Passing off

This was a dispute between two groups of general practitioners one of which was established in the Adelaide suburb of Hindmarsh and the other in the neighbouring district of Welland about 1.1 kilometres away. Those established in Hindmarsh proper sued the Welland practitioners for passing off and breaches of the federal Trade Practices Act 1974 and state Fair Trading Act 1987. The applicants had started to practise in Hindmarsh under their present name in 1985. By offering round the clock service and opening new clinics they built up their practice over the years to 6,000 "permanent" and many more "semi-permanent" and "casual" patients drawn from a radius of 4 kilometres of their surgery. Their only advertising were entries in the white and yellow pages of the local telephone directory, signs outside their surgery and the occasional flyer and newspaper article. Otherwise they relied on word of mouth to attract patients. The first respondent was a private limited company through which the second respondent practised as a family doctor. He chose the name for the company after making some enquiries as to the availability of various names including the geographical appellation Welland. He preferred Hindmarsh to Welland because he considered Hindmarsh to be better known. The only evidence of misrepresentation was the testimony of two patients who believed that there was a connection between the two group practices upon seeing the respondent's sign and a misdirected letter.

After reminding himself of the elements of an action for passing-off, Mansfield J observed that in a case where a trader chooses a descriptive name consisting of the locality and description of his business:

"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 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' (per Gibbs CJ in Parkdale Custom Built Furniture Pty. Ltd. v Puxu Ltd. (1982) 149 CLR 191)."