F H Faulding & Co Ltd v Imperial Chemical Industries &c. Ltd [1965] HCA 72;

F H Faulding & Co Ltd v Imperial Chemical Industries &c. Ltd [1965] HCA 72; - HCA 1965 case summary — Zoe

[17]

8. The defendant is the manufacturer of a cream claimed to serve a similar purpose to the plaintiff's cream. It may well be that the chemical composition of the creams are different, but as in the case of the plaintiff's product, the defendant's cream is "a multi-purpose cream". There is no evidence to establish when the defendant's cream was first manufactured in Australia, but it is clear that until the end of 1962 it was put up for sale to the public in a blue and white carton and described as "Two Purpose Protective Cream". The word, BARRIER, does not appear on this carton nor does it appear in the tube or leaflet of the package. In January 1963 the design of the defendant's carton, tube and leaflet radically changed although, in size, the carton and tube remained much the same. The carton presently marketed is oblong - five inches by one and one-quarter inches by one inch approximately. But whereas in the old carton the dominant colour was blue, on the new one it is a bright orange. The orange colour is the background for lettering on three sides and at both ends. On the fourth side white is retained as a background for the black lettering of the directions. On three sides and in slightly less than one-half inch white block letters the word, SAVLON, appears ; underneath it in very small lettering the words Trade Mark ; then underneath these words again in block letters about one-eighth of an inch high are the words Hand Protective Cream. Those five words occupy about three inches across the length of each of the three sides of the carton. On the remaining two inches of the carton on three sides appear the words: - a BARRIER cream. They appear in white lettering against a black background superimposed on the overall orange colour, the black background being in design an oblong "box" approximately one and one-half inches by one-half inch and set at a slight inclination to the horizontal. The letter "a" and the word "cream" are slightly less than one-eighth inch in height (that is not quite the same height as the words, Hand Protective Cream, that appear adjacent to them as above described). The word BARRIER is in white letters about one-quarter inch high. At either end of the carton appear the words Savlon Hand Protective Cream and the insignia of the defendant. The tube is again orange and white in colour, the white being used as a background for the directions for use. Apart from being scaled down overall very slightly the design and lettering on the "front" of the tube are identical (except in one respect) with the design on three sides of the carton. The one exception is that the black oblong "box" as above described in which the words a BARRIER cream appear is edged on the tube with a thin white line or border. The leaflet describing the product again uses the words A Barrier Cream. Perhaps the only other general comment that should be made is one relating to the difference in size of the plaintiff's and the defendant's tubes of cream. The defendant's cream is packed in tubes the contents of which are exactly half that of the tubes of the plaintiff. (at p542)

[31]

22. A considerable number of pharmacists gave evidence on the defendant's side by affidavit: many of these were cross-examined. Their evidence shows that in their experience of the trade the words Barrier Cream do not connote the plaintiff's product but simply a particular class or type of protective cream. Some said the words "protective" and "Barrier" in this connexion were synonymous and could be and were used interchangeably. It was proved that the Australian Journal of Pharmacy is taken by the majority of pharmacists in Australia, and several articles extracted from various volumes of that journal are in evidence dating from as far back as 1943. The extracts prove a usage of the term Barrier to describe a class of preparations having the properties of skin protective cream. The plaintiff's "BARRIER" CREAM, of course, is within this class but the term Barrier is clearly not used in these publications to refer solely to it. The words Barrier Creams are found in Martindale's Extra Pharmacopoeia. In both the 1951 and 1958 editions of that work they are used as the generic word for certain types of creams having a particular purpose. It is stated in the 1958 edition under the heading "Barrier Creams" that they are "ointments, creams or lotions used to prevent damage to the skin by mechanical, chemical or bacteriological action". It was established that the Extra Pharmacopoeia is a valuable reference work and used widely by pharmacists in Australia. Another publication which is in evidence is entitled "The Prescription Proprietaries Guide" (1963). It mentions "Barrier Creams" and gives a cross-reference "see Kerodex". There is no reference in this book to the plaintiff's "BARRIER" CREAM. Mr. Opas suggested that the book is unreliable. But whatever its accuracy it has a wide circulation among pharmacists and provides evidence of a trade use of the word BARRIER unconnected with the plaintiff. Mr. Roache, the managing director of Kerodex Pty. Limited, a witness for the defendant, was unable to suggest how the Kerodex lines mentioned in the book (Kerodex 51, 71 and 81) came to be listed since they are available without prescription. (at p547)

[49]

3. The matters were heard together by McTiernan J., who dismissed the action and ordered that the Register be rectified by inserting after the word "pharmacy" the words "other than skin protective creams". The decision in each matter was given by reference to s. 56 and upon findings, supported by ample evidence, that there is a well-known and established use of the term Barrier in connexion with hand protective creams of a type to which the appellant's Barrier Cream and many others all belong and that this well-known and established use is by persons carrying on a trade in those creams other than the appellant. The respondent had relied upon s. 56 in its defence, and in its notice of motion for rectification of the Register it had relied exclusively upon that section, in conjunction, of course, with s. 22. But by an amendment of the defence made on the day before the hearing the denial of the validity of the registration and the allegation that the entry wrongly remained on the Register were supplemented by an allegation that the trade mark was not at the commencement of the action distinctive of the goods of the appellant. The relevance of this was to s. 60 and perhaps to s. 61 ; for under each of those sections it is an answer to a reliance upon a period of registration as conclusive of validity that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor. No similar amendment seems to have been made to the notice of motion for rectification of the Register, but on the argument of the appeals we were assured by counsel, without distinction between the two proceedings, that before McTiernan J. the case was made by the respondent that the appellant's trade mark was not inherently adapted to distinguish the appellant's goods and that on the evidence distinctiveness did not in fact exist. Indeed his Honour said in his reasons for judgment that the respondent had relied upon the submission as to lack of distinctiveness made in the action to support the motion. (at p553)

[50]

4. The question of distinctiveness was, I think, the crux of the case ; but it was overshadowed at the hearing by the respondent's contentions based upon s. 56. That section, however, appears to me to be directed to a case of a different sort. It begins by enacting in sub-s. (1) the general proposition that subject to the section the registration of a trade mark does not become invalid by reason only of the use, after the date of the registration, of a word or words which the trade mark contains or of which it consists "as the name or description of an article or substance". Then sub-s. (2) provides for two classes of cases in which the succeeding sub-sections are to have effect, the succeeding sub-sections including sub-s. (3) by which the registration of a trade mark consisting solely of the word is deemed to be an entry remaining wrongly in the Register in respect of the article or substance or any goods of the same description, and sub-s. (5) (a) providing that for the purposes of legal proceedings the rights of the registered proprietor to the exclusive use of the word in relation to the article or substance or any goods of the same description (where the trade mark consists solely of the word) shall be deemed to have ceased. The first of the two classes of cases mentioned in sub-s. (2) includes the case where there is a well-known and established use of the word "as the name or description of an article or substance" by a person or persons carrying on a trade in that article or substance, not being use in relation to goods connected in the course of trade with the proprietor of the trade mark. The second class is that in which the article or substance was formerly manufactured under a patent, a period of two years or more has elapsed after the patent has ceased, and the word is the only practicable name or description of the article or substance. The language of the section makes it necessary, I think, to distinguish carefully between, on the one hand, a word which in well-known and established use is employed as a descriptive epithet in conjunction with a substantive, so that only the composite expression is used as the name or description of an article or substance, and, on the other hand, a word which in well-known and established use is employed "as", i.e. as constituting by itself, the name or description of an article or substance. The tenor of the section, as I read it, confines the application of the provision to a word of the second kind. To satisfy the provision, it is not enough that a word is in use as part of the name or part of the description: what is required is that the word be in use as the whole name or the whole description. The evidence which the learned Judge accepted and summarized in his judgment showed beyond question a well-known and established use of the whole expression Barrier Cream as the name or description of a kind or class of skin protective creams ; but there is nothing in the evidence to suggest, nor is it now contended, that the word Barrier is used or has ever been used as the name or description. It is of course used descriptevely, but that is not to say that it is used "as" the description, or even "as" a description. In my opinion the respondent's reliance upon s. 56 was misplaced, for (to express the reason shortly) it depends upon maintaining the somewhat bold proposition that the use of a word as an adjective is a use of it as a substantive. (at p554)

[52]

6. As the Court observed in Eclipse Sleep Products Inc. v. The Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300, at p 310 , it would be extremely difficult for a word disqualified under par. (d) as descriptive to qualify under par. (e) as distinctive. It is not only difficult but surely impossible where the descriptiveness of the word refers to the distinguishing characteristic of a whole class of goods of which the goods of the proprietor are but examples. That this is the case with Barrier as applied to skin protective creams is put beyond doubt by the evidence in this case. But for the evidence, it might have been said that the word, though inherently suited to be used adjectivally for the purpose of referring to the distinguishing characteristic of skin protective creams generally, is not one which would spring instantly to the mind of a person who wanted a word for the purpose but had never known Barrier to be so employed. This might have been said with the general principle in mind that the question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods: Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 ; Eclipse Sleep Products Inc. v. The Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300, at p 310 ; Clark Equipment Co. v. Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 . But the evidence shows clearly, and it satisfied the learned primary Judge, that Barrier has long appealed to persons in industry, in pharmacy and in allied occupations as meeting their need for a word to describe succinctly and yet exactly the essential characteristic of protection which distinguishes the whole of the relevant class of creams. In particular there has been since about 1945 a growing use of the word to describe creams designed to protect workers in industry from contracting dermatitis, and there was an earlier usage of the word in such expressions as "barrier agents" and "barrier substances". In published matter that was put in evidence the expression Barrier Creams has been used over many years (as the learned Judge observed) "in a way which would show to the ordinary reader with no technical training that the writers are referring to a class of protective creams and not specifically to the plaintiff's product" (1964) 112 CLR, at p 544 . The evidence satisfied his Honour "that in describing its cream as Barrier Cream the defendant was using the word Barrier as a reference to the character or quality of its cream and that the word Barrier can be regarded as a correct description of the creams" (1964) 112 CLR, at p 544 . The following passage from his Honour's reasons for judgment is in point: - "A considerable number of pharmacists gave evidence on the defendant's side by affidavit: many of these were cross-examined. Their evidence shows that in their experience of the trade the words Barrier Cream do not connote the plaintiff's product but simply a particular class or type of protective cream. Some said the words 'protective' and 'Barrier' in this connexion were synonymous and could be and were used interchangeably. It was proved that the Australian Journal of Pharmacy is taken by the majority of pharmacists in Australia, and several articles extracted from various volumes of that journal are in evidence dating from as far back as 1943. The extracts prove a usage of the term Barrier to describe a class of preparations having the properties of skin protective cream. The plaintiff's 'BARRIER' CREAM, of course, is within this class but the term Barrier is clearly not used in these publications to refer solely to it. The words Barrier Creams are found in Martindale's Extra Pharmacopoeia. In both the 1951 and 1958 editions of that work they are used as the generic word for certain types of creams having a particular purpose. It is stated in the 1958 edition under the heading 'Barrier Creams' that they are 'ointments, creams or lotions used to prevent damage to the skin by mechanical, chemical or bacteriological action'. It was established that the Extra Pharmacopoeia is a valuable reference work and used widely by pharmacists in Australia. Another publication which is in evidence is entitled 'The Prescription Proprietaries Guide' (1963). It mentions 'Barrier Creams' and gives a cross-reference 'see Kerodex'. There is no reference in this book to the plaintiff's 'BARRIER' CREAM. Mr. Opas suggested that the book is unreliable. But whatever its accuracy it has a wide circulation among pharmacists and provides evidence of a trade use of the word BARRIER unconnected with the plaintiff" (1964) 112 CLR, at pp 546, 547 . (at p556)

[62]

5. Section 56 made its first appearance in this country in trade marks legislation in the Trade Marks Act 1955. It was undoubtedly modelled upon s. 15 of the Trade Marks Act, 1938 (Imp.). The object of the latter section, in so far as it relates to use of a word mark by persons other than the registered proprietor, was, it is said "to remove to some extent the difficulty experienced in dealing with marks which had lost distinctiveness after registration". (Halsbury's Laws of England 2nd ed., vol. 32, p. 601). Prior to the enactment of this provision the mere loss of distinctiveness of a trade mark after registration was not thought to constitute a ground for its removal from the Register and in the Gripe Water Case (1915) 32 RPC 173 the defendant, which had used the plaintiff's registered mark which, itself, was found to have entirely lost its distinctiveness after registration and before the commencement of the proceedings, successfully resisted a claim for an injunction in a passing off suit but failed in its application for expungement of the mark and was restrained from infringing it. The mark was, it may be observed, an old mark and the provisions of s. 44 of the English Act of 1905 - "No registration under this Act shall interfere with any bona fide use by a person of his own name or place of business or that of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods" - were held not to apply to it. Some little doubt has been thrown on the proposition that mere loss of distinctiveness after registration was not in England prior to 1938 a ground for the removal of a mark from the Register (See Kerly on Trade Marks 5th ed. (1923) p. 319) but the relatively few cases on the subject were discussed by Wynn-Parry J. in the Pan Press Publications Case (1948) 65 RPC 193 and his conclusions support the view taken in the Gripe Water Case (1915) 32 RPC 173 . However, in 1933 Mann J. in James A. Jobling & Co. Ltd. v. James McEwan & Co. Pty. Ltd. [1933] VicLawRp 27; (1933) VLR 168 held that the trade mark "Pyrex" should be expunged from the Register on the ground that since registration it had ceased to be distinctive of the proprietor's goods and had, since the expiry of the proprietor's patent relating to such goods, become the name of or purely a description of a type of product with its own special properties and not distinctive of goods of the proprietor's manufacture. His Honour referred to the fact that there was not in force in Australia any provision such as that then to be found in s. 6 of the English Trade Marks Act, 1919 but he considered that section to be "merely declaratory of the existing law" (1933) VLR, at p 174 . But he does not seem to have acted on this view: rather he found in s. 53A of the Trade Marks Act 1905-1922 (the equivalent of s. 44 of the English Act of 1905) sufficient justification for saying that the mark wrongly remained on the Register. His Honour considered that support for the course which he took was to be found in In re Sidney Ord & Co.'s Trade Mark (1913) 30 RPC 725 but, with respect to his Honour, I think this proposition cannot be supported. (at p560)

[64]

7. The question then is whether the proved "well-known and established use" of the term "Barrier" in relation to skin protective creams brought the case within s. 56. For the appellant it is asserted that it did not, because the proved use was not a use of the term as the "name or description of an article or substance". "Barrier", alone, it was said, was neither the name nor description of any "article or substance". These contentions were raised notwithstanding his Honour's finding that the term "Barrier" had achieved a well-established use in the trade to describe creams a characteristic of which is that they operate, when applied externally, to prevent parts of the body from coming into contact with deleterious substances. As such it was a term used in the trade as early as 1943 to describe such creams by reference to a fundamental characteristic and, of course, it was found that there was a well-known and established use of the word by persons, other than the appellant, carrying on a trade in such products. This finding rested upon evidence which showed that the respondent and others had over an extensive period marketed skin creams described as "Barrier Creams". The respondent had marketed SAVLON - "A BARRIER CREAM" - so described both on the carton in which it was packed and on an enclosed instructional leaflet. Another company and its predecessor had, since 1955, marketed a variety of protective creams described in advertising matter and instructional literature as "Kerodex Barrier Creams". The evidence in relation to this use of the term "Barrier" is referred to in some detail in the reasons given by the learned Judge of first instance and, to my mind, it established the use of that term as a "description" of substances manufactured for use as skin protective creams. It is true, of course, that the name "Barrier" does not, when used in isolation, designate skin protective creams but it is unnecessary, in order to bring a case within the purview of the section, to establish that the word in question has been used as the name of an article or substance ; it is sufficient, in my view, if it amounts to a description when applied to some specific article or substance. Here, of course, the specific substance with which we are concerned is skin protective creams and when used as an adjective in relation to that substance it is a descriptive term. As such it constitutes, in my opinion and with respect to those who think otherwise, a "description" of such products within the meaning of s. 56 (2) (a) of a form of skin protective cream. Were it otherwise a curious anomaly would arise. If the appellant's registered mark were "Barrier Cream" then the case would clearly fall within s. 56 ; but that would not be so where, as is the case here, the registered mark consists simply of the term "Barrier". The conclusion to which I have come is, I think, supported by the observations of Lloyd-Jacob J. in In re Wheatcroft Bros. Ltd.'s Trade Mark (1954) 1 Ch 210, at p 223 who stressed the fact that, unlike ss. 9 and 11 of the English Act of 1938, s. 15 was concerned "with what has developed after the date of registration" and went on to observe that if the lastmentioned section "be closely examined, it will be found that it contains a positive direction to deem as wrongly registered any mark which by reason of concurrent use in a descriptive sense could occasion deception or confusion" (1954) 1 Ch, at p 223 . In the present case it was established that there was a concurrent use in a descriptive sense of the word "Barrier", that such use was proved to have existed over an extended period and that it was a well-known and established use by persons carrying on trade in skin protective creams. (at p562)

[67]

WINDEYER J. I consider that this appeal should be dismissed for the reasons given by my brother Kitto. The word "Barrier", essentially descriptive of purpose or function, was not at relevant times distinctive and to allow it to remain on the Register in connexion with protective creams would cause confusion. I wish to add only some remarks on s. 56 of the Act. In this case I think that provision has no direct application because there was no evidence of a well-known and established use of the word "Barrier" as itself the name or description of an article or substance within the area of things in question. It seems that only when used adjectively in conjunction with the word "cream", or perhaps some other word such as "ointment", would the word "Barrier" have designated a protective cream. The words "name or description" in s. 56 probably elude useful paraphrase ; but I think that they refer to the use of a word sufficient of itself to indicate a thing of a particular kind. It is for this reason only that I think s. 56 can be disregarded in this case. It is not because, as was suggested in the course of argument, the word "Barrier" is descriptive of a function of a protective cream rather than of the article or substance itself. Any adjective used to describe the origin, function or other quality of a thing is capable of becoming a substantive. When it does so it gets its meaning from the area of discourse, the original substantive becoming first unexpressed but understood and in course of time unnecessary. To avoid taking particular trade names as illustrations, I simply give as examples of what I mean, pekinese when dogs are spoken of, burgundy when wine, and overalls when garments. The word "Barrier" could, I suppose, come into use in this way as the name or description of an article or substance, so that a person wanting some of that substance would ask in a pharmacy for a tube or a jar of barrier. But there is nothing to suggest that this has happened. (at p563)

At a glance

Court

Decision date

Before

Source

Judgment (67 paragraphs)

F H Faulding & Co Ltd v Imperial Chemical Industries &c. Ltd [1965] HCA 72; (1965) 112 CLR 537 (30 June 1965)

Parties

Legislation Cited (3)

Cases Cited (3)