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[1927] HCA 34
High Court of Australia
1927-08-30
Starke JJ
Original judgment source is linked above.
For the reasons above mentioned, and for the reasons set out in the judgment of my brother Isaacs (with which judgment I agree), I am of opinion that the appeal should be allowed.
The plaintiff brought an action in the Supreme Court of New South Wales in its equitable jurisdiction against the defendants for passing off goods not of the plaintiff's manufacture as and for goods of the plaintiff's manufacture. The statement of claim alleged also that the defendants had infringed a registered trade mark of the plaintiff's, but this allegation was abandoned before the learned trial Judge and in this Court; so we need not further consider it.
"Nobody has any right to represent his goods as the goods of somebody else" ([]; []). The plaintiff has, for some four or five years, made a nougat sweet slightly flavoured with mint. It pushed its trade in this sweet in various ways and thus built up a considerable business. In 1922 it registered a trade mark consisting of an oval device with the word "Minties" beneath it, in respect of substances used as food or as ingredients in food. It used this mark on its labels, tins, and in its advertisements, but the word "Minties" was always the most prominent feature on the tins and in the advertisements, and under this name the plaintiff's sweet was sold. The word "Minties" cannot be found in any English dictionary, but the defendants insist that it is derived or formed from the noun mint or the adjective minty, and indicates substances of a minty composition or flavour especially in the case of sweets. Other nougat sweets flavoured with mint, the goods of traders other than the plaintiff, were undoubtedly on the market during the whole or part of the time that the plaintiff was carrying on its trade as "Minties." These other sweets were known under a variety of names such as "Mintos," "Mintets," "Pasca Mints," "Max Mints," "Snowie They're Minty," and so forth. It was, therefore, argued that the word "Minties" was descriptive of the character or quality of the article sold, but the learned Judge who heard the evidence found that the word "Minties" meant sweets made by the plaintiff as distinguished from sweets made or sold by other manufacturers; in other words, that it did not mean sweets of a particular flavour or character, but sweets of a particular manufacturer. In our opinion, this conclusion was clearly right. It is supported by the evidence of rival manufacturers to the plaintiff, by the evidence of retail sellers and even by evidence of the employees of the defendants themselves who deposed that they had informed customers that they did not stock "Minties," which they knew were and meant the goods of the plaintiff, but "Mentes," "the same thing," "our own goods."
The learned Judge also found that the defendants so described their sweets as to be likely to mislead purchasers, and to lead them to buy the defendants' sweets as and for the plaintiff's sweets. This finding is clearly warranted by the evidence. The defendants have carried on a business for some time as the Puritan Chocolate Company. They sold a nougat sweet flavoured with mint under the name Puritan "Mint Chews," but since 1925 they have substituted "Mentes" for the words "Mint Chews." At the time of this substitution, the defendants knew that the plaintiff had built up a considerable trade in its sweets under the name "Minties." The defendants suggest that they substituted the word "Mentes" for the words "Mint Chews" because it is the English equivalent of the plural of a Greek word meaning peppermint drops. The learned primary Judge had no shadow of a doubt, nor have we, that the word "Mentes" was selected because of its similarity to the word "Minties." Moreover, in this case, we have the affirmative evidence of actual passing off by the defendants' employees of the defendants' sweet "Mentes" for the plaintiff's sweet "Minties." "It is quite true that the word fraud is not to be found in the statement of claim. But the whole gist of the action was that the defendants were endeavouring to palm off their goods as the goods of the plaintiffs by selling them under a designation which would ... deceive customers. ... That is, as it seems to me, a charge of dishonesty, and I must say I think the charge was established" (Reddaway v. Banham[94]). The defendants, however, insist that the plaintiff has been guilty of such conduct as disentitles it to an injunction (Leather Cloth Co. v. American Leather Cloth Co.[95]; Ford v. Foster[96]). The plaintiff, it is said, has falsely represented that the word "Minties," and it alone, is its registered trade mark. Some doubt has been expressed whether a defendant who has been guilty of passing off his goods as the goods of another can escape "scotfree" simply on the ground that the conduct of that other "was not such as it should be" (see Jamieson & Co. v. Jamieson[97]; Wolff & Son v. Nopitsch[98]). Such conduct would not, it seems, afford any defence to an action at common law for deceit (cf. Ford v. Foster). But in the view we take of the case we need not consider this matter further. Lord Westbury in the Leather Cloth Co.'s Case[99] says it is essential that the plaintiff should not in his trade mark or in the business connected with it be himself guilty of any false or misleading representation. According to Lord Kingsdown in the same case in the House of Lords[100] a trader may be guilty of such misrepresentations with respect to his goods as to amount to a fraud upon the public, and to disentitle him on that ground as against a rival trader to the relief in a Court of equity which otherwise he might claim. In Ford v. Foster it was said that the misrepresentation must be in the trade mark itself, and not in some collateral representation, though that does not seem quite consistent with the generality of the principle enunciated in the Leather Cloth Co.'s Case[101] (Ashburner's Principles of Equity). But in the case of In re Registered Trade Marks of Bass, Ratcliffe & Gretton Ltd. [No. 2][102] Romer L.J. said that it must be shown that the misrepresentation is reasonably calculated to injure someone; to lead him to do or abstain from doing some act the doing or abstaining from doing which might possibly injure him, or, to put it in other words, that there is a material misrepresentation (Leather Cloth Co.'s Case[103]). Vaughan Williams and Matthews L.JJ. in Bass's Case thought the question one of fact and that the less the Court said about it the better. (See also Cochrane v. Macnish & Son[104]; Mrs. Pomeroy Ltd. v. Scalé[105].) Now, the trade of the plaintiff's was, as the primary Judge said, an honest clean trade, and, in our opinion, there was no misrepresentation whatever on the tins or in what has been called the literature in relation to the business of the plaintiff, and certainly nothing calculated to mislead or to injure anyone. The plaintiff placed its trade mark on all those methods of advertising its sweets. Generally speaking, it used its oval device with the word Minties beneath it in large letters and within inverted commas; and under the word "Minties" sometimes in the middle of the word and at others at the end of the word, it placed the letters Reg, meaning registered. On wrappers the oval device was placed around their border and the word "Minties" across the centre. The plaintiff was entitled to represent that its trade mark was registered and to put that representation somewhere and somehow upon its advertising matter. If the plaintiff had placed the letters Reg at the top, bottom or side of its labels and show cards, then no doubt the Court would have been told that the plaintiff claimed the totality of the label or show card as its trade mark and was guilty of misrepresentation. The natural and appropriate place, we think, for the letters Reg is under the word "Minties" placed beneath the oval device. That is the course that the plaintiff adopted, and it does not misrepresent any fact. The suggestion that the plaintiff should not have printed "Minties" in large letters or placed it in inverted commas is unworthy of serious consideration. So, too, is the suggestion that it was a misrepresentation to place upon a label the oval device, and underneath it the following: - "Make no mistake. - Minties. - Reg". That is an appeal to buy and use the sweet known as "Minties"; the emphasis is certainly not upon the inconspicuous letters Reg.
We were referred to a circular placed inside the tin which contains the following statement: "The word Minties is registered and owned solely by James Stedman-Henderson Sweets Ltd. the manufacturers and although Minties is a household word through service and quality imitations cannot be called and sold as Minties." Cases such as Ford v. Foster[106] and In re Lyle and Kinahan Ltd.'s Application[107] suggest that a representation so made is not necessarily fatal to the claim for an injunction; the question, as already indicated, is one of degree, and it is not unimportant that the statement is not in the trade mark itself. But, in any case, the statement that the word "Minties" is registered is equivocal: it does not assert that the word "Minties" and it alone, is registered (Cochrane v. Macnish & Son[108]; Bass's Case[109]). Again, the statement that the word is owned solely by the plaintiff has been substantially established in this action; it has been found that the word means sweets of the plaintiff as distinguished from sweets made by other manufacturers. The form in which the injunction is granted was not challenged at the bar or in the notice of appeal, and under these circumstances, we do not feel called upon to say whether the form adopted in Reddaway v. Banham[110] and Johnston v. Orr Ewing[111], or the more absolute form of Wotherspoon v. Currie[112], Montgomery v. Thompson[113] and F. Pinet et Cie. v. Maison Louis Pinet Ltd.[114], should or should not have been followed.
[4] (1896) 13 R.P.C. 235, at p. 243.
[8] (1915) 32 R.P.C. 273; 84 L.J. Ch. 449.
[11] (1909) 26 R.P.C. 693, at p. 704.
[12] (1909) 26 R.P.C., at p. 708.
[13] (1912) 29 R.P.C. 440, at pp. 451-452.
[15] (1903) 1 Ch. 211, at p. 224.
[16] (1865) 11 H.L.C., at p. 542.
[17] (1906) 23 R.P.C. 388, at p. 394.
[18] [1837] EngR 861; (1837) 8 Sim. 477, at p. 480.
[20] (1911) 28 R.P.C., at p. 264 (5 lines from end).
[21] (1911) 28 R.P.C. 597, at p. 605.
[22] (1911) 28 R.P.C., at p. 609.
[23] (1912) 29 R.P.C. 465, at p. 475.
[25] (1911) 28 R.P.C., at p. 607.
[26] (1911) 28 R.P.C., at p. 609.
[28] (1912) 29 R.P.C. 465, at p. 475.
[30] (1872) L.R. 7 Ch., at p. 625.
[31] (1872) L.R. 7 Ch., at bottom of p. 625 and top of p. 626.
[32] (1872) L.R. 7 Ch., at pp. 630, 632.
[33] [1837] EngR 861; (1837) 8 Sim. 477.
[34] (1898) 15 R.P.C., at p. 191.
[35] (1872) L.R. 7 Ch., at p. 630.
[39] [1837] EngR 861; (1837) 8 Sim. 477.
[42] (1866) 36 L.J. Ch., at p. 230.
[43] (1866) 36 L.J. Ch., at p. 232.
[44] (1914) A.C. 932, with especial reference to p. 952.
[46] (1906) 24 R.P.C., at p. 192.
[47] [1903] USSC 23; (1903) 187 U.S. 516, at p. 528.
[48] (1891) 2 Ch. 186, at p. 233; 8 R.P.C. 137, at p. 164.
[51] (1887) 4 R.P.C. 508, at p. 518.
[54] (1899) 16 R.P.C., at p. 138.
[57] (1899) 16 R.P.C., at p. 138.
[58] [1837] EngR 861; (1837) 8 Sim. 477.
[65] (1865) 11 H.L.C., at p. 538.
[69] (1906) 23 R.P.C., at p. 398.
[71] (1915) 32 R.P.C., at p. 283.
[72] (1880) 13 Ch. D. 434; (1882) 7 App. Cas. 219.
[76] (1866) 36 L.J. Ch., at p. 232.
[77] (1865) 35 L.J. Ch. 53, at p. 64.
[80] (1907) 24 R.P.C., at p. 260.
[95] (1865) 11 H.L.C., at p. 542.
[97] (1898) 15 R.P.C., at p. 191.
[99] (1863) 4 DeG. J. & S. 137, at p. 142.
[100] (1865) 11 H.L.C., at p. 542.
[101] [1865] EngR 199; (1865) 11 H.L.C. 523.
[103] (1863) 4 DeG. J. & S., at p. 143.
[105] (1906) 24 R.P.C., at p. 192.
Angelides
James Stedman Hendersons Sweets Ltd [1927] HCA 34;
(1927) 40 CLR 43