Melbourne, 1964, February 12, 13, 17-20, 25-27; March 2, 4-6, 10;

APPEAL from McTiernan J. ACTION and MOTION under the Trade Marks Act 1955-1958 (Cth).

MCTIERNAN J. delivered the following written judgment:

This is an action for the infringement of a registered trade mark. The Industries of Australia and New Zealand Limited are manufacturing chemists. The plaintiff is the registered proprietor of a trade mark consisting of the word BARRIER in Pt A Class 3 of the Register in respect of "chemical substances prepared for use in medicine and pharmacy". Registration was granted on 31st May 1943. (at p539)

2. By its statement of claim the plaintiff alleges that since that time it has used and continues to use this trade mark throughout Australia in relation to a skin protective cream manufactured and distributed by it for use on the hands and that the defendant has infringed the mark by using a substantially identical mark in relation to goods in respect of which the plaintiff's mark is registered. The defendant denies the alleged infringement. It sets up defences under s. 56 (2) (a) and (5) and s. 64 (1) (b) of the Trade Marks Act 1955-1958 (Cth). It was also submitted for the defendant that when the alleged infringement began the mark BARRIER used in relation to hand protective cream had ceased to be distinctive of the goods of the plaintiff and the action should also fail for that reason. (at p539)

3. In a "counterclaim" the defendant sought an order under s. 22 (1) (b) expunging the plaintiff's mark from the Register or, alternatively, an order requiring the plaintiff to disclaim any right to the exclusive use of the word BARRIER in relation to "substances of the type commonly known as barrier creams". A counterclaim is not an appropriate way of applying for such relief. Subsequently to the issue of the writ the defendant filed a motion by which it seeks relief similar to that asked for in the counterclaim. The notice of motion states that it is brought under s. 22 (1) (b) and s. 56 of the Act upon "the ground that there is a well-known and established use of the word 'Barrier' as the name and description of a substance by persons carrying on trade therein, not being use in relation to goods connected in the course of trade with the respondent or any registered user of the respondent's said trade mark, namely as the description and name of substances used to protect the skin, and described and known as 'barrier creams'". At the hearing the defendant relied upon the submission as to lack of distinctiveness made in the action to support the motion. The case of James A. Jobling & Co. Ltd. v. James McEwan & Co. Pty. Ltd. ; In re James A. Jobling & Co. Ltd.'s Trade Marks [1933] VicLawRp 27; (1933) VLR 168 was cited in connexion with this submission. The action and the motion were heard together. (at p540)

4. The plaintiff is both a manufacturing chemist and a wholesaler of medical and pharmaceutical preparations. It distributes certain preparations made by the defendant. Both the plaintiff and the defendant carry on business throughout Australia. Since the year 1941, the plaintiff has manufactured and marketed a skin protective cream which it sells under the name of "BARRIER" CREAM. It is a manufactured or prepared chemical cream designed for external application to the body for the purpose of preventing deleterious substances from coming into direct contact with the skin. The following are some of the uses to which it is claimed that the cream may be put. It may be applied to the hands before gardening to prevent dirt from becoming ingrained into them ; it may be used by mechanical engineers to prevent grease or oil from soiling the hands ; it may be used in industry by workmen to prevent their contracting dermatitis ; and it may be used by women to prevent cracking and drying of hands that have been immersed in water or exposed to cold winds. The same cream is marketed for all such purposes ; the plaintiff calls it a multipurpose cream. (at p540)

5. The evidence shows that in 1941 there were but few manufacturers of creams of this type in Australia. Mr. Phillips, the managing director of the plaintiff, said that his company turned its attention to the production of a cream of this type because of the growing need to deal with absenteeism from work resulting from industrial dermatitis. First the plaintiff marketed the cream which it manufactured for skin protective purposes for use in industry. Subsequently in 1947 or 1948 it began distributing the cream for more general use by selling it in tubes to retail stores and pharmacies. Initially the plaintiff described the product as a "Non-Greasy Ointment Base and Skin Emolient". Mr. Phillips says that after other companies commenced research into the problem of industrial dermatitis and possible methods of prevention it became necessary for the plaintiff to use a shorter name to refer to its product. At his suggestion the plaintiff adopted the word BARRIER and began to use it as a trade mark late in 1941. Before Mr. Phillips chose the word BARRIER it had already been used in England to describe products having a similar purpose to the plaintiff's cream. He was loath to admit it was other than a coincidence that he selected BARRIER as the company's trade mark for its own product. (at p540)

6. It is proved by the evidence that the volume of sales of the plaintiff's cream in tubes over the counter in pharmacies and stores became far greater than sales in larger containers to industry. The figures produced by the plaintiff and the evidence given by Mr. Phillips show total sales during the period from 1950 to 1962 amounting to about 1,300,000 pounds. (at p541)

7. The plaintiff's tubes of "BARRIER" CREAM are packed in oblong cartons approximately six inches by one and one-half inches. The carton is dark blue in colour on two sides and at both ends, and there is a lighter blue on the remaining two sides where directions for the use of the cream are given. The directions are printed in the dark blue colour. On the lighter blue sides at the top and at the bottom there is a one-quarter inch dark blue band the length of the carton upon which the following words in white block letters appear:

"Barrier Creams for Industrial Use.

Another Wonderful Faulding Product".

"Barrier Cream for Nursery and Home

Another Wonderful Faulding Product".

On the dark blue sides of the carton, either side of which might be regarded as the "front" of the carton, the words "BARRIER" CREAM appear. These are in the upper half of each side in white block letters about one-half inch high. Lower down on the same side appear the words "Soothing Skin Protective" in dark blue upon an oblong strip of lighter blue background. On each end of the dark blue side there is the representation of a human hand in white. At each end of the carton appear the words "BARRIER" CREAM and the same representation of a human hand. The tube exhibits the same colours, dark blue, light blue and white and the words "BARRIER" CREAM are prominently featured: the "front" of the tube being in design much the same as the "front" of the carton as above described. A leaflet packed in the carton and around the tube provides instructions for use and contains other advertising material. There is no evidence that the design of this pack has ever changed. (at p541)

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)

9. The use of the word BARRIER of which the plaintiff complains is its use on three sides of the carton on the tube and on the leaflet. It is said that the word is used as a trade mark substantially identical with the plaintiff's registered trade mark "in the course of trade in relation to goods in respect of which the registered trade mark is registered". (at p543)

10. The action is based on s. 58 (1) of the Trade Marks Act 1955- 1958. The defendant does not dispute the fact of the plaintiff's registration of the word BARRIER. Section 62 (1) of the Act provides as follows: "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 using by way of permitted use, uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade, in relation to goods in respect of which the trade mark is registered". (at p543)

11. It is convenient first to deal with the defence based on s.64(1)(b). This provision is as follows: "Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of a trade mark: - . . . (b) the use in good faith by a person of a description of the character or quality of his goods". The verbiage varies somewhat from s. 53A of the Trade Marks Act 1905-1948 (Cth). Section 53A was in these terms: "No registration under the Act shall interfere with any . . . use by any person of a bona fide description of the character or quality of his goods". Lord Herschell said in Eastman Photographic Materials Company Ltd. v. Comptroller-General of Patents, Designs, and Trade-Marks (The Solio Case) (1898) AC 571 : ". . . it would obviously have been out of the question to permit a person by registering a trade-mark in respect of a particular class of goods to obtain a monopoly of the use of a word having reference to the character or quality of those goods. The vocabulary of the English language is common property: it belongs alike to all ; and no one ought to be permitted to prevent the other members of the community from using for purposes of description a word which has reference to the character or quality of goods" (1898) AC, at p 580 . His Lordship made these observations with respect to a provision corresponding to s. 24 (1) (d) of the present Australian Act. I think that these observations are apposite to the policy inspiring a provision of the nature of s. 64 (1) (b). (at p543)

12. What this provision protects is the use of a mark that is genuinely descriptive of the character or quality of goods in connexion with which it is used, where the use is purely for the purposes of description. "The object of this section (s. 53A) is not to afford a guide as to whether a word is adapted to distinguish the goods of the proprietor of the trade mark from those of other persons. It is intended only to protect traders in the bona fide use of a word which has been registered and must be treated as adapted to distinguish such goods": Eclipse Sleep Products Inc. v. The Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300, at p 323 . This statement applies, in my opinion, to s. 64 (1) (b). (at p544)

13. The defendant contends that the use of the word BARRIER on the cartons and tubes bearing its trade mark SAVLON and the words Hand Protective Cream falls within the protection of this provision. The same contention is made with respect to the word BARRIER in the leaflet enclosed in each of these cartons. (at p544)

14. The evidence called by the defendant, in support of this defence, points to a growing use since 1945 of the word BARRIER to describe creams designed to protect workers in industry from contracting dermatitis in the course of their employment. There was an earlier usage of the word in such expressions as "barrier agents" and "barrier substances". I was referred to extracts from works on dermatological medicine, to articles extracted from periodicals concerned with chemical manufacture, to a series of articles in the Australian Journal of Pharmacy and to articles in the Pharmaceutical Journal. It would appear that the latter has only a small circulation in Australia. All this matter used the words Barrier Creams 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. Dr. Clarke, a specialist in skin diseases, deposed that the phrase Barrier Cream is in common use in dermatological practice in Australia to denote a protective cream or ointment for use by persons exposed to skin irritants: and is commonly used without reference to the product of any particular company. Dr. Donald, who was also a specialist in dermatological medicine, gave evidence to the same effect. This evidence satisfies me that in describing its cream as a 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. However, I think that the defendant is not entitled to the protection of s. 64 (1) (b) for the reason, as I hold, the word BARRIER in its setting on the defendant's package is not used purely for the purpose of description. (at p544)

15. It is clear from the evidence that the plaintiff's "BARRIER" CREAM probably sells better than other protective creams of its type. I refer to sales in chemist shops and stores as distinct from sales to industry. By contrast there is evidence that the defendant's SAVLON Hand Protective Cream sells very slowly. Mr. Berry, an executive of the defendant company and the general manager of its pharmaceutical section, gave evidence that because of poor results from marketing the change in the "get-up" of the defendant's package was made in January 1963. It is with these facts in mind that it is necessary to consider the defendant's new package. It has already been described in detail. The dominant colour of the carton and tube is bright orange. The word BARRIER is used on three sides of it. The attention of any person looking at the carton or tube would be drawn, perhaps, first to the word SAVLON but then immediately to the word BARRIER. On each side upon which BARRIER appears it is set over against a black background and it appears in letters at least twice as high as the letter "a" and the word "cream" which appear before and after it respectively. I am satisfied that having regard to the size of the letters and the choice of the black background which draws attention to the word BARRIER by its contrast with the orange colour that the "get-up" of the package is such that the ordinary customer might be confused into thinking that the product was the plaintiff's "BARRIER" CREAM. (at p545)

16. At least three witnesses were shown the package and asked to describe it as though they were ordering it. Each of them described the product as SAVLON Barrier Cream. I am not suggesting that these witnesses were confused that the cream that they were looking at was the plaintiff's cream, but their evidence does indicate that they were affected by the prominent use of the word BARRIER. In my opinion there is strong ground for finding objectively that the "get-up" was designed to promote the sale of the defendant's cream by exploiting the possibility of confusion. I therefore find that the defendant has not made out its defence under s. 64 (1) (b).

17. Mr. Hulme contended that it is not opern to find, on the evidence, that the defendant used the word BARRIER as a trade mark and for this reason he argued that there was no infringement within s. 62 (1). The word, although used descriptively, is, as I have found, used in effect with the object of appropriating the benefit of the reputation of the mark enjoyed by the plaintiff. I hold, therefore, that the word is used on the defendant's package as a trade mark. (at p545)

18. I turn now to the defence under s. 56. The material provisions of the section are as follows: "56 - (1) Subject to this 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. (at p546)

19. (2) The succeeding sub-sections of this section have effect where - (a) there is a well-known and established use of a 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 or a registered user of the trade mark or, in the case of a certification trade mark, in relation to goods certified by the proprietor ; (at p546)

20. (3) If the trade mark consists solely of that word, the registration of the trade mark, so far as regards registration in respect of the article or substance or of any goods of the same description, shall be deemed for the purposes of section twenty-two of this Act to be an entry wrongly remaining in the Register. (at p546)

21. (5) For the purposes of any other legal proceedings relating to the trade mark - (a) if the trade mark consists solely of that word, all rights of the registered proprietor to the exclusive use of the trade mark ; . . . in relation to the article or substance or to any goods of the same description, shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of sub-section (2) of this section first became well-known and established . . .". Sub-section (3) is material only to the motion. The onus of course, rests upon the defence to prove a well-known and established use of the word Barrier by a person or persons other than the plaintiff carrying on trade in hand protective cream. The evidence on which the defendant relies can be arranged under three heads. First, the evidence of use of the word by retail pharmacists, secondly, the evidence of use by Kerodex Pty. Limited and Innoxa Pty. Limited, both of which manufacture and market similar creams to the plaintiff's "BARRIER" CREAM and, thirdly, the use of the word in certain publications that circulate among manufacturing chemists. (at p546)

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)

23. Mr. Roache gave evidence of the use of the term barrier cream by both Innoxa Pty. Limited and Kerodex Pty. Limited, the companies manufacturing and marketing respectively the Kerodex line of products in Australia. They also market the product known as Innoxa Lip Barrier Cream. Both companies are wholly owned Australian subsidiaries of the English companies Innoxa (England) Limited and Kerodex Pty. Limited (formerly Scientific Pharmacals Limited). Until early in 1963 the Kerodex preparations were apparently manufactured and packed in England and marketed in Australia, before the incorporation of the Australian companies in 1961, through branch offices here. With a minor exception in 1963 the packages of the Kerodex lines, according to the evidence, have remained unchanged. It is clear from Mr. Roache's evidence that, at least, since 1955, when he became the representative in Australia of the English company Scientific Pharmacals Limited that that company and later Kerodex Pty. Limited have been using the term Barrier in leaflets enclosed with tubes of Kerodex 51 and Kerodex 71. The leaflets describe the Kerodex product in each case as "Kerodex Barrier Creams". (at p547)

24. It is also clear that from that time and probably earlier Kerodex 55 and 56, which are available only on prescription, have been sold to pharmacists with a "slip label" on which the same words "Kerodex Barrier Creams" appear. These Kerodex preparations are distributed in Australia through wholesale druggists, among them the plaintiff company. The Innoxa Lip Barrier Cream has been distributed in Australia for much the same period: first in a jar entitled simply "Innoxa Barrier Cream for sensitive lips" and later in a small tube entitled "Innoxa Lip Barrier Cream". Its distribution is more limited. It is restricted by franchise according to the evidence to one in six chemists in Australia. (at p548)

25. In addition to this use of the term by Kerodex Pty. Limited and Innoxa Pty. Limited it is established that Scientific Pharmacals have, at various times in the past, no doubt as an advertising medium, provided a "technical information service". The evidence is, for example, that in 1956-1957, 25,000 copies of leaflets identical to exhibit 32 were distributed and in 1958-1959, 5,000 copies of the pamphlets identical to two of those in exhibit 33 - the pamphlets being entited "Kerodex Water Repellant Barrier Creams and Gels" and "Kerodex Water Soluble Barrier Creams". About 5,000 of the industrial booklets, copies of which form part of exhibit 33, have been sent out in Australia to the relevant trade or profession to which they are directed. Moreover, since 1952, Scientific Pharmacals have sold "Kerodex Barrier Cream" under that name to employers for the use of workers in industry in Australia. The product has been marketed in containers similar to those marked exhibit 34. (at p548)

26. It is apparent from the correspondence in exhibit 25 that, as early as 1947, the plaintiff was aware of the use, in this country, of the words Barrier Cream in connexion with Kerodex products. Yet, apart from threatening letters during the period 1947-1964 to various people, who have at different times represented Scientific Pharmacals in Australia, no action was taken against it until this year. A writ has been issued but had not at the time of the hearing been served. (at p548)

27. The plaintiff called many witnesses who gave evidence that the words Barrier Cream mean in the pharmaceutical trade the plaintiff's product only. There is ample evidence to the contrary. Upon the whole of the evidence bearing on this issue I find that there is a well-known and established use of the term Barrier in connexion with hand protective creams of the type to which the plaintiff's Barrier Cream, Kerodex, Savlon 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 plaintiff. Since I have come to the conclusion that a well-known and established use of the word within the meaning of s. 56 (2) (a) has been proved, it is necessary for me in accordance with sub-s. (5) to determine when such use became well-known and established. It is upon this issue that the infringement action depends, for from that time onwards the plaintiff must be taken to have lost the right to the exclusive use of the word. I am satisfied that the word had become well-known and established within the meaning of the section at least by late 1962 when the alleged infringement began. I think it unnecessary for the purpose of the present case to determine the time with any greater precision. (at p549)

28. I have now to deal with the motion under s. 22. No point was taken by counsel for the plaintiff that the defendant is not "a person aggrieved". It follows from the finding that the defendant has made out its case under s. 56 (2) (a) that sub-s. (3) must be held to take effect and accordingly the word BARRIER must be deemed for the purpose of s. 22 (1) (b) to be an entry wrongly remaining in the Register. The defendant's motion should, therefore, succeed. (at p549)

29. It is unnecessary to deal with the submission for the defendant based upon James A. Jobling & Co. Ltd. v. James McEwan & Co. Pty. Ltd. ; In re James A. Jobling & Co. Ltd.'s Trade Marks [1933] VicLawRp 27; (1933) VLR 168 . I think that there is a difficulty in applying that decision in this case because the Act under which that case was decided contained no provisions analogous to s. 56 of the present Act. (at p549)

30. The action is, therefore, dismissed and the motion is allowed. I shall not pronounce a final order under s. 22 (1) (b) without hearing the parties on the question whether the order should be one expunging or amending the entry in the Register as to the trade mark. (at p549)

31. The plaintiff should pay the costs of the action and the motion and the costs of the motion for an interlocutory injunction which was dismissed on 4th November 1963. (at p549)

32. From this decision the plaintiff appealed to the Full Court of the High Court. (at p549)

33. P. H. N. Opas Q.C. (with him A. C. King), for the appellant. Section 56 (2) (a) of the Trade Marks Act 1955-1958 (Cth) establishes a defence where all or part of the trade mark is in well-known and established use "as the name or description of an article or substance" : but here "Barrier" has no such use, and "barrier cream", if it has such use, is not within the section as it contains more than is comprised in the trade mark "Barrier". "Barrier" is by itself neither the name of a substance or article nor the description of a substance or article. Nor can it be said that the phrase "barrier cream" is no more than a bona fide description of the character or quality of goods. In England the words "barrier cream" came to be regarded as descriptive of a class of goods, but in Australia this did not happen. The finding of McTiernan J. that the appellant was associated in the minds of the public with barrier cream is inconsistent with his finding that there were uses of the phrase not connected with the appellant's trade. There are no cases where a trade mark has been removed because after registration it became the only description of an article: W. Woodward Ltd. v. Boulton Marco Ltd. (1915) 32 RPC 173 ; James A. Jobling & Co. Ltd. v. James McEwan & Co. Pty. Ltd. [1933] VicLawRp 27; (1933) VLR 168 ; Kerly on Trade Marks 8th ed. (1960) p. 195 ; In re Wheatcroft Bros. Ltd.'s Trade Mark (1954) 1 Ch 210 ; (1954) 71 RPC 43 ; In re Leopold Cassella & Co. (1910) 2 Ch 240; (1910) 27 RPC 453 . The fact that manufacturers use a word among themselves need not show that it has an accepted meaning: Ford v. Foster (1872) LR 7 Ch 611 . McTiernan J. made no specific finding as to any well-known or established use of the word "Barrier". (at p550)

34. S. E. K. Hulme, for the respondent. "Barrier" is the name of a genus of creams ; and in the phrase "barrier cream" it is used as part of a name, and as the part of the name which distinguishes the smaller class from the larger class. In respect of the larger class of creams the word "Barrier" is the name or description. Section 56 (2) (a) includes the case where the mark is only part of the name or description. That section deals with certain particular situations ; it does not deny that other situations can lead to loss of distinctiveness with the results that used to follow loss of distinctiveness before it was enacted. Similarly the fact that original registration is deemed valid under s. 60 or s. 61 does not prevent the expunging of the trade mark as wrongly remaining, as, for example, for loss of distinctiveness. From the evidence and from the findings of McTiernan J. it can be seen that the trade mark is no longer adapted to distinguish the goods of the plaintiff, for a general use of it has developed as a descriptive word: see Yorkshire Copper Works Ltd.'s Application v. Trade Marks Registrar (1954) 71 RPC 150 ; In re Leopold Cassella & Co. (1910) 2 Ch 240 ; (1910) 27 RPC 453 . Although it is enough to show that the trade mark has not been adapted to distinguish the plaintiff's goods, it is further clear on the evidence that other persons have been using the mark ; and that it does not connote only the plaintiffhs product was expressly found by McTiernan J. Further, his Honour found that s. 64 (1) (b) did not provide a defence because the word was not used purely for the purposes of description: but this finding was based on the package of the defendant's product, and there was no evidence that anyone would be confused by the package. It cannot be maintained that the description was mala fide merely because the defendant made use of a term that had acquired a very common use. (at p551)

35. P. H. N. Opas Q.C., in reply. Whether the trade mark was used descriptively involves a finding which required the assessment of the credibility of witnesses ; accordingly the finding of McTiernan J. must be accepted. As to the other defences, s. 22 is merely procedural: Re Pan Press Publications Ltd.'s Applications (1948) 65 RPC 193, at p 201 . There is no section that implies or states that loss of distinctiveness is a defence to an infringement action or a ground for expunging, and loss of distinctiveness cannot be relied upon unless such a provision may be pointed to: W. Woodward Ltd. v. Boulton Macro Ltd. (1915) 32 RPC 173 ; see also National Starch Manufacturing Co. v. Munn's Patent Maizena Co. (1894) AC 275 ; (1894) 11 RPC 281 . The fact that some persons may have used the trade mark in reference to special classes of goods in respect of which they are protected under s. 64 (1) (b) does not mean that the trade mark has not validity in other respects.

The following written judgments were delivered:-

BARWICK C.J. I have had the advantage of reading the reasons for judgment

about to be handed down by my brother Kitto. As I am in complete agreement with what his Honour has written, I am content to adopt his reasons and his conclusions. In my opinion, for those reasons, this appeal should be dismissed. (at p551)

KITTO J. The appellant in these two appeals is the proprietor of a trade mark which was registered on 31st May 1943 under the Trade Marks Act 1905 (Cth) as amended, and accordingly is deemed by s. 5 (2) of the present Act, the Trade Marks Act 1955-1958 (Cth) to be registered in Pt A of the Register under that Act. The appellant brought an action against the respondent in the original jurisdiction of the Court, seeking an injunction and other relief in respect of alleged infringement of the trade mark. The respondent defended the action, putting the validity of the registration in issue ; and in addition it applied by motion under s. 22 of the Trade Marks Act 1955-1958 (Cth) for rectification of the Register either by expungement of the entry of the trade mark or by the insertion of a limitation. (at p552)

2. The trade mark consists simply of the word BARRIER, and the registration is in respect of "chemical substances prepared for use in medicine and pharmacy". The alleged infringements consist of the use of the word in conjunction with the word CREAM in respect of a skin protective cream, for use on the hands, which the respondent manufactures and distributes to pharmacists and others for sale to the public. (at p552)

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)

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)

5. But the reliance placed at the trial upon s.56 apparently diverted attention from what seems to me the real defence to the action and the real ground for rectification of the Register, namely that the word Barrier, unexceptionable though it may be as a trade mark for other kinds of chemical substances prepared for use in medicine and pharmacy, is, in its application to skin protective creams, one of that class of words which are "so apt for normal description that no trade mark use and momentary distinctiveness can justify a permanent monopoly": Dunlop Rubber Co.'s Application (1942) 59 RPC 134, at p 137 . When applied to any cream of that general class the word clearly has a direct reference to the character of the goods, for it exactly designates their principal function, which is that of forming an obstruction to contact between the skin and deleterious matter. The original registration of the trade mark, therefore, cannot be justified under par. (d) of s. 16 (1) of the Act of 1905-1948 (s. 24 (1) of the present Act). It must be justified, if at all, under par. (e), as "any other distinctive mark". The difficulty at this point is that a word is not to be held distinctive, in the relevant sense, unless it is "adapted" to distinguish the goods of the proprietor from those of other persons: see s. 16 (2) of the former Act and s. 26 (1) of the present Act. Whether it is so adapted is a question upon which regard may of course be had to the extent to which the word has come in fact to distinguish the goods of the appellant from those of other persons: see s. 26 (2) (b) of the present Act ; but even if it has acquired distinctiveness by use it is still not distinctive, in the sense which justifies registration, if it is inherently unadapted to distinguish the goods of the proprietor from those of other persons: see s. 16 (2) of the former Act, s. 26 (2) (a) of the present Act, and the Yorkshire Copper Works Case (1952) 70 RPC 1 ; (1954) 71 RPC 150 . (at p554)

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)

7. The conclusion seems inevitable that at least by the year of the initial registration of the appellant's trade mark (1943) the word Barrier had caught on as a word peculiarly apt, according to its ordinary signification, for descriptive use in connexion with skin protective creams, so that any trader in such creams would be very likely indeed, in the ordinary course of business and without any improper motive, to desire to use the word in order to distinguish such creams in general from creams intended for other purposes. We have not to inquire, on this aspect of the case, whether or not the respondent began its use of the word with a view to appropriating to itself some of the goodwill which the appellant had built up for its own product. What matters is that at all material times the word has had such a place in the vocabulary of persons concerned with skin protective creams that according to the principle which must be applied under the Trade Marks Acts the appellant cannot be allowed a monopoly of its use in connexion with such creams. (at p557)

8. For this reason it seems to me that unless the registration of the appellant's trade mark is protected by lapse of time the orders under appeal should be affirmed. It remains to consider the protection which the Act gives to a trade mark by reason of length of registration. The relevant provisions are in ss. 60 and 61, each of which is expressed to apply in legal proceedings relating to a trade mark registered in Pt A of the Register, including applications under s. 22 for rectification of the Register. The protection of s. 60 applies in proceedings instituted after the expiration of three years from "the date of registration". This presumably means, in the case of a trade mark originally registered under the repealed Acts, the date of the original registration ; but even if it means the notional registration in Pt A effected by s. 5 (2) upon the commencement of the present Act the condition was fulfilled in the present case, for the period of three years had elapsed before the institution of the action. The protection afforded to the trade mark by the section is against both its removal from the Register and its being held invalid on the ground that it was not a registrable trade mark under s. 24 of the present Act ; but it is conditional upon the absence of proof that the mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor. As I have endeavoured to show, there was, in my opinion, convincing proof in the present case that the appellant's trade mark was not, at the commencement of the action, adapted to distinguish the appellant's skin protective cream, and therefore was not distinctive of it: see s. 26 (1). Accordingly s. 60 is of no avail to the appellant. (at p557)

9. What s. 61 protects is "the original registration of the trade mark under this Act" ; and the protection exists after the expiration of seven years from the date of "the original registration". In the present case the original registration "under this Act" is presumably the deemed registration effected by s. 5 (2), and seven years from the commencement of the Act have not expired even yet. But however this may be, by sub-s. (1) (c) the protection is displaced if inter alia it is shown that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor ; so that once again the appellant's reliance upon lapse of time to protect its trade mark in relation to skin protective cream is answered by the fact that the mark is inherently unadapted to distinguish the appellant's cream. (at p558)

10. In my opinion it should be held for these reasons that the registration of the appellant's trade mark is invalid in relation to skin protective creams and that it wrongly remains on the Register as a mark for use in connexion with such creams. (at p558)

11. Accordingly I would dismiss the appeals. (at p558)

TAYLOR J. The appellant, as the registered proprietor of the trade mark "Barrier", - registered in respect of "chemical substances prepared for use in medicine and pharmacy" - commenced a suit against the respondent in July 1963 claiming that its rights in respect of the mark had been infringed by the use by the respondent of a substantially identical mark in relation to certain goods within the class in respect of which the appellant's mark was registered. By its defence the respondent denied the alleged infringement and set up defences under s. 56 (2) (a) (3) and (5) and s. 64 (1) (b) of the Trade Marks Act 1955-1958. Additionally it sought the removal of the mark from the register or, alternatively, an order requiring the plaintiff to disclaim any right to the exclusive use of the word "Barrier" in relation to substances of the type commonly known as "Barrier Creams". The matters were heard together and in the result the suit was dismissed and an order was made upon the motion directing that the register be amended in respect of the trade mark "Barrier", registered in respect of "chemical substances prepared for use in medicine and pharmacy", by inserting after the word "pharmacy" appearing in the said entry the words "other than skin protective creams". (at p558)

2. The suit failed because the learned Judge of first instance found that in 1962 - prior to the institution of the proceedings - there was a well-known and established use of the term "Barrier" in connexion with hand protective creams of the type to which the plaintiff's Barrier cream, Kerodex, Savlon and many others belong and that this "well-known and established use is by persons carrying on a trade in those creams other than the plaintiff". This, his Honour considered, was a "well-known and established use" of the word within the meaning of s. 56 (2) (a) and, as such, provided a defence to the suit and a ground for the order which he then proceeded to make on the motion. He, however, rejected the defence founded upon s. 64 (1) (b) because he found that the use by the respondent of the term "Barrier" in relation to its goods was not, in the circumstances which he found to exist, "purely for the purposes of description". (at p559)

3. No attack has been made in these appeals upon his Honour's findings of fact. What the appellant contends is that the learned Judge was in error in concluding upon those findings that the respondent had made out its defence based upon s. 56 of the Act and had established that the trade mark wrongly remained in the Register with respect to skin protective creams. Further, it is contended that those findings did not provide any justification for rectification of the Register independently of that section. These propositions are denied by the respondent which also asserts, alternatively, that on his Honour's findings of fact he should have held that the defence based upon s. 64 of the Act was made out. (at p559)

4. In examining these propositions it is appropriate to consider, first of all, whether the findings of fact brought the case within the provisions of s. 56 (2) (a) of the Act, or, otherwise, justified the conclusion that the entry wrongly remained on the Register for it is only if his Honour's conclusions on this aspect of the case were erroneous that it will become necessary to consider the operation, in the proved circumstances, of the provision of s. 64 (1) (b). (at p559)

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)

6. It was in this somewhat unsatisfactory state of the law that s. 15 of the English Act of 1938 was enacted and I see it as a provision intended to define exhaustively what manner of use after registration of a registered trade mark which is a word mark shall or shall not operate to invalidate the mark. It is not to be invalidated "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". But if there is "a well-known and established use of a 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 or a registered user of the trade mark", the registration of the trade mark, so far as regards registration in respect of the article of any goods of the same description, "shall be deemed for the purposes of section twenty-two of this Act to be an entry wrongly remaining in the Register". This is the only kind of use after registration which is to operate to invalidate the mark on the ground of loss of distinctiveness. Accordingly, I am of the opinion that it was not open to the respondent to establish independently of s. 56 that, merely, because the mark had lost its distinctiveness, it wrongly remained on the Register. (at p561)

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)

8. That being so I am of the opinion that the order upon the motion was rightly made and that the suit was properly dismissed. I should add that if I had found it necessary to consider the matters independently of s. 56 I would have considered that the evidence in the case made it inevitable that the appeals should be dismissed for the reasons given by Kitto J. (at p562)

9. In the circumstances I am of opinion that both appeals should be dismissed and that it is unnecessary, in the circumstances, to consider the validity of the defence raised pursuant to s. 64 (1) (b). (at p562)

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)