Angoves Pty Ltd v. Johnson & Ors [1982] FCA 119

SOUTH AUSTRALIA DISTRICT REGISTRY ) No . G.39 of 1981

ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA

ORDER JUDGES MAKING ORDER: Franki, Deane and Fitzgerald JJ.

SOUTH AUSTRALIA DISTRICT REGISTRY) NO. G.39 OF 1981

AND: ELTON JOHNSON and CARLENE VERA JOHNSON and ECLAR INVESTMENTS PTY. LIMITED

Respondents CORAM: Franki, Deane and Fitzgerald JJ.

The appellant, Angove's Proprietary Limited, sought to restrain the respondents from infringing certain registered trade marks and from passing off goods in which they deal as the appellant's goods and passing off their business as the

appellant's business. The learned trial judge dismissed the

The appellant is the registered proprietor of the trade mark "St. Agnes" in Part A of the Register in respect of "brandy and wine" (No.A64,160), in Part D of the Register in respect of

"beer, ale, and porter, mineral and aerated waters and other non-

alcoholic drinks, syrups and other preparations for making beverages" (No. D165,255) and in Part D in respect of "wines, spirits and liqueurs" (No. D165,256). The first registration was effective from 1934 and the registrations in Part D were entered

in 1963. The Register is that set up under s.14 of the Trade

The appellant produces brandy and some other products. Its brandy is, and for many years has been, well known under the trade mark "St. Agnes" and it was admitted in the pleadings that that mark has become well known and distinctive of the appellant's brandy, but not that the mark was distinctive of any

store, which was known as "Bokara Liquor Store", sometime in 1975

and on 30 September 1976 they made an application to register a

change of name of that business to "St. Agnes Liquor Store". The application was granted in October 1976. After June 1978 the business was carried on by the third named respondent. The two

first named respondents are the directors of the third named respondent and carried on the business in partnership until 30

In 1959 a new suburb was created with the name "St. Agnes" and a modern shopping centre was built within that suburb. The respondents' liquor store is in that shopping centre. The

shopping centre 1s known as the "St. Agnes Shopping Centre".

At all relevant times the appellant's main place of business was at Renmark, in South Australia, but it also carried on business about half a mile away from the respondents' liquor store in an area called Tea Tree Gully. The founder of the appellant's business, a Dr. Angove, had commenced business at Tea Tree Gully in the 1890's. The name "St. Agnes" was prominently displayed on an old tower on the appellant's premises at Tea Tree

At the time of the hearing this area was used by the appellant partly as an outlet for, and for warehousing, goods distributed wholesale by the company, partly for a public relations area for groups of visitors, and partly as a tasting area and retail shop for the sale of bottled alcoholic beverages. The area is of about 34 acres of which 18 acres are vineyards and 10 acres are scrub. Certain buildings belonging to the appellant

Originally the appellant marketed various products under the mark "St. Agnes", including wines, but since 1950 it had not used St. Agnes in relation to any product other than brandy, except for some "nibble pieces", for example, sultanas and pretzels. A wholly owned subsidiary of the appellant, St. Agnes Wines Pty. Ltd., was incorporated as a limited company in 1931 and it became a proprietary company in 1963. However, this company has not traded for many years and its only activity 1s

that of employing certain of the appellant's staff at the Tea

Tree Gully premises. This subsidiary maintained an entry in the telephone directory under the name "St. Agnes Wines Pty. Ltd." and that name appeared on certain invoices and, to a very limited extent, elsewhere. After this action had been commenced some

advertising took place of St. Agnes wines associated with the

I pass first to consider the question of infringement of

In so far as this judgment depends on infringement of the marks registered in Part D, s.58 of the Act, which applies only to marks registered in Parts A and B, 18 not applicable. The right to obtain relief for the infringement of marks

registered in Part D is provided by s.96 where the registered

proprietor is given "... the right to obtain relief in respect of infringement of the mark in the manner provided by this Act".

"The relief which a court may grant in an action or proceeding for infringement of a registered trade mark includes an injunction (subject to such terms, if any, as the court thinks f1t) and, except in the case of a trade mark registered in Part C of the Register, at the option of the plaintiff, either damages or an account of profits."

"A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered

user of the trade mark :"7:1ng by way of permitted use, uses a -rk which 1s substantially identical wit. or deceptively similar to, the trade mark, .1 the course of

In my opinion it is clear that the Court may grant an

injunction restraining the infringement of a trade mark

The case for the appellant in relation to the Part A registration was presented upon the kF°71s that the respondents' use of the words "St. Agnes" in the na' "St. Agnes Liquor Store" was a use of the mark itself and contr~ ened the rights given by

"Subject to this Act, the recistration of a trade mark in Part A or f:rt B of the Register, if valid, gives tc the registered proprietor of the trade mark -ne right to the exclusive use of the trade mar* in relation to the goods or services in resp27t of which the trade mark is registered and to obtain relief

in respect of infringement of the trade mark in the manner provided by this Act."

The appellant relied upon s.58 and did not seek to call an aid s.62 which deals with infringerent by the use of "...a mark which 1s substantially identical with, or deceptively similar to, the trade mark...". In doing so it accepted the views of the trial judge on this point. The first question that

arises 1s whether the use of the words "St. Agnes" in the phrase

"St. Agnes Liquor Store" is a use of the trade mark "St. Agnes".

In my opinion it follows from Mark Foy's Ltd v. Davies Coop and

Co. Ltd (1956) 95 C.L.R. 190 that it is. In that case Williams J., with whom Dixon C.J. agreed, considered that an advertisement which used the words "Exacto cotton garments - Tub Happy Cotton Fresh Budget Wise" was an infringement of the registered trade mark "Tub Happy". It was said at p.202 that the defendants had used "the exact words of the plaintiff's trade mark so that the plaintiff need not rely on s.53". This is the position in the

case before us. The case of Mark Foy's Ltd. v. Davies Coop and

Co. Ltd. (supra) was concerned with the provisions of the Trade

Marks Act 1905 but s.53 of that Act was in substantially similar

In The Shell Company of Australia Ltd. v. Esso Standard

O1l (Australia) Ltd. (1963) 109 C.L.R. 407 Kitto J., with whose

judgment Dixon C.J. and Owen J. agreed, considered the case of

Mark Foy's Ltd. v. Davies Coop and Co. Ltd., (supra), and said at

p.423: "The present Australian Act differs somewhat from its predecessor of 1905, but not, I think, in any material respect". I am therefore satisfied that, applying the views expressed in

Mark Foy's Ltd. v. Davies Coop and Co. Ltd., if the words "St.

Agnes Liquor Store" are used as a trade mark, a use of the trade

The Shell Company of Australia Ltd. v. Esso Standard O11

(Australia) Ltd., supra, makes it clear, at p.422, that both in s.58(1) and in s.62(1) the use which is there referred to 1s

It 1s therefore necessary to decide whether the use of

the words "St. Agnes Liquor Store" is use as a trade mark.

In the last mentioned case the question arose whether the use of certain figures in a television presentation was use

"With the aid of the definition of 'trade mark' ain s.6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to aundicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?"

The statement of claim alleged infringement of the mark particularised as follows: (a) by the sale of goods in which the respondents deal in packages bearing the words "St. Agnes Liquor Store"; (b) by the promotion and advertising of the respondents' business and the goods in which they deal by the name "St. Agnes Liquor Store" both at their place of business and in newspapers circulating generally in South Australia; (c) by the purchase and sale of goods in which the respondents deal in the name "St. Agnes Liquor Store" and (d) by causing and

ermitting their premises to be described as "St. Agnes" simply. Pp P IZ Y

Senior counsel for the appellant said that it was more concerned with advertising and that it complained particularly of two exhibits P5 and P7. P5 is a brown paper bag for containing a bottle. It was used to contain various bottles including wine.

"St. Agnes Liquor Store St. Agnes Shopping Centre, St. Agnes 5097 phone 264 6565."

The name of the store was in letters twice the size of

It was conceded by the respondents that the name "St. Agnes Liquor Store" was used as a trade mark on exhibit P5 in

The evidence was that this bag was first used in the respondents' business in about 1977 and that 1t was continuously used until June 1980 when its use was discontinued. Mr. Johnson, manager and a director of the respondent company, gave evidence that the present intention was to use a bag, exhibit D.33. It is unnecessary to describe D33 in detairl but 1t shows the suburb, name and address of various liquor stores associated in a buying group with the respondents' store. One store was shown as

"ST. AGNES St. Agnes Liquor Store, St. Agnes Shopping Centre

Exhibit P7 was a feature article about the respondents' liquor store accompanied by a number of advertisements largely by people who were associating their advertisements with the opening of the store. There was also an advertisement by the St. Agnes Liquor Store bearing in large black letters the name, "St. Agnes Liquor Store", followed in somewhat smaller letters by "St. Agnes Shopping Centre, St. Agnes" and the telephone number. Thereafter details of certain products sold in that store were

Senior counsel for the appellant said his client was not interested 1n pursuing the question of damages but it sought an injunction restraining generally the infringement of the trade mark and, in particular, an injunction retraining the use of the mark "St. Agnes" (a) as part of the respondents' trading name and advertising for the sale of alcoholic beverages and (b) as part of the trading name on their bags and invoices in respect of

The learned trial judge held that he would not uphold the appellant's claim insofar as it may rest on s.62 of the Act but a prima facie case of infringement under s.58 had been made

out. However he held that s.64(1)(a) of the Act applied.

Senior counsel for the respondents argued that the learned trial judge was correct in holding that s.64(1)(a)

Act, the following acts do not constitute an infringement of a trade mark: (a) the use un

Two questions arise in relation to s.64. They are whether that section extends to the use of the name of the

business itself and, 1f so, whether the use was in good fa2zth. It

is appropriate to note that the case was not presented upon any

basis that the use of the words "St. Agnes Liquor Store" was a use by the respondents of their own name within s.64(1)(a) and

therefore 1t 1s not necessary for me to consider this question.

In my opinion the section does not authorise the use of the words "St. Agnes" ain the name of the business "St. Agnes Liquor Store", at least as that name has been used in exhibits PS, P7 and D33. That name has added to it as the name of the place of business, "St. Agnes Shopping Centre, St. Agnes". I consider that "St. Agnes Liquor Store" is the name of the business, not the name of the place of business. However, I see no objection to the address of the respondents' store being

stated by the words "St. Agnes Shopping Centre, St. Agnes".

The purpose of s.64(1)(a) is clearly to permit a person to fairly describe the name of his place of business. To hold that "St. Agnes Liquor Store" was the name of a place of business within s.64(1)(a) would involve accepting that a person may avoid

infringement by adopting a business name which incorporates the

words of a registered trade mark. In the present case it has to be borne in mind that the liquor store was first called the "Bokara Liquor Store" and that it was not called the "St. Agnes Liguor Store" until some years after the appellant's trade mark

The correct approach to s.64(1)(a) is illustrated by the

judgment of McTiernan J. in _F.H. Faulding & Co.Ltd. v. Imperial

Chemical Industries etc Ltd. (1965) 112 C.L.R. 537. Passages to

which I refer were not considered in the appeal in that case. McTiernan J. at pp.543 and 544 pointed out that s.64(1)(b), which protects use in good faith by a person of a description of his goods, was limited to that which is genuinely descriptive of the character or quality of the goods in connection with which it is used and where the use 1s purely for the purpose of description.

A similar approach was taken in Mark Foy's Ltd. v. Davies Coop &

Courts have construed s.8(a) of the Trade Marks Act 1938

(U.K.) ian a strict way and in accord with the approach adopted in the judgments of McTiernan J. and Williams J. to which I have just referred. Section 8(a) of the U.K. Act is in similar terms

Danckwerts J. in R.J. Reuter Coy. Ltd. v. Mulhens (1953)

7O R.P.C. 102 considered that section in a case where it was

argued that 1t protected the use of "4711" as being the name and

address of the defendant's factory in Cologne. There was evidence that the number 4711 was acquired when houses in Cologne were each given a number without regard to street numbers. It was submitted that the section protected the use of "4711", which was the registered trade mark of the plaintiff, not only by itself, but also in a form where it was used on a letter head by the defendant in association with a scroll device and a bell.

"As regards the contention that the number '4711' in conjunction with the scroll and bell was used bona fide as the name of the Defendants' firm or place of business, or that of their predecessors, it appears to me that the use of the number and device was not, and was not intended to be, simply a convenient way of giving the Defendants' name and address. It was in fact, and was intended to be, use of a trade mark referring to the Defendants' goods. Both the envelope and the

letter give the Defendants' name and address in a fuller manner."

"But the use here is not merely use of the number but the use of the number represented in a particular and characteristic way with the embellishment of the scroll and bell".

Birkett and Romer L.JJ. agreed with the judgment of

A similar approach was adopted by the Court of Appeal in

George Ballantine and Son Ltd. v. Ballantyne Stewart and Coy.

Ltd. [1959] R.P.c. 273 where the defence was rejected. In that case the defendant had used its full name on certain labels which

are fully described in the judgment of the trial judge,

"In the present case the Defendants cannot justify the presence of the representation of their name which is complained of as being required to identify their responsibility for marketing these goods, for their full title and address appears elsewhere on the labels and there in a form more appropriate for appreciation only on close scrutiny, such as would be fitting were precise identification of trade origin required by an observer."

On appeal Lord Evershed, with whom Romer and Pearce L.JJ. agreed, said that he agreed with the judgment of the trial judge and added "Upon the evidence before him indeed no other conclusion was in my judgment possible...". Whilst this last case is, on one view, more relevant on the question of whether a name 1s used in good faith, 1t illustrates the restrictive

approach which the courts in the United Kingdom have adopted in

relation to the provisions of the equivalent of s.64(1)(a).

The judgment of Windeyer J. in Hy-Line Chicks Pty. Ltd.

v. Swifte '1966) 115 c.L.R. 159 in relation to s.64(1)(a) was

referred to by the trial judge. In that case his Honour pointed

out that only s.64(1)(c) was relied upon by the defence but his Honour added by way of obiter dicta at p.16l "... the defendants are it seems to me entitled, by virtue of par.(a) of the sub-section, to describe their premises as the ''Hi-Line Poultry Farm and Hatchery', for it is the name of their place of business". His Honour indicated at p.164 that he proposed to make a somewhat unusual order which, inter alia, would contain:

»eea declaration that the use by the defendants of the name 'Hi-Line Hatchery and Poultry Farm' or '''Swiftes' Hi-Line Hatchery and Poultry Farm' as the name of their place of business at Happy Valley in South Australia, and as the description of the business carried on there, does not constitute an infringement of the plaintiff's trade mark

In that case the defendants had conducted a poultry farm and hatchery under the name "Hi-Line Poultry Farm" since 1955, four years before the plaintiff's trade mark was registered. The name of the farm was later changed to "Hi-Line Hatchery and Poultry Farm". This hatchery and poultry farm was in a place called Happy Valley in South Australia and so far as appears from the judgment, there was no address or place of business by which it could be described more adequately than "Hi-Line Hatchery and Poultry Farm". It seems to me that there is a great difference between holding that the name "Hi~Line Hatchery and Poultry Farm" in a rural area is the name of a place of business to holding that the name "St. Agnes Liquor Store" situated at St. Agnes Shopping Centre, 1244 North East Rd., St. Agnes, 5097 is

I am disinclined to give a broad construction to s.64(1)(a). If this section provided a defence for the use of "St. Agnes Liquor Store" because it extended to protect the use of the name of the defendant's business, 1t would be equally open to the respondents to choose as their business name "St. Agnes Brandy Store" and to sell brandy not of appellant's manufacture or selection in that store. It would also mean that if a new suburb was created and given the same name as that of a widely known registered trade mark, a trader would be protected if he adopted the name of the suburb as his trade mark or as a significant part of his mark and used it in good faith in respect of goods for which the mark had been registered for many years and was widely known. For example, assume that a trade mark "Hilton" is registered in respect of manufactured tobacco and that for years this mark has been advertised and known throughout the length and breadth of Australia as identifying a particular brand of cigarettes, and assume then that a new suburb is created and that 1t is given the name "Hilton". Could a manufacturer of cigarettes, knowing of the registration and other relevant facts, manufacture and sell cigarettes under the name "Hilton" or use the name "Hilton Tobacco Company" for its company and rely upon s.64(1)(a) as a defence for an infringement action? In my

Opinion the section would not extend to such a case.

I have reached the conclusion that the use of the name "St. Agnes Liquor Store" by the respondents, at least in the

exhibits which I have mentioned, is not a use of the name of the

respondents' place of business. It is therefore unnecessary for me to consider whether the use of that name by the respondent was in good faith. However, I think that it is appropriate to deal somewhat superficially with that question. In my opinion, the proper approach is to test the question of good faith only against the rights of the registered proprietor of the trade mark alleged to be infringed. The name "St. Agnes Wines Pty. Ltd." is that of a subsidiary company of the registered proprietor and that company was not a registered user of the trade mark "St. Agnes". The appellant is not carrying on business under the name

At least since 1973 the entries in the telephone book for the appellant at Tea Tree Gully showed its address as 1320 North East Road, Tea Tree Gully and its telephone number as 264 2366. Entries for "St. Agnes Wines Pty. Ltd." at Tea Tree Gully showed exactly the same address and the same telephone number. One can understand that some confusion might be expected to arise when the same address and telephone number appeared in the telephone book for the appellant and its subsidiary, not because of any similarity between the name "St. Agnes Liquor Store" and the appellant's name or trade mark but because of confusion with the name of the appellant's subsidiary. Confusion between the name of a subsidiary of the appellant and the name of a business carried on by the respondent does not appear to me to be relevant in considering whether the respondents conduct was in

I have had the opportunity of reading the judgments in draft form of Deane and Fitzgerald JJ. who have reached the conclusion that the use by the respondent of the name "St. Agnes Liquor Store" 1s a use of that name as the name of their place of business. The question of whether any relief should be granted in relation to registrations in Part D was not pressed strenuously by the appellant and little argument was directed to the question of infringement of those registrations. There 1s very little authority concerning Part D registrations. The learned trial Judge took the view that the use of the name "St. Agnes Liquor Store" as a trade mark was not the use of a mark which was substantially identical with or deceptively similar to the trade mark "St. Agnes". In the circumstances 1t appears undesirable for me to express any opinion on the question of

I pass now to consider the question of passing off. The basis of a passing off action 1s a false representation. See

Warnink v. Townend & Sons (Hull) Ltd. [1979] A.c. 731 at p.742.

The misrepresentation alleged in this appeal is that, by use of

the name "St. Agnes", the respondents have passed off their goods

or their business as the goods or the business of the appellant. To succeed in a passing off action a plaintiff must establish that the words it seeks to protect are distinctive of its business or its goods or that those words have acquired a reputation, or, as it is often put, a secondary meaning indicating to a sufficient section of the relevant public that the business carried on, or the goods sold, under those words have gained a reputation which distinguishes that business or those goods from the business or goods of others. The point

was expressed by the Privy Council in Cadbury-Schweppes Pty. Ltd.

v. Pub Squash Co. Pty. Ltd. [1981] 1 W.L.R. 193 at p.205 as

"It is only if a plaintiff can establish that a defendant has anvaded his 'intangible property right' in his product by Misappropriating descriptions which have become recognised by the market as distinctive ef the product that the law will permit competition to be restricted."

The critical importance of establishing this reputation is illustrated by the judgment of the High Court in W. and A.

Gilbey Ltd. v. Continental Liqueurs Pty. Ltd. (1960) 103 C.L.R.

In my opinion the relevant date at which a reputation must exist 1s the date when the conduct of which complaint is

made first occurred, Cadbury-Schweppes Pty. Ltd. v.Pub Squash Co. Pty. Ltd. (supra) at p.204. If the appellant is to succeed it

must show that in the last quarter of 1977 it had such a reputation in the words "St. Agnes" that a sufficient number of

relevant persons would be likely to confuse the respondent's

There is very little evidence that the appellant had a reputation at the relevant date in the words "St. Agnes" except for brandy. Since about 1950 the appellant has deliberately restricted the use of the words "St. Agnes" to brandy for the purpose of enhancing thelr value in connection with brandy. There is no evidence that the respondents have passed off, as the appellant's brandy, the brandy of any other manufacturer or trader. It is not necessary to consider whether St. Agnes Wines Pty. Ltd. might have any sufficient relevant reputation for goods other than brandy. A wholly owned subsidiary of the appellant is a different company and, in my opinion, at least in this case, the appellant does not gain anything from any reputation that subsidiary might have in the words "St. Agnes". In any event I do not consider that at the relevant time St. Agnes Wines Pty. Ltd. had any sufficient reputation in the words "St. Agnes" and

The essential characteristics to found an action for

passing off are set out in Warnink v. Townend & Sons Ltd. (supra)

"(1) a miusrepresentation (2) made by a trader in the course of trade, (3) to prospective

customers of his or ultimate consumers of goods or services supplied by him, (4) which 1s calculated to ainjure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence)

I have reached the conclusion that the appellant has not shown a sufficient reputation in the sense that the words "St. Agnes", when applied to products other than brandy, identified its products at the relevant time. Therefore I consider that it has failed to show any misrepresentation and so it is unnecessary to consider whether the other essentials of a passing off action have been established. The learned trial judge dismissed the passing off claim on the ground that it had not been shown that the respondents' use of the words St. Agnes was inherently likely to deceive and that, in any event, the

appellant had not established the likelihood of loss or injury to

The respondents advanced other defences, namely acquiescence, delay and what might be called "unclean hands". T

have considered each of these defences and I consider that they

I would uphold the appeal so far as it relates to infringement of the trade mark registered in Part A. Because of the views expressed by Deane and Fitzgerald JJ. it 1s unnecessary

Leertify that this andthe (4 preceding pages are a true copy of the

) SOUTH AUSTRALIAN DISTRICT REGISTRY) NO. G39 of 1981

ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA

ELTON JOHNSON and CARLENE VERA JOHNSON and ECLAR INVESTMENTS PTY. LIMITED

DEANE J: In late 1976, Mr. and Mrs. Johnson, who are the first and second respondents, changed the name of their retail liquor business in the St. Agnes Shopping Centre in

the Adelaide suburb of St. Agnes from the Bokara Liquor Store

-2- to the St. Agnes Liquor Store. They carried on the business under the new name until June, 1978. Since then, the business has been carried on, under that name, by the third respondent, Eclar Investments Pty. Limited, which is a company of which Mr. and Mrs. Johnson are directors. Nothing turns, for the purposes of the appeal, upon the distinction between Mr. and Mrs. Johnson on the one hand and the third respondent on the other and it is common ground that, 1f the appellant is entitled to relief against any one of them, it is entitled to relief against them all. I shall, on occasion, refer to "the respondents" in circumstances where precision would require separate reference to Mr. and Mrs. Johnson in respect of the period up to 30 June, 1978 and to the third respondent in respect of the period subsequent to that date. I shall also, on occasion, refer to "St. Agnes Liquor Store" as being the "name of the respondents' shop" in the sense that the name of the shop embraces the name of the business carried on in and from the shop premises as well as being appropriate, in some circumstances, to describe the

The appellant is Angove's Proprietary Limited. It is the registered proprietor of the trade mark "St. Agnes" in Part A of the Register in respect of brandy and wine and in Part D in respect of a very wide variety of alcoholic and non~alcoholic liquors "and syrups and other preparations for

making beverages". It produces wines and spirits including

-3~- the well-known "St. Agnes" brand of brandy which is the only product in respect of which it uses "St. Agnes" as a brand name. It complains that the respondents' use of "St. Agnes", as part of the name of their shop, constitutes, in the circumstances, an infringement of its trade marks and a passing off of the respondents' business as or as being connected with the appellant's and of goods which the respondents sell in their liquor store as the appellant's goods. It should be mentioned that the appellant's business includes cellar door sales, restricted to its own products and to a brand of Scotch whiskey and a brand of London gin of which it is the distributor, at premises which it owns up the road from the St. Agnes Shopping Centre but outside the suburb of St. Agnes. Those premises are known as the "St. Agnes Winery" and include a tower which displays the name "St. Agnes" and which is a local landmark. It is plain that the suburb, which was named in 1959, derived its name from

The use by the respondents of "St. Agnes" has been restricted to their use of it as part of the name of their shop. Their use of that name has taken a variety of forms. The name has appeared on the shop premises. It has appeared in advertisements. It has appeared on brown paper bags in which products sold are wrapped. It has appeared in the telephone book. All these uses are uses which one would expect to be made of the name of a shop which consists of a combination of words indicating the nature of the business and the name of the particular metropolitan suburb in which

Cox J. found that the selection of the name "St. Agnes Liquor Store" was prompted by the obvious circumstance that the respondents carried on a liquor store in the St. Agnes Shopping Centre in the suburb of St. Agnes. Mr. and Mrs. Johnson were aware, before they adopted it, that the appellant objected to their use of that name. His Honour found, however, that they did not adopt the name in the hope or expectation that there would be confusion or deception in the sense either that their customers or others would believe that goods which they sold which were not products of the appellant were connected with the appellant or that their business was a branch of, or otherwise connected with, the

It was not suggested that the customers of the respondents' liquor shop were drawn from other than the Adelaide area or that they were unaware of the fact that the actual premises in and from which the respondents carried on their retail liquor business were located in the suburb of St. Agnes. To such customers, the name "St. Agnes Liquor Store" would be an obvious reference to the nature of the business and to the suburb in which it was located. If the respondents' use of the name of that suburb to describe their retail business and their subsequent use of that designation of their business in relation to the goods which they sold

constituted infringement of the appellant's trade marks, it

-5- is difficult to see why the appellant would not be entitled to prevent a similar use of the name of the suburb by any local grocery, department store, pharmacy, hotel, service station or other business which sold any of the wide variety of goods in respect of which the appellant's marks were registered. The entitlement to the exclusive use of a trade mark in relation to the goods in respect of which the trade mark was registered would, for practical purposes, become, if the trade mark corresponded to the name of a city, town or suburb, an entitlement to prevent any local retail outlet from using the name of the city, town or suburb to identify itself 1f it happened to sell any of the goods in respect of which the trade mark was registered and if, as would seem inevitable, the geographically descriptive name of the retail outlet would, as a matter of course, be used in relation to

Section 64(1)(a) of the Trade Marks Act, 1955 ("the Act") provides that, notwithstanding anything contained in the Act, the use in good faith by a person of the name of his place of business does not constitute an infringement of trade mark. The above-mentioned findings of Cox J. as to the reasons which prompted Mr. and Mrs. Johnson to call their shop the "St. Agnes Liquor Store" were, in my view, correct and warranted the conclusion which he reached that the naming of the shop after the shopping centre and suburb in which it

was situated was both readily understandable and in good

faith. As Fitzgerald J. demonstrates in his judgment, the same can be said of the use which the respondents subsequently made of the name in the course of their business. It follows that the respondents' use of "St. Agnes" enjoys the protection of s.64(1)(a) of the Act 1f it was a use, within the meaning of that clause, by the respondents of the name of their place of business. In my view, it was. Subject to what follows, I agree with the reasons for that conclusion which appear in the Judgment of

Two general comments should be made as to the provisions of s.64(1)(a). The first 1s that the clause refers to the "name" of a person's "place" of business. In my view, the reference to "place" in the clause at least includes the geographical name of the city, town or suburb in which the person's business is located. The second is that s.64(1)(a) extends to use by a person of the name of his place of business as a trade mark, in the course of trade, in

relation to goods: if it did not, the clause would be

The name "St. Agnes Liquor Store", in the circumstances of the present case, 1s, in my view, the equivalent of the "Liquor Store at St. Agnes" in the same way as the names of -he other shops to which Cox J. referred are

a convenient and sensible combination of the nature of the

-7- relevant business and the name of the place where it is situated. In the particular circumstances of this case, the name of the suburb "St. Agnes" has been used by the respondents as a geographical description of their business through which goods are offered for sale and sold rather than as, in itself, describing or identifying the actual goods sold or offered for sale. While the composite name of the business, including the name of the suburb, 1s admitted to have been used as a trade mark in relation to relevant goods, the actual name of the suburb in the composite name is used as descriptive of the business. Such a use 18 a use of the name of the respondents' place of business, namely, the name of the suburb in which that business is situated, as such. The present case does not raise the type of problem which would be involved 1f a manufacturer or distributor of goods used the actual name of the place where his factory or distribution base was situated to describe or identify not the factory or base in or from which the goods were manufactured or distributed but the goods themselves. Nor does the view that the provisions of s.64(1)(a) apply in the circumstances of the present case open floodgates holding back a scheming shoal of dishonest traders. The provisions of s.64(1)(a) are only available when the suggested unfringer has acted 1n good faith. Even when s.64(1)(a) does apply, the law of passing off and the requirements of

statutory provisions such as s.52 of the Trade Practices Act,

The question of infringement must be approached in the context of the provisions of s.64(1)(a). It was common ground that a conclusion that the respondents' use of "St. Agnes" enjoyed the protection of those provisions would dispose of the appellant's claim for infringement. It is, in the circumstances, unnecessary that JI form or express any concluded view as to whether, but for the provisions of s.64(1)(a), the actions of the respondents would have constituted infringement of the appellant's trade marks and I refrain from so doing. That hypothetical question raises three matters of some general importance which are best left to be resolved in a case where they necessarily arise for decision but in respect of which I would presently make some tentative comments. The first of those three matters concerns the relationship between s.58 and s.62(1) of the Act. It would seem, at least in so far as this Court is concerned, that s.62(1) cannot be regarded as definitive of what constitutes infringement of a registered trade mark but should be seen as merely expansive, at least in so far as trade marks registered in Part A or Part B of the Register are concerned, of a primary denotation or definition of infringement implicit in s.58. On this approach, with which I have considerable difficulty, s.62(1) is "an appendage" to s.58 and has, as its primary function, the widening of the

denotation of ""anfringement" contained in s.58 (see Mark

Foy's Limited v. Davies Coop. & Co. Limited (1956) 95 C.L.R.

190 at p. 204 and The Shell Co. of Australia Ltd. v. Esso

Standard Oil (Australia) Ltd. (1963) 109 C.L.R. 407 at p.

423). The second matter is whether the use of the words which comprise the registered trade mark as part of a trade mark containing both them and other words, constitutes infringement under s.58. In that regard, it is relevant to note that the use of the words "Tub Happy" in Mark Foy's Limited v. Davies Coop. & Co. Limited (supra) was a use of those words themselves as a trade mark and not simply a use of those words as part of a larger trade mark (see, ibid, at pp. 204-205). Acceptance of the proposition that the use of a number of words as a trade mark with respect to goods necessarily involves, for the purposes of an infringement action, a use of each of those words or each group of them as a trade mark would, on my understanding of the law, constitute a significant breaking of new ground which would have some surprising consequences (e.g., if the words used as a trade mark were "One Thousand Two Hundred and Thirty Four", there would, for the purposes of infringement, be a use as a trade mark of each of the words involved and of each group of them). The third matter is whether, if it were necessary for the appellant to call the provisions of s.62(1)(a) in aid, the name "St. Agnes Liquor Store" was, when used to designate a shop from which relevant goods had been or could be purchased, substantially identical with or deceptively similar to the registered trade mark "St. Agnes". On that third question, I can, as presently advised, see considerable force in the reasoning which led Cox J. to conclude that it

As regards the appellant's claim for passing off, I agree, for the reasons which he gives, with the conclusion of Fitzgerald J. that it was correctly dismissed. It is unnecessary that I express any view in respect of the special defences which were relied upon by the respondents and which are referred to in the judgment of Cox J. in the Supreme

Court and in the judgments of the other members of this

) SOUTH AUSTRALIAN DISTRICT REGISTRY) No. S.A. G37 of 1981

ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA

ELTON JOHNSON and CARLENE VERA JOHNSON and ECLAR INVESTMENTS PTY LIMITED

FITZGERALD J.: This 1s an appeal from a judgment of

the Supreme Court of South Australia dismissing an action brought by the appellant against the respondents. The appellant seeks injunctions restraining generally the infringement of the appellant's registered trade mark

"St Agnes" and, in particular, an injunction restraining the use of the mark "St Agnes" (a) as part of the respondents' trading name 1n advertising for the sale

of alcoholic beverages and (b) as part of the respondents' trading name on their bags and invoices in respect of

their trade in alcoholic beverages. A further injunction

A Et Ti EERE NAS Tata HEL RMA aT peamteat pertinent MORITA end OE at, Sn re

-2 - - is sought to restrain the respondents from passing off their goods and their business as those of the appellant, and in particular from including the words "St. Agnes" in the trading name of the respondents' liquor store. Ancillary orders are sought with respect to obliteration or modification but a claim for damages was not pursued. The findings of primary fact by the learned trial judge, Cox J., are not challenged, and the issues on this appeal are confined to the inferences to the drawn from

The appellant is the proprietor of the trade mark "St. Agnes", which is registered in respect of brandy and wine in Part A of the Register, and also as a defensive mark in Part D of the Register in respect of "wines, Spirits and liquers" and "beer, ale and porter, mineral and aerated waters and other non-alcoholic drinks, and syrups and other preparations for making beverages". Both parties accepted that if the appellant's trade mark registered in Part A of the Register is being infringed so are its identical defensive trade marks registered in Part D, and that if the appellant established a right to relief in respect of the former it is

entitled to relief in respect of the latter, but not

spirits including "St. Agnes Brandy". Its principal

place of business is at Renmark, in South Australia, and it is there that it produces its brandy and other spirits and most of its wine. The appellant also

owns premises on the North East Road at Tea Tree Gully near Adelaide. It was on the site of these premises that, in the 1890's,the founder of the appellant's business, Dr Angove, originally established a winery and distillery. A small quantity of wine is still produced there, but otherwise the premises are now used by the appellant as a site for the warehousing and distribution'of its products and as a tasting room and retail shop. To quote from the judgment of the learned primary judge, the appellant's "retail sales outlet ... is of the type and set-up commonly found

in wine-making areas for the purpose of promoting cellar-door sales". The appellant's sales there are restricted to its own products and a brand of Scotch whiskey and a brand of London gin for which it is the local distributor. The appellant trades at Tea Tree Gully under its own name. The premises there include an old tower which is a district landmark and has, for

Many years, displayed in prominent letters the name

Originally, "St. Agnes" was used generally as a brand name by the appellant. However, for the past

30 years, the appellant's use of "St. Agnes" as a brand name has been confined to brandy. It was admitted in the

pleadings that the trade mark had become well-known and

-4- distinctive of the appellant's brandy but not of any of its other products. A wholly owned subsidiary company of the appellant continues to exist under the name "St. Agnes Wines Pty Limited". The principal activity of the subsidiary company, which does not trade, 1s to act as the employer of staff at the Tea Tree Gully premises. Its name appeared, at relevant times, on signs within the premises at Tea Tree Gully, and in telephone books; there was an unresolved conflict of evidence concerning the visibility of a sign bearing its name outside the premises prior to a vine being cut back after the present dispute was underway. After this action was commenced, its name was used on occasions in the appellant's advertising, and on invoices in respect of goods supplied by the appellant from the Tea Tree Gully premises. The foregoing constitutes, on the evidence, a comprehensive summary of the appellant's use of

There 1s no doubt but that the appellant enjoys, and at all material times enjoyed, a substantial goodwill in respect of its brandy by reference to the reputation enjoyed by that product under the brand name "St. Agnes". The learned primary judge, in his careful judgment, did not make any express finding on the question whether the appellant has at any relevant time otherwise had any goodwill by reference to the name "St. Agnes".

Consideration of the evidence leads me to conclude that

-5- "St. Agnes" was connected by reputation to its business generally, i.e. as a trading name as distinct from the brand name of its brandy. Even if attention is confined to its trading activities at Tea Tree Gully it was not, I think, established that the name St. Agnes Wines Pty Ltd, or St. Agnes Wines, 1S a name associated by reputation in any

significant way with the appellant's trading activities.

The real source for potential confusion in respect of this aspect of the matter 1s that, perhaps for a variety of reasons including no doubt the name on the tower, the appellant's premises at Tea Tree Gully were and are known as "St. Agnes", sharing that name, as a place name, with a nearby suburb. In that context it might be said that the appellant's general trade at Tea Tree Gully is associated with "St. Agnes"; that is, as the place at which the trade is carried on. However, as a matter of deliberate market strategy, the appellant confines its use of "St. Agnes" to use as a brand name for one of 1ts products, its brandy, and has done so for a number

In 1959, the local District Coune1l created a new suburb in the vicinity of, but not including, the appellant's premises at Tea Tree Gully. For

reasons which were obviously related to the appellant and its distinctive premises, the Council called the suburb "St. Agnes". The suburb of St. Agnes

1s now a typical modern suburb. Within the suburb, on

North East Road some half mile from the appellant's

Tea Tree Gully premises, a modern shopping centre has been established. Not surprisingly, it is known as

the "St. Agnes Shopping Centre". Within it area number of shops whose names include "St. Agnes". There are "St. Agnes Cycles", "St. Agnes Dry Cleaners",

"St. Agnes Toy Shop", "St. Agnes Chemist" and "St. Agnes

Fish Shop". There is also the "St. Agnes Liquor Store".

The original liquor store in the St. Agnes Shopping Centre was called the Bokara Liquor Store. In 1975, 1t was leased to the first two respondents,

It was then situated in the central mall of the shopping centre. At the end of 1976, Mr and Mrs ~ Johnson changed the name of that business to

shopping centre with an entrance from North East Road. The business has thrived. In contrast to the appellant's business at Tea Tree Gully, the respondents' business is, in the words of the learned primary judge, "a typical modern liquor store ... carrying a very large stock

of all kinds and brands of liquor". The products advertised and sold include the appellant's "St. Agnes" brandy. However, a great part of the respondents' stock consists of the products of manufacturers other than the

appellant. Since June 1978, the respondents' business

Investments Pty Limited, a company of which Mr and Mrs Johnson are directors. No question was raised as to

the propriety of granting relief, if otherwise appropriate, against all three respondents. Nor was any suggestion

made that, 1n considering the conduct of the respondents,

a distinction should be drawn between Mr and Mrs Johnson

Prior to the respondents changing the name of their business, the appellant learned of the respondents' proposal and wrote to them, drawing attention to its trade mark rights and asking the

The evidence of Mr and Mrs Johnson was accepted by the learned primary judge, whose findings with respect to the adoption by the respondents of the name "St. Agnes

(1) the previous name of the business, "Bokara Liquor Store", was genuinely and reasonably considered to be unsatisfactory by the

(ii) the name "St. Agnes Liquor Store" selected by the respondents was both appropriate and the obvious choice having regard to the nature and

(222) tne respondents were unaware of the existence of the appellant's subsidiary, St. Agnes Wines Pty Ltd, that it was the subject of an entry in the telephone book, or that there was any reference to it on signs at the appellant's

"St. Agnes" brandy {in relation to which they conducted a substantial trade) and

(c) that the appellant objected to their proposed use of the business name

Having regard to the proximity of the respective businesses, and that both involved the retail sale of alcoholic liquors, the respondents must also have known of the nature of the appellant's business and of the name "St. Agnes" prominently displayed on the tower

learned primary judge's conclusion that, when they changed the name of their business to St. Agnes

to themselves or of otherwise damaging the [appellant's] goodwill". Indeed, in my view, having regard to

the appellant's lack of a general trading reputation

in the name "St. Agnes", the respondents assessment

Despite protests by the avpellant, the respondents continue to use "St. Agnes Liquor Store" in connexion with their business and the products sold; it is the name under which the respondents purchase and sell the products in which they deal; and it is used in their apparently substantial advertising. Frequently, the name of the business is used 1n conjunction with the name of the shopping centre and the name of the suburb; e.g. "St. Agnes Liquor Store, St. Agnes Shopping Centre,

St. Agnes". For three years the respondents used paper bags

with "St. Agnes Liquor Store" printed on them as wrapping for the goods sold in their store, but since about June 1980 they have used instead the bags of a well-known

collective purchasing group, "Karana", cf which they are

members. Signs inside and outside the store refer both to "St. Agnes Liquor Store" and "Karana Liquor Store". The respondents' delivery vehicles, which (coincidentally as the learned primary judge found) bear some superficial resemblance to the appellant's vehicles, carry the

Some confusion occurred and the appellant took steps to bring the details of it to the respondents' attention. About a hundred specific incidents extending from December 1976 to January 1981 were established by the appellant calling as witnesses two employees who kept a record of the incidents. By far the most common example was a telephone call to the appellant's Tea Tree Gully premises asking for the respondents' liquor store. Only a few incidents over the entire period were actually shown to involve persons who thought that there was a connexion between the two businesses. The testimony of Mr Johnston, given under cross-examination by the appellant's senior counsel indicates that the respondents were initially unaware of St Agnes Wines Pty Ltd and thought that the confusion was "between the name St. Agnes as part of St. Agnes Brandy and the name of (the respondents') store". Later, they became aware of the name St. Agnes Wines Pty Ltd in the telephone book and that that entry was of a

-l1- The recorded confusion commenced in December 1976. The name of the respondents' business was not altered to "St. Agnes Liquor Store" until the end of 1976 and the new

name did not appear in the telephone directory until

the 1977-1978 edition in which 1t was placed in the white pages in ordinary lower-case type. The name "St. Agnes Wines Pty Ltd" has been in the directory for a number of years and has throughout

by the plaintiff has steadily decreased since 1977. I expect that it will continue to do so, having in mind

the assurance by the defendants' counsel that his clients have arranged for their white page telephone book entry to be printed in block letters in future editions,"

The entries 1n the telephone book cannot totally explain the proven confusion. For example, letters correctly addressed were misdelivered. The most the appellant could hope to derive from the evidence which it led of the instances of confusion which it recorded

was that there was a potential for confusion which, whether because of carelessness or for some other

"Tt is not to be taken for granted that a similar number of people made the mistake of going to or telephoning the liquor store when they really wanted the winery. I accept the evidence of the defendants that such incidents were

The learned primary judge, whilst recognizing the possibility that the instances established might be representative of a more wide-spread confusion, nonetheless considered that there was no significant confusion or likelihood of confusion. I respectfully

Further, the evidence of confusion 1s quite consistent with the view which I have earlier indicated that the appellant did not establish that any significant connexion exists between the name "St. Agnes" and its general trading as distinct from its "St. Agnes" brandy. At most it showed that some business might flow to it at Tea Tree Gully by reason of the entry of the name "St. Agnes Wines Pty Ltd" in the telephone book but there was nothing to indicate that business from that source 1s of any magnitude. The trading reputation

connected with the name "St. Agnes" in connexion with

the general retail sale of liquor jis that built up by

the respondents. The respondents were not shown to have derived benefit by reason of persons associating

the two businesses, nor was it shown that that was likely.

-13- Nor was there any basis for finding that anyone at all was confused or deceived into the belief that the respondents were other than mere retailers of any

of the appellant's products which they happened to sell.

The respondents deny that they are infringing the appellant's trade mark or are passing off their

appellant. They further assert that, in any event, the appellant has by its conduct lost any right which it otherwise would have to the relief which it seeks. As

to this matter, the respondents rely on three pouaints:

(a) the appellant's continuing to supply "St. Agnes" brandy to the respondents

(b) maisrepresentations to the public that it was St. Agnes Wines Pty Ltd not the appellant which was trading at Tea Tree

(c) opening and copying mail addressed to the respondents and mistakenly delivered

Trade Mark Act, 1955, as amended, respectively provide:

of a trade mark 1n part A ... of the Register, 1f£ valid, gives the registered proprietor of the trade mark the right to the exclusive use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement

of the trade mark in the manner provided by this Act."

a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, uses

a mark which 1s substantially identical with, or deceptively similar to, the trade mark, in relation to goods or services in respect of which the trade mark 1s registered."

a defensive trade mark in Part D of the Register, if valid, gives to the registered proprietor of the mark the right to obtain relief in respect of infringement of the mark in the manner provided by this Act."

By s.65 the relief which the Court may grant in an action

for infringement of a registered trade mark includes an

"64(1) Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of a trade mark:

(a) the use in good faith by a person of his own name or the name of his place of business,' or the name, or the name of the place of business, of any of his predecessors in business;..."

Because I am of opinion that this sub-section does have the effect contended for by the respondents, it 1s strictly speaking unnecessary for me to say anything on the subject of whether or not the respondents' conduct would otherwise constitute an infringement of the appellant's mark. However, since the matter was fully argued, and Franki J. is of the view that s.64(1) (a) does not avail the respondents and that they are infringing the appellant's mark, some reference

It was common ground that the use which is referred to both in s.58(1) and s.62 is limited to use of a mark as a trade mark and it is only such

use which may constitute infringement: Mark Foys Ltd

v. Davies Co-op and Company Ltd (1956) 95 C.L.R. 190,202,

204; The Shell Co of Australia Ltd v. Esso Standard O11

(Australia) Ltd (1963) 109 C.L.R. 407, 414, 422ff. The

-16- appellant did not press a suggestion that the respondents' use of "St. Agnes Liquor Store" as the name of their store for example in signs affixed to their premises or in the telephone book, was use of the name as a trade mark in respect of the products in which the respondents trade. On the other hand, the respondents conceded before this Court that the evidence established that they had used and intended to continue to use their business name "St. Agnes Liquor Store" as a trade mark in the course of trade in relation to goods in respect of which the trade

mark "St. Agnes" 1s registered, for example, by their

The appellant's primary, if not sole, submission was that the respondents' mark incorporates, and thus makes direct use of, the entirety of the appellant's registered trade mark so that the respondents' use of ats mark is an infringement by reason of s.58(1) and reference to s.62(1) is unnecessary. Both parties agreed that s.62(1) does not provide an exhaustive definition of what constitutes infringement but, as regards marks registered in Part A, 1s complementary to s.58(1) under which a proprietor's exclusive right to use his registered trade mark 1s infringed when what is used by a person other than the registered proprietor is the trade mark itself, as distinct from a "mark which 1s substantially identical with, or deceptively similar to, the trade mark"

Mark Foys v. Davies Co-op (supra.}; The Shell Co v.

-17- There may be support for the appellant's submission

in Mark Foys v. Davies Co-op (supra.). That case was

decided by reference to s.50 of the 1905 Act which was relevantly identical with the present s.58(1). The plaintiff was the registered proprietor of a trade mark "Tub Happy" which was registered in respect of articles of clothing. The defendant advertised "Exacto Cotton Garmets - Tub Happy Cotton Fresh Budget Wise" in respect of clothing which it manufactured. A majority of the High Court, Dixon CJ., and Williams J., Kitto J. dissenting, held that the plaintiff's trade mark was infringed. In the course of his judgment, Williams J., with whom Daxon CJ. concurred, said (ibid at p. 202):

rights conferred on the plazrntiff by s.50 have been infringed. The defendants have used the exact words of the plaintiff's trade mark so that the plaintiff need not rely on s.53."

It is not possible to tell from what was said whether the infringement occurred because "Tub Happy" was used as a separate and distinct mark within the advertisement or whether 1t was considered that the words "Tub Happy" were incorporated into a mark used in the advertisement

On my reading of the cases, no other reported Australian decision takes the matter further. The

consideration in The Shell Co v. Esso Oil (supra), where

the alleged infringing mark was different from the registered trade mark; Windeyer J. found at first instance that there was a deceptive similarity but his decision was reversed on appeal on other grounds. More recently, in Marc A. Hammond Pty Ltd v. Papa Carmine

Pty Ltd [1976] 2 N.S.W.L.R. 124 no reference was made to s.58(1) of the Act in considering whether the registered trade mark "Giovanni's" was infringed by the use by

the proprietor of the "Papa Giovanni Pizza House Restaurant" of the marks "Papa Giovanni" and "Papa

A number of English decisions were referred to in argument on this point but I found

them of little help by reason of differences in the

legislation. Section 4(1) of the 1938 English Act provides,

in effect, that without prejudice to the generality of the registered proprietor's "exclusive right" of user, it is deemed to be infringed by the use of a mark "identical with it or so nearly resembling it as to be likely to deceive or cause confusion". No express mention is made in the English legislation of a mark which is "substantially identical" with a registered

an English Court has held that a mark incorvorating

a registered trade mark is "identical with it". The decisions are rather to the contrary: see Saville

Perfumery Ltd v. June Perfect Ltd (1941) 58 R.P.c. 147,

George Ballantine & Sons Ltd v. Ballantyne Stewart & Co Ltd [1959] R.P.c. 273, 279; Baume & Co Ltd v. A.H. Moore Ltd

[1958] 1 Ch. 907, 919-20. In none of those cases was it suggested that a direct use of a registered trade mark

as part of a mark might be an infringement although the mark used was not identical with the registered trade mark or so nearly resembling it as to be likely to deceive or cause confusion. In Baume v. Moore, however, the point

The appellant relied upon a passage in de Cordova v. Vick Chemical Co., (1951) 68 R.P.C. 103. In that case, Lord Radcliffe, in delivering the opinion of the

"Their Lordships consider that the Court of Appeal were right in holding that the Appellants had infringed Trade Mark 1852. They have not used the mark itself on the goods that they have sold, but a mark is infringed by another trader 1f, even without using the whole of 1t upon or in connexion with his goods, he uses one or more of its essential features. The identification of an essential feature depends partly on the Court's own judgment and partly on the burden of the evidence that is placed before it. A

trade mark is undoubtedly a visual device; but it is well established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to adentify the goods of the owner of the mark, 1t is an infringement of the mark itself to use that word

as a mark cr part of the mark of another trader, for confusion 1s likely to result. It 1s sufficient to refer to the words of Lord Cranworth L.C. in Sexio

v. Provezende (1866) L.R. 1 Ch. 192 at p.197: 'If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market, may be as much a violation of the rights of that rival as the actual copy of his device.' Decisions to the same effect are to be found un Ford v. Foster (1872) L.R. 7 Ch. 611, Orr Ewing & Coy v. Johnston & Coy. (1880) 13 Ch.D.434, Saville Perfumery Ld. v. June Perfect, Ld., (1941) 58 R.P.C. 147. The likelihood of confusion or deception in

Such case is not disproved by placing the two marks side by side and demonstrating how small 1s the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye 1s not an accurate recorder of visual detail, and that marks are remembered by general impressions or by some significant detail than by any photographic recollection of the whole."

decided by reference to the Jamaica Trade Marks Law which

correspondend with the English 1905 Act. Section 39 of that Act gave the registered proprietor of a trade mark an exclusive right of user. Nothing in the legislation

provided for infringement by use of a mark which was

-21- identical, substantially identical, or deceptively similar to the registered trade mark although that was the effect of the case law: see The Shell Co v. Esso Oil

(supra) at p.423. There was no issue in de Cordova v.

Vick Chemical Co as to whether a mark which incorporated

the totality of a registered trade mark was an infringement; the infringing mark did not incorporate the totality of,

and was plainly not identical with, the registered trade mark. Part of the infringing mark coincided with a part

of the registered trade mark which was held to be an essential feature of it. It was held that there was

infringement because confusion was likely to result.

de Cordova v. Vick Chemical Co is relevant in this matter

In large measure, the difficulties which exist in relation to this aspect of the matter seem to stem from treating s.58(1) as providing that a registered trade mark 1s infringed when the mark itself is used by a person other than the registered proprietor. Looked at it solely as a matter of statutory construction, there seems to be much to be said for according to s.62(1) the role of defining what it is which constitutes an infringement of the exclusive right of user granted by s.58(1) to the proprietor of a registered trade mark. There would be little difficulty in regarding the use of the exact mark registered, and no more or no less, as a use of a mark which is "substantially identical or deceptively

similar", and so an infringement under s.62(1). On the

exact mark registered is used as part of another mark, however incidentally and however smali a

part it may play in the other mark, there is an infringement under s.58(1) although no infringement under s.62(1) because the mark alleged to infringe is not "Substantially identical with or deceptively similar to" the registered trade mark . If the statements in the High Court in Mark Foys v. Davies

Co-op and The Shell Co v. Esso Standard Oil require

that 1t be accepted that s.58(1) does provide that use of the registered mark is an infringement, in my opinion the relevant operation of s.58(1}) is confined to the use

Accordingly, I respectfully differ from Franki J. and the learned primary judge on this point. The respondents' conduct does not, in my opinion, constitute an infringement of the appellant's trade mark by virtue of s.58(1) of the

The appellant did not rely on s.62(1) although it was a live issue in the Court below and the learned trial judge made relevant findings. However, the respondents were not in any way disadvantaged by the

course adopted by the appellant and the respondents'

-23- counsel did address us on s.62(1). Further, notwithstanding the parties' acceptance, referred to above, that if the appellant's trade mark registered in Part A of the Register 1s being infringed so are its identical defensive marks registered in Part D, I cannot, as at present advised, perceive how s.58(1) can have any significance in the determination of whether or not there has been an infringement of the defensive

As s.62(1) itself makes clear, the issue of deceptive similarity 1s to be decided by reference to the marks. The likelihood of confusion does not depend only on current user, as may be the case under s.62(2): see Marc A. Hammond v. Papa Carmine (supra.) at p.127 et seq. The test of deceptive similarity under s.62(1) is not restricted to existing confusion but extends to the possibility of confusion arising having regard to the uses to which the registered trade mark can properly be put. A finding that there is no significant confusion between the parties' businesses at this point does not negative

deceptive similarity between their respective marks.

The learned primary judge held that the inclusion of the words "Liquor Store" in the respondents' mark meant that it was not substantially identical with the registered trade mark "St. Agnes" for the purpose of

s.62(1). Reliance was placed upon Marc A. Hammond v.

Papa Carmine (supra). However, in that case, the reason why it was held that there was no substantial identity between the marks was not the addition of the words which described the defendant's business, i.e. "Pizza Hut or

Restaurant", but the word "Papa". At p.127 it was said -

"The defendant's mark includes the plaintiffs' mark, but goes beyond it and adds an additional and integral word. The defendant's mark is used only as a whole of two words and must be so considered. So considered it is not substantially identical with the plaintiffs' mark."

It is plain that the mere addition of words, for example

as in this case words descriptive of the nature of the

business in which the mark is used, will not necessarily

prevent a mark from being substantially identical with

the infringement consisted of the incorporation of part (not the whole) of a registered trade mark into

another mark. There is nothing in the decision of the Privy Council which deals expressly with whether or not use

of the totality of a registered trade mark as part of a

-25-~ mark is an infringement although the portion of the passage commencing "Thus it has long been accepted that .-." to the end of the above quotation may suggest that such was their Lordships' view. In any event, the passage

"They have not used the mark itself on the goods that they have solid, but a mark is infringed by another trader 1£, even without using the whole of it upon or in connexion

with his goods, he uses one or more of its essential features."

There 1s obvious force in an argument that, if use of an essential feature of a registered trade mark as a Mark or part of a mark of another trader is an infringement, there must be infringement if not merely the essential feature but the totality of the registered trade mark is incorporated into a mark. However, 1t is of importance to observe that the reason given in that case why use of the mark which incorporated the essential feature of a registered trade mark constituted an infringement was that confusion was likely; in the language of s.62(1) the mark held to infringe was "deceptively similar"

It is unnecessary for present purposes to conclude that a mark which incorporates a registered trade mark is, as a matter of law, deceptively similar

to the registered trade mark. The possibility ought to be

accepted that other aspects of a mark incorporating a registered trade mark may negative any likelihood of confusion or deception arising from its possible use:

cf per Windeyer J. in The Shell Co. v. Esso Standard Oil

On the other hand, it may well be that confusion would ordinarily, and in many cases inevitably, arise from the use in relation to similar goods of two Marks having the same central feature, the only difference being the addition in one of them of a description of the nature of the user's business which 1s reasonably apposite to the businesses of both parties. It 1s well established that the Likelihood of confusion is not considered by reference to the well informed and scrupulously careful

potential customer: see e.g. de Cordova v. Vick Chemical Co

(supra) and Berlei Hestia Industries Ltd v. The Bali Co Inc

The learned primary judge referred in this connexion to the existence of the suburb "St. Agnes" and to the "St. Agnes Shopping Centre", and to what he described as the long standing and exceedingly widespread practice "of proprietors naming their shops or businesses after the district in which they operate, often adding words descriptive of the type of business." I assume that he intended to convey that many people would know of the practice to which he referred and thus relate the

respondents' use of the mark "St, Agnes Liquor Store" to

~27 - the business of a liquor store at St. Agnes. It may

be that he also had in mind that, in the circumstances, although "St. Agnes Liquor Store" was used as a mark, "St. Agnes" was not used in any sense in respect of

the products sold but only as a geographical description.

prepared to reject the possibility that the fact that the appellant's registered mark and the central feature of the respondents' mark both consist of the name of the

suburb "St. Agnes" may be relevant to the question posed

by s.62(1), but I cannot accept that that fact is of decisive importance in that context. On the contrary, its principal significance, at least, seems to be in respect of s.64(1) (a). If a registered trade mark consists of a name, whether of a person ar a place, use of another mark including that name, even as a name, will often

A.H. Moore [1958] 1 Ch 907, 919-920; George Ballantine

and Sons Ltd v. Ballantyne Stewart & Co Ltd [1958] R.P.C. 273, 280-281.

In my opinion, the respondents! mark 1s deceptively similar to the appellant's registered trade mark having regard to the uses

For the reasons which I have given, I agree with the learned primary judge's conclusion that, were it not for s.64(1) (a), use by the respondents of the mark "St. Agnes Liquor Store" would constitute an infringement of the appellant's mark. The question of infringement must however be determzuned in the context of s.64(1) (a). I turn to a consideration of the

The appellant submitted that the mark used by the appellants was "St. Agnes Liquor Store", which is the name of the respondents' business, not the name of their place of business. The submission assumes that the name of a shop may not be the name of the place of the business which is conducted in that shop. In Hy-Laine Chicks Pty Limited v. Swifte, (1965) 115 C.L.R. 159, Windeyer J. said at p.161 that, notwithstanding that a trade mark "Hy-Line" was registered in relation to chickens and all other bred poultry, a partnership of poultry breeders were entitled to describe their premises as the "Hi-Line Poultry Farm and Hatchery",

In any event, in my opinion, the appellant's submission seeks to distort the statutory scheme against

the respondents. Their need to rely upon s.64(1) {a)

arises because, according to the appellant, although

"St. Agnes Liquor Store" is the name of the respondents' business, their use of their business name as a mark

in connexion with the goods in which they trade constitutes or involves a use of the appellant's registered trade mark "St. Agnes". It 1s their use, therefore, of "St. Agnes"

The next question is whether, that being so, "St. Agnes" is the name of the respondents' place of business within the meaning of s.64(1)(a). I have not derived much assistance from previous cases. No exposition of principle has occurred in any decision

Reference has already been made to Hy-Line Chicks v. Swifte (supra). Windeyer J. did not elaborate the reasons

Thompson v. B. Seppelt and Sons Limited (1925) 37 C.L.R.

305, in which he seems to have expressed the opinion at p.315 that the name of a wine growing district was not

the name of the place of business of the vignerons producing

Mulhens [1954] 1 Ch. 50, Evershed M.R., with whom Birkett and Romer L.JJ. agreed, said at p.83 that "No. 4711" in connexion with the city of Cologne

Bell St., Cologne. The number "4711" was the address of the business and had been acquired when, after Napoleon's invasion of Germany, the houses in Cologne were each given a number without regard to street names. It was further held, however, that an embellishment of the number with a bell and a scroll prevented it from

being the name of the place of business of the defendant.

For some purposes, perhaps income tax, one's place of business may be sufficiently defined by reference to whether it is in Australia or overseas. For others, e.g. a State stamp duty, the place of business may be designated by reference to the State, e.g. South Australia. In descending order, a place of business may be named by reference to the city or town, suburb, street, street number, or even a particular location such as a shopping centre. The name of each of these may be for one purpose or another the name of a place of business. The context must

Section 64(1) (a) does not speak of the address of a business and I can perceive no reason why it should be so read down. It seems to me that the protection which 1t gives to the use of

the name of the user's place of business 1s an aspect

registration of a geographical name as a trade mark (s.24(1)(d)). In my opinion it would give effect

tc that policy to hold that, provided only that the name of the place chosen is apt and accurate in its application to the business in question, the section does net require that the location of the business be described in either the fullest or the most precise terms. In any particular case the aptness and accuracy of the name chosen must be

approached as one of fact and degree. In the case of a

suburban liquor store in a suburban shopping centre the name of the suburb can, in my opinion legitimately

be considered to be the name of the place of business

(i) that 1n order to come within s.64(1) (a) the name of a place of business has to

(ii) that even if so used, the protection of s.64(1) (a) does not extend to use of the

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(i) Use as the name of the respondents' place of business

It is the received view of s.64(1) (b), which protects the use in good faith of a "description of the character or quality of .,.goods or services", that it only applies where descriptive words are used

P.H., Faulding and Co Ltd v. Imperial Chemical Industries

of Australia and New Zealand Ltd., (1965) 112 C.L.R. 537, 543 per McTiernan J., whose judgment was affirmed without reference to this point; Picot Ltd v. Goya Ltd [1967]

R.P.C. 573, 578; and James Watt Constructions Pty Ltd v.

Circle-E Pty Ltd [1970] 3 N.S.W.R. 481,493. Such a view

Whilst use of descriptive words other than as a description of goods or services would not produce a description of the goods or services, use of aname, e.g. the name of a place of business such as St. Agnes, might satisfy the literal requirements of s.64(1) (a) even though the use was not as the name

of the place of business. I do not, however, propose V4 i }

to pursue that question. If it matters, I am satisifed that, in the respondents' mark

"St. Agnes Liquor Store", the words "St. Agnes" are used as the name of the suburb of St. Agnes, i.e., as the name of the respondents' place of

In my opinion, 1t is not inconsistent with that view that the respondents' mark is frequently used by them in conjunction with the address "St. Agnes Shopping Centre, St. Agnes". As earlier noted, the respondents' mark, "St. Agnes Liquor Store" is the name of their business. The reference to "St. Agnes" in that name 1s clearly a reference to the suburb in

denotation of the suburban locality of the business in its

name does not do away with the need to append a further

(ii) Use as a mark of the name of the respondents' place of business

it may have been thought that use of descriptive words as a description of the quality of goods and services was inherently incompatible with use of the description of the goods and services as a mark in connexion with

such a view and the Act recognizes that words having direct reference to the character or quality of goods or services may be used as a mark although excluded

However, the appellant submitted that s.64(1) did not afford protection if the use, in this case of the name of the respondents' place of business,

In de Cordova v. Vick Chemical Co (supra) a defence which asserted that the appellants' use of "Karsote Vapour Rub" did not infringe the respondent's registered trade marks, which consisted of or contained the word "VapoRub", because it was claimed that the appellants' user was protected by s.44 of the Jamaican Trade Marks Law. That section provided that no registration under the law "shall interfere with any bona fide use by a person of his own name or place of business ... or the use by any person of any bona fide description of the character or quality of his goods". Lord Radcliffe, delivering the opinion of the

"There 1S nothing in the section to suggest that it 1s directed specifically, if it 1s directed at all, towards protecting use by a person of a name or place of business or description by way of a trade mark."

His Lordship went on to say that: "However that may be, it seems plain on the facts of this case that "Vapour Rub" cannot be regarded

in Jamaica as a "bona fide description" of the character or quality of the appellant's goods."

It is not possible to erect the qualified comment in the passage first quoted into an authority in favour

rejected a submission that a numbex, which constituted an address in Cologne, was, when used embellished with a scroll and a bell, used bona fide as the name of the

",.. 1t appears to me that the use of the number and device was not, and was not intended to be,

defendant's goods." The judgment was affirmed on appeal, but the Court of Appeal did not adopt the reasoning on this point, rejecting the defence on the ground that, by reason of the embellishment, what was used was not merely the number, 1.e.

the name of the place of business of the defendants: see

question by Buckley J. in T. Wall and Sons Ltd v. Walls

Whip Limited [1964] R.P.C. 197, 199, but his observations were Girected primarily to the question of good faith, and are inconsistent with his later statements when he subsequently dealt with the matter in more detail in

Steiner Products Ltd v. Willy Steiner Ltd [1964] R.P.C. 356.

On both occasions, his remarks were made ex tempore on an

interlocutory motion. In Steiner Products v. Willy Steiner

the learned judge's concern was again principally directed to the issue of good faith. However, on that occasion there was a statement at pp. 361-362 which clearly suggests acceptance of the proposition that the protection

of s.64(1) (a) may extend to use of a name as a mark.

Apart from the dicta in de Cordova v. Vick Chemical Co and what was said by Danckwerts J. in R.J. Reuter v. Mulhens there is no decision of which I am aware which

lends any support to the view of the appellant that the

protection of s.64(1) (a) does not extend to the use

There is, on the other hand, direct authority that the user's name may be used as a mark and yet attract the prorection of s.64(1) (a): see

-37- differently constituted English Court of Appeal seems to have proceeded on the assumption that that was the

correct view in George Ballantine v. Ballantyne Stewart

Ltd [1961] R.P.C. 346 the Court of Appeal moulded the injunction granted against the defendants so as to provide that they were to refrain from "infringing the Plaintiff's registered trade mark Number 569, 276 ("Parker~-Knoll") provided that this order 1s not to interfere with any bona fide use by the Defendants

of their full name "Knoll International" with or without the word "Limited" as provided by s.8 of the

to s.64(1)(a)] ...". The House of Lords affirmed this

decision: [1962] R.P.C. 265. Only Lord Denning made specific reference to the question now under consideration.

After a brief survey of the history of the matter, he

"In the light of this history, it is clear that Parliament has deliberately preserved the right of a man bona fide to use his own name as a trade mark in relation to his goods. His exercise of this right may cause confusion, but no matter. So long as he makes no false representation, he 1s safe. This right is not confined to his use of his own name as the name of his business (for example, over his shop front) but extends also to his use of it as a mark on his goods (for example, by putting it ona label) ."

It appears to have been the common assumption of both Court of Appeal and House of Lords that use of the name as a trade mark would be protected by the subsection: see Lord Evershed M.R. ([1961] R-P.C. at pp. 357-358); Upjohn LJ (with whom Pearson LJ agreed) ([1961] R.P.c. at pp. 363-364); and in the House of Lords, Lord Morris of Borth-y-Gest ({1962] R.P.C. at p.283), and Lord Hodson (with whom Lord Guest agreed) ([1962]

Further, there seem to me to be good reasons why, purely as a matter of construction, the permitted use of a name under s.64(1) (a), whether the name of the person or of his place of business, should extend to the use of the name as a mark. That is the meaning of "use" in the sections which provide what constitutes infringement

• reference has already been made to Mark Foys v. Davies

Co-op (supra), and The Shell Co v. Esso 011 (supra); "use" surely bears the same meaning in a subsection, s.64(1), which provides what does not constitute infringement.

Any other view deprives s.64(1) of substantive operation. Since only use as a mark can constitute infringement

use of a name other than as a mark would not be an infringement and would not need the protection of

It may be permissible to have heed of the consequences were the appellant's the correct view. The St. Agnes Liquor Store happens to be the object of

appellant's trade marks are registered in respect of both alcoholic and non-alcoholic drinks. May not the St. Agnes Hotel advertise as such in relation to such goods? And what of the St. Agnes General Store?

No doubt examples could be multiplied. Further, although in fact the respective locations of the relevant businesses of the appellant and the respondents are close by,

they could be separated by the length of Australia; there could be a suburb or town of St. Agnes, North Queensland. Are the traders there similarly limited by the law? Actual or probable confusion is not an essential element of an infringement of a registered trade mark (Saville Perfumery Ltd v. June Perfect Ltd (supra), at pp. 161 and 174), and indeed the appellant here expressly disavowed any reliance on confusion preferring to found on s.58(1) rather than s.62(1).

It may be that the present problem has been occasioned by the registration as a trade mark of a name which subsequently became a geographical name but I doubt whether that makes it unique. Despite s.24(1) (d), geographical names are sometimes registered as

The authorities, which are in the trade mark context principally concerned with the equivalent phrase

"bona fide" in the English legislation, focus attention

upon the honesty of the motives of the person who must act in gocd faith. "The words '1in good faith' are often used in statutes but rarely defined. ... the judges have to work out for themselves the meaning of it, doing the best they can to interpret the will

of the legislature in regard to it. ... To my mind,

under this statute [The English Leasehold Reform Act 1967 J}

a claim is made 'in good faith' when it is made honestly and with no ulterior motive." per Lord Denning M.R. in Central Estates (Belgravia) Ltd v. Woolgar | 1972)

any given context be decided by the subject matter.

The findings of the learned primary judge, to which I have already referred, exonerate the respondents from any want of good faith at the time they adopted their business name "St. Agnes Liquor Store"

The appellant, however, disputes that that is the only relevant time for testing good faith. In effect, it says that, since s.64(1) (a) operates to protect user of a mark which would otherwise constitute infringement, at is in respect of the user complained of that the issue of good faith must be considered; particularly in a case such as the present, in which the respondents had been alerted to the appellant's rights and went on in face of the appellant's protests, the respondents' entitlement

to proceed must have been on the footing that it was they

who took the risk that their expectations might prove incorrect; if so, they cannot further use the name "St. Agnes" as part of their mark "in good faith"

There is nothing to indicate that the respondents adopted the words "St. Agnes" as part of their business name for any reason except that "St. Agnes" 1s the name of their place of business, nor to suggest that they hoped to derive some advantage by the use of such a mark by reason of a connexion between that name and the appellant's business or by reason of the reputation enjoyed by the appellant's brandy of that brand name. The

appellant's activities afforded the respondents no reason to

adopt the new name for their business, and the _appellant's opposition afforded no sufficient

reason not to do so. The name of the suburb was a natural and obvious choice to identify the respondents' business, particularly having regard to the name of the shopping centre in which the business is located. Nothing which occurred suggested that they did in fact

obtain advantage or later sought to do so or believed

Further, in my opinion, there was no significant confusion caused by the use of the mark "St. Agnes Liquor Store". I will not repeat what I have already said. The irony is that it seems that, at least for a period, the respondents thought that there was. Was it, in those circumstances, open to the respondents to continue to use the name of

Many of the English authorities relate the test of good faith to whether or not the user's motives involved either deception or confusion. Those are the two concepts which are made relevant to

probably the judgment of the Court of Appeal, delivered by

Romer LJ, 1n Baume v. Moore (supra). At p.921, his Lordship

"The next point which was discussed before us was as to the meaning of 'bona fide' used in s.8. Danckwerts J. said that he understood 'bona fide' normally 'means the honest use by the person of his own name, without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired

by another trader': and in that sense he acquitted the defendants of any want of bona fides in the present case. We agree with the Judge's definition of the term 'bona fide' and we see no reason to attribute a different or special meaning

The mere fact in itself that a trader 1s using his own name which too closely resembles a registered trade name

of which he is aware, does not prevent the user from being 'bona fide', provided that the trader honestly thought that

no confusion would arise, and if he had no intentions of wrongfully diverting business to himself by using the name. The truth is that a man is either honest or dishonest in his motive; there is

no such thing, so far as we are aware, as constructive dishonesty. In our judgment, if a trader is honestly

using his own name, then no action will lie for infringement of trade mark,

Jacobs J. at first instance expressed the test of whether a use 1s bona fide as being whether the name used was "innocently applied to the goods or used in relation to the goods without the intention to mislead or confuse

".,.. What has to be considered in the deliberate and avowed use of the name in a form rightly to be taken as a brand name and thus to identify the goods with any others with which that brand name has become associated in the public mind. Such use could only have been innocently embarked upon, in the sense that 1ts potentiality for deceiving

or confusing purchasers and thus affecting another's goodwill was not appreciated by someone who is

-.. IT entertain no doubt that Mr H.A. Hillman was aware before the introduction upon the export market of the defendant's label A, that "Ballantine's" was a brand name well known in the market as identifying the

goods of the Plaintiffs, and I find it impossible to believe that he did not so anform his brother at the latest when he returned to England and reported his market survey. In the light of such knowledge, the adoption of any of the labels complained of, tending as their use inevitably must,

to the identification of the goods to which they were applied as being 'Ballantyne's', was not a bona fide use of the corporate name of the Defendants. It was not accordingly saved by s.8(a) from being an infringement of registered Trade Mark."

On appeal Evershed M.R., with whom Romber and Pearce LJJ

agreed, expressed the view that on the evidence no other

Buckley J. referred to both Baume v. Moore and Ballantine

one finds in the passage which I have read from the judgment of Lloyd-Jacob J., namely, the fact that, at the time that they made use of the1r corporate name

in that way, the defendants were to be taken to have known of the existence

of the plaintiffs' mark and it was of such character that their use of their own corporate name as a mark for their

product would be liable to cause confusion. In those circumstances,

to consider the circumstances surrounding that use to see whether in fact it is a bona fide use of the name within the terms and contemplation of the sub-section."

He went on to hold that in that case the user was not

in good faith, referring to the defendant's knowledge

of the existence of the plaintiff's registered trade mark and to the fact that the defendant's name was used not only as a mark in respect of the goods but otherwise appeared

on the product by way of identification of the manufacturer.

Willy Steiner and to Parker-Knoll v. Knoll International (supra)

which, like the other three English cases which I have referred to, concerned the use of a brand name in respect

of goods of the same kind as those in respect of which the plaintiff's trade mark was registered. Further, none of the English cases dealt with the question of continuing user

after confusion which had not been anticipated was found to occur.

International only Lord Denning referred to the meaning of "bona fide'. At page 275, after referring to the history of

the English equivalent to s.64(1) (a), his Lordship said:

the right of a man bona fide to use his own name as a trade mark in relation to his goods. His exercise of this right may cause confusion, but no matter. So long as he makes no false representation, he is safe. This right is

of 1t as a mark on his goods (for example, by putting it on a label). And "bona fide"

means what it says. It means honestly in good faith. So that the section means that it is

no infringement for any person honestly to use his own name, in relation to his goods, so long as he has no intention to deceive anybody and no intention to make use of the goodwill which has been acquired by another trader. I find myself in full agreement with the judgment of Danckwerts, J., in Baume & Co Ltd v. A.H. Moore Ltd [1958] Ch. 137, affirmed as he was on this point by the Court of Appeal [1958] Ch. 907.

Applying this interpretation, it seems to me that Knoll International Limited are entitied to the protection of s.8. They were absolutely honest throughout. Their use of their own name was entirely bona fide. They made no false representation at all. It may have been likely to cause confusion, but this must be endured, lest the plaintiffs be allowed an unfair monopoly of the name KNOLL. The protection extends to the defendants' use of their own name, "Knoll International Limited", and also to the natural abbreviation of it to "Knoll International" omitting the word "Limited". But I would not extend the protection so as to authorise the further abbreviation to "Knoll" alone without the word "International". The user which is protected is the honest user of a man's ordinary name - the name by which he 1s usually known. A further abbreviation, which reduces it to less than his ordinary name, is not protected if the likelihood of confusion

Upon this part of this case, therefore, I find myself in agreement with the Court of Appeal."

In his judgment in the Court of Appeal in the same case, Upjohn LJ, with whom Pearson LJ and it seems Lord Evershed MR agreed, referred on two occasions to the views of the Court of Appeal in

pages 363 and 364), described the construction adopted

by the Court in that case as one which was an his opinion "very favourable to the registered proprietor" (page 364), and said at page 363:

"I cannot myself agree with Mr Tookey's submission that a user ceases to be bona fide when likelihood of deception is brought to the notice of the alleged infringer; that would deprive the section of its plainly avowed object of protecting the person

Windeyer J. seems plainly to have considered (see page 161) that s.64(1) (a) entitled the defendants to continue to use a name which they had been using prior to the registration of the plaintiff's trade mark. It does not seem to have occurred to his Honour that the user would cease to be

in good faith if they became aware that confusion was occurring. On the contrary, at page 161 and 164 he said:

"That there is a possibility of confusion in the concurrent use of the same word in the same field, although for different purposes, I do not doubt. But this is no reason for depriving

the defendants of their right to sell chicken; or of their right to call their farm by the name they had called it before the plaintiff adopted the same Mame as its trade mark for chicken; or of their rights to describe chickens from their farm as from their farm."

the respondents sold their product as "Club Soda", a registered trade mark of the appellant. Lord Morris, in delivering the opinion of the Privy Council, said

"The respondents erred, unwittingly at first. But as they persisted in their error after their attention was called to the fact that they were infringing the appellant's rights, their conduct in the eye of the law amounts to fraud, and they must be held responsible for the consequences."

(No. 2), [1957] V.R. 731, Martin J. referred to Cochrane

"From some time in 1951 he knew that the plaintiff was objecting to the use of the name "Ronson" by his company and persistence in that use after knowledge amounts to fraud in the eye of the law."

that even if a trade name is innocently come by it may be fraudulent to continue to use it on discovering that its use

is likely to deceive the public to the detriment of another trader whose business is already 1dentified with

the same or similar name. That statement of the law is, of course, consistent with both principle and authority. But it cannot be asserted that in every case where A 1S using a name which has an established reputation in connection

case he would be entitled to protection in relation to it, it will be fraudulent for B who has independently and in good faith adopted the same or a similar name in connexion with his own business, to continue to use it on discovering the position in regard to A. Whether it will be fraudulent or not to do so must depend upon the answer to the question whether or not there was a genuine likelihood of deception of the public and consequent detriment to A. Unless there is, I cannot see why B's genuine

business ~- which ex-hypothesis he has honestly established under or in

association with the challenged name - should be interfered with and perhaps even destroyed, on the complaint of A."

No doubt, s.64(1) may appropriately be regarded as a qualification of the provisions which define what constitutes infringement, including s.62(1) which speaks, inter alia, of a mark which is "deceptively similar" to a registered trade mark. Thus, by virtue of s.64(1), use of even a "deceptively similar" mark will not constitute an infringement if, other conditions being satisfied, the deceptively similar mark is used in good faith. It does not, however, follow that even in such a context knowledge of confusion or a belief in the likelihood of confusion can be excluded from a consideration of "good faith". Use of a mark which is "deceptively similar' to a registered trade mark 1s not necessarily likely to cause confusion. As I have already pointed out, the test of deceptive similarity for the purpose of s.62(1} is not related

However, in my opinion, neither the language of the statute nor the authorities establish that it is always sufficient in order to demonstrate an absence of good faith in relation to the continued use of a mark merely to show .confusion accompanied by a belief on the part of the alleged ianfringer that the confusion 1s the product of his use of the mark. On the other hand, it does seem to me that the alleged infringer's belief as to the likelihood of confusion, or his knowledge of actual confusion, will often if not always be relevant to the assessment of his good faith. It is, of course, a mere exercise in futility for an alleged infringer to intend, or hope for, the opposite of what can be seen

I can perceive no reason to substitute some other test related to confusion for the statutory test of "good faith" or to attempt to define what the statutory test involves beyond stating that it requires an investigation of the motives for the use of the mark which is alleged to infringe, which inquiry will no doubt frequently include reference to the probable and actual consequences of the user. Beyond that, the

question of "good faith" is one of fact and degree.

In the present case, I do not think that there is any likelihood of significant confusion in the future. More importantly I am of opinion that, whilst the businesses continue as at present, the respondents will not, by their use as a mark of theit business name ancluding the name "St. Agnes", either damage. or derive any benefit from, the appellant's goodwill and that they do not, and never

No one could be misled for a moment by the respondents' sale of the appellant's "St. Agnes" brandy. The parties' respective businesses, whilst situated in close proximity, are considerably different in character. More ampozxtantly, since one must not for such purposes assume a sophisticated or informed customer or potential customer, there is no significant reputation possessed by the appellant in respect of its trading operations as distinct from the brand name of its brandy. The publicity from these proceedings will have removed the last vestiges of any risk that those likely to deal with either the appellant at Tea Tree Gully or the respondents at the St. Agnes Shopping Centre will associate the two. The litigation has, in effect, permitted the appearance of confusion which has troubled the appellant to be better understood and ensured that there is no cause for

In short, in my opinion, the respondents can as matters presently stand use their business name in good faith. I say nothing of what may be the position in the future if the appellant exercises further rights which it has by virtue of its registered trade marks and thereby perhaps alters the context in which the use by the respondents of their mark falls for consideration. I consider that the appellant is not entitled to an injunction restraining infringement of its registered trade marks. Refusal of the injunction is, at least in this case, preferable to the course adopted in Parker-Knoll v.

In my opinion, the appellant could not hope to establish that, in the circumstances, by the use of the business name "St. Agnes Liquor Store", the respondents were representing that some association existed between themselves and the appellant as the

I have stated that otherwise the appellant's business had no significant reputation in connexion with the name "St. Agnes". There was therefore no possible basis for a claim that the respondents by their use of their business name were representing that their business was connected with or was that

It would, of course, be impossible to conclude that the goods which the respondents sold under their various brand names were, apart from the appellant's "St. Agnes" brandy, sold as the goods of

In my opinion, the respondents' use of "St. Agnes" in its trading name could not realistically be taken to indicate an association with the appellant

its business or its products; its denotation was purely

further the applicant's claim for any injunction to restrain

3. Conclusion In the circumstances there is no need to consider

the matters raised by the respondents by way of defence.

T certify that this ané@ the Fifty. three (sa) proceding Larges ava a trve cory of the