of the Application is based on 3. 52 of the Trade Practices Act read with 3.6(3) thereof. Counsel indicated that paragraph l(b) ts based on 3.55 of the Trade Practices Act. Final relief is also sought in the accrued jurisdiction in respect of pasing-off, but no interlocutory relief i3 claimed on that footing. There was debate before me az tc whether the applicant could bring the present conduct of the respondents, and apprehended conduct of the respondents and the proposed corporation within the expressicn in 3.52 and in 3.55, "in trade or commerce". The point is that the Parliament may, by using the preposition "in", have placed a somewhat sharper focus upon anactivity said tc be cf 2 trading or commercial character than if Parliament had used a phrase such az "in relation to" (Fountain v. Alexander (1922) 150 CLR 612, Foord v. Whiddett (1985) 60 ALR 269 at 272) ora phrase such as "with respect to" (Victoria v. The Commonwealth (1971) 122 CLR 252 at 299-400). There was debate before me also az to whether the materials identified in paragraph 1(b) of the Application are "goods" within the meaning of s.55 of the Trade Practices Act. It may also be noted that 3.55 is said to be based on the provisions of the Paris Convention for the Protection of Industrial Property. Iwas referred in the course of s3ubmissions upon these matters to Glorte v. WA ¢ a Puls ¢ ty Limited (1981) 55 FLR 310. Regard may also be had to Hughes v. The West Australian Cricket Associaticn (1986) 49 ALR 660. The yespondents, whilst conceding that ordinary worcs may acquire secondary meaning and be the occasion for deceptive conduct within the scope of s.52 of the Trade Practices Act, pointed to the proposition that, where organizations kcar titles comprising ordinary words, small differences may be decisive in negativing contravention of 3.52 (Hognsby Building information Centre v. 3 ew nnformati Centre (1978) 140 CLR 216 at 229). Ihave refe2rred elaewhere tc (Bice Grow 42-0 tive imited ¥. Hswlins Succtzz=e Australia Pt mited, 23 December 19°95, unreported) co the nature of interlocutory injunctive relief under 3.980 of tha Trade Practices Act for contraventions of Part Y of that Act. Ido not now repeat what is there said. ZT should cniy acd that the High Court has since confirmed that on an application such as this it is within the Court'3 discretion to refrain 13. from attempting to resolve, at this stage, questions of law that arise (Cohen v. Peko Wallsend Limited (1986) 61 ALJR 57). I so refrain in this case at this stage. However, in my view, the applicant has made out its case that there are serious questions to be tried in respect of contraventions of ss. 52 and 55. On their part, a3 to the balance of convenience, the respondents stressed (a) the disruption to their activities that would follow the granting of the interlocutory relief sought (5) the difficulty in quantifying this harm for the purposes of enforcing any undertaking as to damages proferred by the applicant, and (c) the measure of delay by the applicant in instituting these proceedings in this Court. The applicant pointed to its recent receipt of the April newsletter, but it has been clear at least since February that a new body with the new name was soon to be launched and I accept, on the question of delay, the respondents' description of what happened ag involving 'he applicant seeking to avoid the coming to pass of what it now asks the Court to enjoin, by first pursuing representaticns to the Corporate Affairs Commission and to the Trade POractices Commission and by drawing attention to the situaticn by the lengthy notice in the March 19387 issue of the applicant's journal, (to which I have referred:. 14. It was of course perfectly open to the applicant to approach the matter in this way, but it did so at the risk, now realised, of meeting with a claim of delay when it did come to this Court for interlocutory relief. Counsel for the applicant submitted that an earlier approach to the Court would have been premature. He referred to Aerospatiate Societie Nationale Industrielle v. yospatiale Helicopters Limited (1986) 65 ALR 477. However, on my reading of that decision, such result would by no meanz necessarily have followed from that decision, if applied to the circumstances of this case. In this situation the only interlocutory relief I would consider az possibly appropriate would be in the terms of paragraph 1(b) of the Application, but with the rider that the respondents may engage in the activities in questicn if they sufficiently distinguish their organization from that of the applicant. I appreciate that this use of a qualification or rider will not always be a appropriate where what is involved 12 a restraint upon all use of a trading style by a particular business and a qualification ts that creastraint (Bridge Stockbrokers v. Bridges (1984) 4 FLR 460 at 472: BR ied 4, 2 t ge wT. urswosd Limited C1985] ATPR 46,703 at 46,710; : Yrerzeaz Corporation v. Chase Corporation Linited C1986] ATPR 48,142 at 48,156 - 48,157). But a restriction of this wa ind upen 23 particular class cf activity cculd in 'the fresent case 15. possibly have been appropriate. I need consider no further the possibility of this form of relief. This is because th applicant in address disclaimed any application for it. In aay event, the early final hearing which the Court has been able to give the parties should bring all matters in dispute to a prompt resolution. Accordingly, the application for interlocutory relief is refused. I would be minded to reserve the question of costs for the hearing if that is appropriate. The application for interlocutory relief i3 refused and costs are reserved. I certify that this and the fourteen (14) preceding pages are a true copy of the Reasons for Judgment of his Honour Mr Justice Gummow. Associate: Mask Janke Date: /¢ May, 487 Counsel and Solicitors for Me D.K. Catterns Applicant: instructed by Mr Peter M. Wayne and and Associates Counsel and Solicitors for Mr T.M. Jucovic Respondents: instructed by Messrs Bcdors. Date of Hearing: 5 May 1987 Date of Judgment: 5S May 1937