Mark Foys Ltd v Davies Coop & Co Ltd

Mark Foys Ltd v Davies Coop & Co Ltd - [1956] HCA 41 - HCA 1956 case summary — Zoe

[15]

Before us the defendants have relied on both grounds. They have also challenged the validity of the registration of the trade mark on the ground that it is not registrable under the provisions of the Trade Marks Act, s. 16. All these grounds are disputed by the plaintiff and it will be advisable, before discussing them, to set out certain provisions of the Trade Marks Act. There is first s. 4 which contains the following definitions: "Mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof. "Trade Mark" means a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor to use the mark whether with or without any indication of the identity of that person. (This definition was inserted by the Trade Marks Act 1948 in lieu of the definition inserted in the principal Act by the Trade Marks Act 1912. This definition read: "Trade Mark" means a mark used or proposed to be used upon or in connection with goods, for the purpose of indicating that they are the goods of the proprietor of the trade mark by virtue of manufacture, selection, certification, dealing with, or offering for sale.) Then there is s. 16 (1) which provides that a registrable trade mark must contain or consist of at least one of the following essential particulars (d) a word or words having no direct reference to the character or quality of the goods The plaintiff claims that its mark trade is a registrable trade mark under this provision. Certain provisions of ss. 50, 51, 53, and 53A are also material. Section 50. Subject to the provisions of section fifty-one A of this Act, the registration of a person as proprietor of a trade mark shall, if valid, give to such person the exclusive right to the use of the trade mark upon or in connection with the goods in respect of which it is registered. Section 51. In all legal proceedings relating to a registered trade mark the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark under this Act Section 53. The rights acquired by registration of a trade mark shall be deemed to be infringed by the use, in respect of the goods in respect of which it is registered, of a mark substantially identical with the trade mark or so nearly resembling it as to be likely to deceive. Section 53A. No registration under this Act shall interfere with the use by any person of any bona fide description of the character or quality of his goods.

[16]

The first question is whether the words "tub happy" are registrable as a trade mark under s. 16 (1) (d) of the Trade Marks Act. To qualify they must be words having no direct reference to the character or quality of articles of clothing. In his speech in Eastman Photographic Materials Co. Ltd. v. Comptroller-General of Patents, Designs and Trade Marks ( "Solio" Case) [1] Lord Herschell explained the meaning of this qualification. He said: "any word in the English language may serve as a trade-mark - the commonest word in the language might be employed. In these circumstances 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" [2] . The introduction of the word "direct" into the paragraph is explained by the following passage in Kerly on Trade Marks, 7th ed. (1951), p. 127: At first the qualification was "A word or words having no reference to the character or quality of the goods, and not being a geographical name The decisions on the clause, however, and especially those prior to the Solio Case [1] , tended to prevent the registration of words having a merely indirect reference to the character or quality of the goods; the framers of the Act of 1905 therefore introduced the word "direct" to qualify "reference" with the object of extending the class of registrable words, or at all events of making the object of the Legislature more clear." One example of words that have been held to have a direct reference to the character or quality of the goods will be found in Philippart v. William Whiteley Ltd. ( "Diabolo" Case) [3] where Parker J. (as he then was) held that this word denoted the top used in the well-known game of diabolo just as cricket applied to a set of stumps would directly suggest the use to which the stumps were to be put. Another example will be found in In re Colgate & Co.'s Application [4] to register the word "ribbon" in respect of a dentrifrice. The same learned judge refused the application on the ground that the word referred to a character or quality of the goods because it described the manner in which the dental cream would come out of the tube and lie on the brush in the shape of a ribbon. Reference may also be made to two cases in each of which ordinary English words were held to have a reference to the character or quality of the goods. In In re Keystone Knitting Mills Ltd.'s Application [1] the noun "charm" in respect of hosiery being wearing apparel was held to have the same significance as the adjective "charming" and to describe in a laudatory sense the character or quality of the goods. As Lord Hanworth said: "I think one has to look at the word which is registered, not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and to form an opinion as to what it connotes" [2] . In In re Joseph Crosfield & Sons Ltd.'s Application [3] the noun "perfection" when applied to household soap was held to have the same meaning as the adjective "perfect" and as such to be a mere laudatory epithet which could be used to describe the character or quality of any goods and as such open to all the world and incapable of being registered. On the other hand in In re Compagnie Industrielle Des Pétroles' Application [4] Warrington J. (as he then was) allowed "Motorine" to be registered in respect of lubricating oils, any exclusive use of the word "motor" being disclaimed. His Lordship said: "I cannot see how the word "Motorine" has any direct reference to the character or quality of those goods. No doubt it suggests that in some way they are oils which are to be used in connection with a motor, but beyond that it has no reference either to their character or their quality, and such reference as the use of the two syllables of the word "motor" in the word "Motorine" as to the character or quality seems to me not to be that direct reference which the present Act contemplates" [5] . So too in In re la Marquise Footwear's Application [6] Evershed J. (as he then was) held that the word "Oomphies" in relation to shoes was registrable. Although the word "oomph" had a meaning of sex appeal derived from a popular cinema actress it had no direct reference to any character or quality of ladies' footwear. His Lordship said: "where you take an ordinary word in common use properly applicable in its ordinary meaning to the class of goods to which it is sought to be applied by the applicant, the Court must be slow to give to the applicant in effect a monopoly of that epithet. Where you take a word which is exceedingly uncommon by comparison, I think that somewhat different considerations apply and, if you say that it has a direct reference, you are going to assume that this word, which I assume not to be an invented word, has a much more precise significance and a much greater circulation than, I think, on the evidence plainly it has" [1] . Any reference that the words "Tub Happy" have to the character or quality of articles of clothing is very remote. They are in the nature of a coined phrase. Inanimate objects including articles of clothing cannot have the character or quality of happiness whether they are in a tub or not. But the defendants' case is that the common metaphorical use of the adjective would convey to prospective buyers of the fabrics that the cotton emerged from the wash tub more attractive than ever in appearance with fibres and colours as good if not better than ever. Therefore, so it is said, the words are a description of the character or quality of the goods and moreover are not entitled to registration. This claim gives far too specific a meaning to the vague figurative use of the word "happy" in connection with "tub". Like so many expressions used in advertisements no definite or actual meaning seems to belong to the combination "Tub Happy". There is a cloudy suggestion only about it that all will be well in a wash tub but that is all. The attitude of mind of those who glance at such advertisements may be affected favourably by some sort of vague association of ideas but it falls a long way short of conveying any meaning to them. To say that articles of clothing are tub happy is in the ordinary use of English meaningless. The words contain at most a "covert and skilful allusion" to the quality of washability which is characteristic of articles of clothing made of some kinds of material including cotton. At most they create an impression that this is what they are intended to convey. They do not trespass upon the rights of other traders to use any ordinary English words or phrases referring to the washable qualities of their goods. They do not attempt to "enclose and appropriate as private property certain little strips of the great open common of the English language". No doubt the words are intended to "contain a meaning - a meaning is wrapped up in them if you can only find it out.": see the speech of Lord Macnaghten in the Solio Case [2] . And it may not be hard to find out that meaning but the words do not refer in any ordinary sense, laudatory or otherwise, to any character or quality of articles of clothing, still less do they do so directly.

[18]

The conclusion that the words "Tub Happy" are registrable under s. 16 (1) (d) of the Trade Marks Act because they have no direct reference to the character or quality of articles of clothing goes a long way towards deciding the ground on which his Honour ruled against the defendants. There is nothing in the registration of these words to prevent the defendants describing their cotton goods as having the qualities of washability, freshness and cheapness, and in particular the first of these qualities. The whole English language is open to them, even the most up to date English, if the defendants wish to refer to these qualities "in a modern descriptive sense". In J. B. Stone & Co. Ltd. v. Steelace Manufacturing Co. Ltd. [1] Lawrence L.J. said: "In my opinion the object of s. 44" (of the English Trade Marks Act 1905 which corresponds to s. 53A of the Commonwealth Act) "was to safeguard traders in cases where the registered trade mark consisted of more or less descriptive words forming part of the ordinary English language, without the use of which other traders would find some difficulty in describing certain qualities of their goods; but was never intended and does not operate to enable a trader to make use of a rival trader's registered trade mark consisting of a fancy word having no reference to the character and quality of the goods in order more readily to sell his own goods" [2] . In de Cordova v. Vick Chemical Co. [3] Lord Radcliffe, delivering the judgment of the Privy Council, said: - "However that may be, it seems plain on the facts of this case that "Vapour Rub" cannot be regarded in Jamaica as a "bona fide description" of the character or quality of the appellants' goods If the makers of the goods which the appellants are selling desire to inform their customers that the properties of their ointment are such that, if it is rubbed on the chest or throat, it will give off a healing vapour which can be inhaled through the mouth or nose, there is nothing to prevent them from doing so. But that would be something different from what they have done hitherto" [4] . Section 53A of the Trade Marks Act protects the use by any person of any bona fide description of the character or quality of his goods. But that means a description and not a mere suggestion in fanciful language. It does not protect an attempt by the defendants to usurp a metaphorical phrase like "Tub Happy" however magnetic the force of its public appeal may be.

[20]

The remaining question is whether the rights conferred on the plaintiff by s. 50 have been infringed. The defendants have used the exact words of the plaintiff's trade mark so that the plaintiff need not rely on s. 53. It is contended that the plaintiff's rights have not been infringed because the defendants have not used the words as a trade mark at all, but only descriptively as a laudatory or puffing expression to extol the goods. They rely on the speech of Lord Tomlin, concurred in by Lord Atkin and Lord Russell of Killowen, in the Yeast-Vite Case in the House of Lords [1] . The Act there in question was the English Trade Marks Act 1905-1919 and the particular section under review was s. 39 which corresponds to s. 50 of the Commonwealth Act. The definition of "trade mark" in the English Act was the same as the definition in the Commonwealth Act of 1912. There was no section in the English Act corresponding to s. 53 of the Commonwealth Act. The plaintiffs were the proprietors of the registered trade mark "Yeast Vite" and it was held that this mark was not infringed by the defendant selling in his shop a preparation labelled "Yeast Tablets a substitute for Yeast-Vite" which was not the plaintiff's preparation. Lord Tomlin said: "Now the act which the appellants contend amounts in law to an infringement of their exclusive right as registered proprietors of the trade mark is the use by the respondent upon the bottles in which he sells his preparation of the phrase "Yeast Tablets, a substitute for Yeast-Vite." This is clearly a use of the word "Yeast-Vite" on the respondent's preparation to indicate the appellant's preparation and to distinguish the respondent's preparation from it. It is not a use of the word as a trade mark, that is, to indicate the origin of the goods in the respondent by virtue of manufacture, selection, certification, dealing with or offering for sale" [2] . His Lordship continued: "The question therefore here is, what is the property right of the appellants and has it been infringed? It is true that the language of the definition of a trade mark contained in s. 3 of the Act of 1905 cannot without some change of form be read directly into s. 39, but it is equally true that the language of s. 39 must carry with it some implied limitation, unless it is to be given a meaning extending its operation altogether outside the scope of the Trade Marks Acts. The phrase "the exclusive right to the use of such trade mark" carries in my opinion the implication of use of the mark for the purpose of indicating in relation to the goods upon or in connection with which the use takes place, the origin of such goods in the user of the mark by virtue of the matters indicated in the definition of trade mark contained in s. 3" [3] . Mr. May contended that the speech by Lord Tomlin is not applicable to the Commonwealth Act, first because of the difference between the two Acts in the definition of trade mark since the definition in the 1912 Act was omitted and the existing definition substituted for it, and secondly, because of the presence in the Commonwealth Act of s. 53 which has no counterpart in the English Act. But the reasoning of his Lordship appears to be equally applicable to the Commonwealth Act despite these differences. If the defendants in the present case had advertised that their Exacto cotton frocks washed as well as the plaintiff's Tub Happy frocks it could not be said that the words "Tub Happy" were used by the defendants in relation to goods to indicate a connection in the course of trade between the goods and themselves. They would only be used in support of a claim that their cotton goods washed as well as the plaintiff's Tub Happy goods. In such a case the words "Tub Happy" would not be used as a trade mark within the meaning of the present definition. Section 50 states that the proprietor of a registered trade mark has the exclusive right to the use of the trade mark upon or in connection with the goods in respect of which it is registered. This appears on its face to mean that no one but the proprietor can use the trade mark upon or in connection with the goods in respect of which it is registered for any purpose. One purpose within the section would appear to be the use of the trade mark by an opponent for the purpose of claiming that his goods were a substitute for those of the proprietor. It does not matter that the identity of the proprietor of the trade mark is unknown to the public. It is the trade mark which identifies the goods and the sale of goods that have acquired a reputation could be seriously prejudiced by an opponent offering his goods as substitutes for them. But in the Yeast-Vite Case [1] the House of Lords narrowed the meaning of s. 50 by implying after the words "the exclusive right to the use of the trade mark" the words "as a trade mark". Their Lordships held that the exclusive rights of the registered proprietor are only infringed if the trade mark is used as a trade mark for the purpose mentioned in the definition. This construction must be applied to s. 50 of the Commonwealth Act and the presence of s. 53 in that Act can make no difference. Section 53 is really an appendage to s. 50 and its function is to widen the definition of infringement so as to include cases where the defendant does not use the identical trade mark but uses a mark substantially identical with it or so nearly resembling it as to be likely to deceive. But the alleged infringement must still be the use of the plaintiff's trade mark or some mark substantially identical with it as a trade mark.

[27]

That the mark has a reference to the quality of the goods, and to nothing else, appears to me to be clear. "Tub", in relation to garments, obviously refers to the wash-tub. "Happy", as applied to garments and in relation to the wash-tub, would readily convey, even to minds unprepared for it by acquaintance with the modern spate of synthetic expressions built by combining a noun with "-happy", that washing suits them well - that they come out of the wash in a condition of enhanced well-being, as if they actually took a delight in the tub. Of course it is uncommon to apply the adjective "happy" to an inanimate object; but to describe a garment as happy in respect of some process to which purchasers may wish to submit it would give, I should think, a perfectly clear intimation, even to any who may be wholly innocent of the vernacular, that the garment is so well fitted to undergo the process that it may be floridly described as taking pleasure in it. No doubt it is also unusual to identify the process to which the garment stands in so fortunate a relation by using adverbially the name of its chief instrument; but, again, the intimation would be clear, from the use of the word "tub", that the "happiness" ascribed to the garment is in respect of washing. It is important to observe that par. (d) of s. 16 (1) is concerned with any reference at all to the character or quality of goods, so long as it be direct. What the paragraph asks is whether in truth the words refer directly to the character or quality of the goods. I shall consider later the meaning of "direct", for that word describes the manner in which the reference, if there be one, is made. The point at the moment is that the question whether there is any reference at all to character or quality in the words "Tub Happy", as applied to garments, is a question of the significance of the words to persons to whose attention the mark is likely to come in the course of its intended use. One has to look at the words as they would present themselves to the persons who are to look at them and form an opinion as to what they connote: In re Keystone Knitting Mills Trade Mark [1] .

[29]

The fashion in such verbal combinations is comparatively recent, but it is widespread and well-established in this country. It is a part of a wider fashion which is mentioned in Thomas Pyles' Words and Ways of American English (English edition published by Melrose (1954)). The author says, at pp. 142, 143: "Combinations with -crazy, -happy, -wise, -conscious, -struck and -minded are freely made: girl-crazy (and boy-crazy), stage-crazy, slap-happy, bark-happy (of watchdogs), fight-happy, stripe-happy, (of a soldier itching for promotion), trigger-happy; market-wise, style-wise, budget-wise, fight-wise; social-conscious, class-conscious, race-conscious, profit-conscious; girl-struck, stage-struck, movie-struck; social-minded, federation-minded - these are the merest sampling." Consideration of this list and of the many other examples which will spring at once to anyone's mind may suggest that the movement in favour of such expressions may be too narrowly viewed if its origin is attributed exclusively to what the author justifiably calls "the American talent for saying things pungently and expressively". But however this may be, few will deny that modern English usage in general and American English usage in particular possess the qualities he acclaims in the latter: "a warmth, an enthusiasm, a youthfulness of spirit, that all the awesome powers of all the teachers and all the text books have failed to blight". It seems to me safe to say that among Australians, surely no slower than other inheritors of the English tongue to admit new proofs of its plasticity, such an expression as "tub-happy", though never used before, and whether used with or without capitals and with or without a hyphen, would be generally recognized, by its conformity to a known pattern, as meaning, when applied to garments, that they exhibit a veritable enthusiasm for being washed. So understood, it is of course an example of an advertiser's exuberance, but exuberance does not convert a reference to quality into something else. Words as general in their laudatory reference as "Perfection", "Good", "Best", "Superfine", "Classic", "Universal", "Artistic" and "Charm" have been held not only to refer to quality but to belong inalienably to the ordinary vocabulary of description, so as to be incapable of achieving a distinctiveness enabling them to be allowed registration by an order under paragraph (e): In re Joseph Crosfield & Sons Ltd. [1] ; In re J. & P. Coats Ltd.'s Application [2] ; In re Keystone Knitting Mills Trade Mark [3] . "Famous" and "Splendid" have been similarly regarded in the United States: Sebastian, Law of Trade Marks, 4th ed. (1899), p. 644. So, too, in Canada, "Superweave" has been disallowed in respect of textiles, on the ground that because it "clearly indicates and describes textiles that have a superior or superfine weave, an attribute which a trader in textiles would naturally wish to emphasize in offering his goods for sale. Such a word may not be commandeered by one manufacturer and registered so as to prevent others from claiming the same quality in their merchandise and using the same or a similar expression to describe it": Registrar of Trade Marks v. G. A. Hardie & Co. Ltd. [1] .

[33]

Is there any special meaning to be given to "direct reference" in s. 16 (1) (d) which requires a different conclusion? Paragraphs (c) and (d), with the exception of the word "direct" in the latter, are derived ultimately from the English Act of 1888. That Act put them in the place of the earlier expression "fancy word or fancy words not in common use", which had been held by the courts to include no word which was not obviously non-descriptive. "The judges were, however, unable to remove from their minds the impression produced upon them by the rigidity with which the term "fancy word" had been construed, and which had been carried so far as to exclude from registration, not merely words which contained direct statements as to the character or quality of the goods, but even invented words which had never been heard of before, but which were supposed to contain some remote suggestion of descriptiveness": Sebastian, Law of Trade Marks, 4th ed. (1899), pp. 41, 42. One of the most striking examples occurred in the In re Farbenfabriken Application [1] , where registration was refused of a mark consisting of the word "Somatose" in respect of a pharmaceutical preparation of powdered meat. Kay L.J. thought that "having no reference to the character or quality of the goods", was more restrictive than "descriptive of the goods", and he and A. L. Smith L.J., against the dissent of Lindley L.J., held that the word, because of its derivation from the Greek soma (genitive, somatos) meaning a body, had a reference to the quality of being readily absorbed into the human body. It was in view of the results which the impression mentioned by Sebastian produced under the prototype of s. 16 (1) (d) that the English Act of 1905 inserted the word "direct". Sebastian, writing before that Act was passed (Law of Trade Marks, 4th ed. (1899), p. 44), having insisted upon the reasonableness of strictly maintaining the right of the public to use descriptive words in a descriptive sense, made the observation: "Whether it was necessary to discover a descriptive allusion in all the cases in which the court discovered it may perhaps be doubted, but it is clear from the decision of the House of Lords that no non-invented word which really is descriptive will be allowed to be registered as a new trade mark." The introduction of the word "direct" by the 1905 Act may be compared with Sebastian's use of the "really" in this passage. It appears to have had the effect of confirming his observation (Law of Trade Marks, 4th ed. (1899), p. 43) that the amendment made in 1888 had been designed to include as registrable trade marks such terms as "Pharoah's Serpents" (on a kind of fireworks) and "United Service" (on soap), both of which are descriptive in the sense that, by associating the goods with other things, they suggest, without actually mentioning, some claimed quality of the goods. This is the kind of descriptive reference which may properly be called indirect. A good illustration of it may be found in In re Meyerstein's Trade Mark [1] , where the word "Satinine", as a mark intended for starch, blue and other laundry preparations, was refused registration (under the law as it stood before 1905) because of its reference to the quality of producing a glossy surface on articles treated with such preparations. The direct reference of the word was to satin; but that reference suggested to the mind the quality of glossiness, and that in turn suggested a gloss-producing quality as the cause of glossiness in the articles upon which the preparations were intended to be used. A contrast may be suggested by taking up an illustration put by Neville J. in Henry Thorne & Co. Ltd. v. Sandow [2] and saying that although the word "Health" as applied to cocoa refers directly to the health-giving quality of the product, the same word as applied to fishing rods refers only indirectly to the quality of usefulness in the pursuit of a health-giving pastime, for it is indulgence in the pastime, and not the rod, which has a direct connection with health.

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Judgment (37 paragraphs)

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