Case: Australian Society of Accountants v Federation of Australian Accountants Inc (1987) 9 IPR 282; [1987] FCA 298
Outcome: discussed
In Australian Society of Accountants v Federation of Australian Accountants Inc (1987) 9 IPR 282, a body calling itself the "Federation of Australian Accountants" had published advertisements in the Australian Financial Review newspaper stating: "(FAA Coat of Arms) 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 C.P.A. Any accountant who wishes to do so with our federation is encouraged to inquire. Any accountant that becomes a C.P.A. with our federation will be allowed to use our logos for advertising purposes. Federation of Australian Accountants Inc Box 87, GPO Adelaide 5001." Having regard to the issues raised in the present case, it is worth noting that the decision does not make clear whether the respondent Federation intended its members to be referred to as Certified Practising Accountants or Certified Public Accountants. 20 CPA Australia, which at that time was the Australian Society of Accountants, sought injunctive relief. In granting that relief, Woodward J stated (at 285 286): "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 $3 million -- to establish the status of its qualification of Certified Practising Accountant or CPA. I am satisfied that, even in that comparatively short space of time, it has built up a substantial reputation in the accountancy profession and in the general community for that qualification. The expression "Certified Practising Accountant" was apparently unknown in Australia before the applicant began its campaign, and there is no evidence to suggest that it is used in any other English-speaking country. It seems that the expression "Certified Public Accountant" has currency in the United States, but there is no evidence before me to indicate how widespread its usage is or just what status it conveys. The applicant is a large professional organisation of accountants, having some 53,000 members. Its antecedent bodies date back to 1887. It charges its members an annual subscription of $214, spends some $17 million each year on its professional objects, and employs 160 people. It is, in short, a very large and reputable professional body, which recruits some 2500 new members each year -- over 70 percent of those who graduate in accountancy from tertiary institutions. Along with the Institute of Chartered Accountants, it has provided the only regulation of the profession in most states of Australia over a number of years." 21 Having made those findings, Woodward J further accepted (at 286) that: "... the opening paragraph of the advertisement is likely to mislead students, and other persons wishing to obtain accountancy qualifications, into believing they can obtain the applicant's CPA qualification, or its equivalent, from the respondent federation. Users of accountancy services may also be misled into thinking that the federation is in some way connected with the applicant, or that any organisation can award such a qualification, thus devaluing it in the eyes of such potential clients." 23 Woodward J granted the injunctions sought, including orders that the respondents be restrained not only from publishing the advertisement in question, but also: "from representing by any other means that the firstnamed respondent is entitled to confer CPA (Certified Practising Accountant) status on members of the firstnamed respondent;" (For the relevant orders, see the unreported version: Australian Society of Accountants v Federation of Australian Accountants Inc [1987] FCA 298.) 31 In Australian Society of Accountants v Federation of Australian Accountants Inc Woodward J reached precisely the same conclusion regarding the words "Certified Practising Accountant". His Honour's decision was upheld by a Full Court. Of course, that decision turned on a question of fact in a case involving only one of the two parties before me. However, it is fair to say that his Honour reached that view on the basis of only three years of promotion of the designation "Certified Practising Accountant". The evidence before me is much stronger. The term has now been used for more than twenty-three years, and as previously indicated has found its way into both State and Commonwealth legislation. 32 For these reasons, Mr Dunn's argument that the word "certified" means nothing more than "qualified", and that as he has a degree in accounting, and practises as an accountant, he is entitled with impunity to describe himself as a "Certified Practising Accountant", must fail. The term has a distinct secondary meaning, and as a consequence Mr Dunn's use of it would be likely to mislead or deceive. 33 Mr Dunn's argument fails at other points as well. Though he has a degree, one would not normally describe the University that granted it to him as having "certified" him as a practising accountant. The reason is plain. Many graduates in accounting do not go on to practise in that field.