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

Federal Court of Australia|1982-06-18|Before: Fitzgerald JJ, Franki J

Trade Marks - infringement of registered trade mark - use of registered trade mark as a trade mark - proprietor's

exclusive right to use - whether substantially identical or deceptively similar - whether use in good faith of

; name of business or of place of business - passing off.

Trade Marks Act 1955 ) ss.58(1), 62(1), 64(1) (a), 65, 96

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".

At a glance

Court

Decision date

Before

Catchwords

Source

Catchwords

Judgment (537 paragraphs)

Cited By (2)