Re Bali Brassiere Co Inc's Trade Mark; Re Berlei Ltd's Application [1968] HCA 72

Re Bali Brassiere Co Inc's Trade Mark; Re Berlei Ltd's Application [1968] HCA 72 - HCA 1968 case summary — Zoe

[19]

Dealing first with the reference in s. 61 to s. 28, it becomes necessary to consider what is the effect of the words "that a trade mark offends against the provisions of section twenty-eight". Two views have been taken of the corresponding section in the English Trade Marks Act, 1938. They may be broadly stated as follows. One is that a mark offends if at the time when proceedings to expunge it are commenced it answers to one of the descriptions in s. 28 of a mark which "shall not be registered". That is to say the question is, would it be registrable if registration were applied for at the time when expungement is sought? The other view is that, the mark being in fact registered, the inquiry is whether at the date when it was so registered it was of such a description that it ought not then to have been registered. The latter view has been generally accepted in England. But recently Diplock L.J., as he then was, firmly adopted the other position in his dissenting judgment in the Berlei v. Bali Case [1] in the Court of Appeal. In the ninth edition (1966) of Kerly on Trade Marks the learned editor has said at p. 270: "One of the most difficult problems of trade mark law is whether and to what extent it is a basic principle of the law that a properly registered mark which becomes deceptive may then be removed from the Register." The structure of some sections of our Act differs from that of the English provisions whence they were derived. English cases must be read with that in mind. But the same problem, and with it the same difficulties, arises under our Act. Considerations of policy can be invoked for either solution of it. Is a mark which was valid when registered to be removed because later events, perhaps the assiduous efforts of an infringer, have created a likelihood of confusion? On the other hand is a mark which ought not to have been registered, because deceptive or likely to be confused with another mark, to be later struck off the Register if any serious risk of confusion or deception has disappeared? The answer to these questions may lie in the discretion which it is said the Court has on an application for rectification under s. 22 if the mark be not on the face of it incapable of registration: see cases referred to in Kerly, op. cit. pp. 198-206. But the question I am at present considering is not whether s. 22 gives a discretion, but in what circumstances the protection given by seven years' registration is not available to the registered proprietor. If it were not for doubts engendered by the decisions to the contrary, I would have thought, from simply reading s. 61, that whether or not a mark is protected by its having stood for seven years depends upon whether it "offends" against the provisions of s. 28 at the date when its validity has to be determined. In the case of an application to rectify the Register, that time it seems to me must be when the Court comes to make or refuse the order for rectification which is sought. Whether or not such an order could be made depends, I think, upon circumstances then existing, including any happenings pendente lite. I do not think it depends upon a different state of things having existed at any earlier time. The present tense of the word "offends" is I think significant. But it does not really dispose of the difficulty.

[26]

Some evidence of actual confusion was relied upon. It consisted of "trap orders" as they are called. A Bali brassiere was asked for in shops which did not stock them, and in response to this request a Berlei brassiere was tendered. There was no evidence, so far as I recall it, of any case in which a Bali article was tendered in response to a request for a Berlei. Trap orders by a person wishing to obtain evidence that an opponent's goods are being passed off as his goods are a common and entirely legitimate procedure, although they are sometimes looked at askance. But a trap order designed to establish that in response to a request for an opponent's goods a party is given his own is in my experience a less usual procedure. It tends to shew only that any confusion has operated to the advantage, not to the detriment, of the party who asks for his opponent's goods. To that extent it can be said that in this case it tends to shew that the Berlei company is not a "person aggrieved" (within the meaning of s. 22) by the presence of the Bali mark in the Register. The Berlei company cannot, founding on this evidence, bring itself within Lord Herschell's description of a person aggrieved in Powell's Trade Mark Case [Powell v. Birmingham Vinegar Brewery Co.] [1] . But the power to rectify the Register so as to eliminate from it marks the use of which could cause confusion is a power to be exercised in the public interest. I think that the Berlei company had in this case a sufficient interest to enable it to bring this application, although I remained sceptical about counsel's suggestion that his client was seeking to expunge the Bali mark simply for the public benefit and to preserve the purity of the Register. What exactly the Berlei company would gain by the removal of the Bali mark from the Register was not clear to me. It could not, it seems, itself use the name Bali for any brassieres not those of the Bali company without the risk of becoming a defendant in a passing off action. And, on the evidence before me, it could not prevent the sale of the Bali company's brassieres as Bali brassieres, for if the Bali mark were removed from the Register as offending against s. 28, it would not, in my opinion, necessarily follow that the Berlei company could restrain its use as an infringement of the Berlei mark. However, I need not speculate as to the advantages which the Berlei company expects to gain if this application succeeds.

[36]

There is no suggestion that the similarity of the words Bali and Berlei is the result of deliberate imitation or of any attempt by either company to deceive or to pass off its goods as those of the other or to enable anyone else to do so. Each company apparently chose its mark in good faith - the Berlei company in Australia, the Bali company in the United States - without any thought at all of the other. The two marks have been honestly used concurrently for years, in Australia and in other countries. Thousands of Bali brassieres and tens of thousands of Berlei brassieres have been sold to the public in Australia through the same outlets, in the ordinary course of trade, without any deception or confusion being brought to notice. Those are facts of weight when it is said that one mark ought not now to remain in the Register: see Halsbury's Laws of England, 3rd ed., vol. 38, p. 592, and cases there cited. Against this was put the evidence of the trap orders. In some cases saleswomen in shops which did not stock Bali brassieres and who did not know of them had offered a Berlei brassiere when a Bali was asked for. In some other cases saleswomen in shops which did not stock Balis, or had none of the size required, had tendered a Berlei, and, when told that it was not what was wanted had said, not that they did not know of Balis, but that they had misunderstood what was asked for. In the affidavits there are accounts of conversations with the saleswomen - questions asked of, and answers given by them, either to the woman ordering the brassiere as a trap order or to someone accompanying her for the purpose of collecting evidence. This was not objected to. Nevertheless that a saleswoman, not called to give evidence, had said, by way of explanation or excuse, that she was mistaken or misheard what the customer asked for seems to me carrying hearsay rather far - especially if what she said was in a conversation not with the customer but with the man accompanying her. I have, however, given this hearsay due weight; and I have noticed, of course, what were the goods actually produced in response to the trap orders. Certainly many of the traps were set in good trapping country, in suburban shops which did not stock Bali brassieres. That does not mean that the evidence of them is to be discounted. It means only that it has to be considered as part of the evidence as a whole.

[38]

Cases were cited to me from passages in judgments dealing with marks held to be, or held not to be, by reason of similarities, deceptive or confusing. I have read these cases, and others. I do not think I need discuss them. The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand. There are, however, a few observations I would make about item (a) in s. 28. It refers to an objective quality of the mark, "likely to deceive or cause confusion". A mark is "likely to deceive" - or in the words of s. 62 is "deceptively similar", which by s. 6 (3) means the same thing - because of its inherent tendency in use, independently of the purpose or intent of the user. That is to say a mark can be deceptive without being used deceitfully. The word "deceive", I take it, here has one of the meanings in the Oxford Dictionary, "to cause to believe what is false, to lead into error". This accords with Dr. Johnson's statement of its primary sense, which was given as "to cause to mistake, to bring into error". Lord Diplock, then Diplock L.J., said in the recent Berlei v. Bali Case [1] in the Court of Appeal that: "Unlike "to deceive", "to cause confusion" does not necessarily connote any intentional misrepresentation on the part of the user." With great respect for his Lordship's opinion, I doubt whether, in their context in relation to deceptive trade marks, the words "to deceive" necessarily predicate intentional misrepresentation. However, it is unnecessary to pursue this question, because the words "or to cause confusion" appear in s. 28 and in s. 6 (3). They apparently denote an alternative, differing from "to deceive". Under the earlier Act confusion was not expressly mentioned. It was then considered that a probability of confusion would establish that a mark was likely to deceive. The question of deceptiveness could, it was then said, be judged by asking whether "there will be a confusion in the mind of the public which will lead to confusion in the goods": per Lord Parker (then Parker J.) in Re Pianotist Co.'s Application [2] , a passage quoted in this Court in Cooper Engineering Co. Pty. Ltd. v. Sigmund Pumps Ltd. [3] .

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