Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd - [1954] HCA 82 - HCA 1954 case summary — Zoe

[5]

I am concerned, therefore, to consider only s. 114, the material provision of which is that no mark, the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice shall be registered as a trade mark. The corresponding section of the English Act (s. 11 of the Trade Marks Act 1938 Imp.) is in the same terms with the addition of the words "or cause confusion" after "likely to deceive"; but, while these words make the section more specific, they add nothing to its effect. In relation both to the English and to the Australian section there are certain propositions which I think may be accepted as established by the cases. I take them, substantially, from the judgment of Romer J., (as he then was), in In re Jellinek's Application [2] : (i) In all applications for registration of a trade mark, the onus is on the applicant to satisfy the Registrar (or the court) that there is no reasonable probability of confusion. (ii) It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring (Reckitt & Colman (Australia) Ltd. v. Boden [1] ; Sym Choon & Co. Ltd. v. Gordon Choons Nuts Ltd. [2] ) - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (iii) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: Jafferjee v. Scarlett [3] ). (iv) In applications for registration, the rights of the parties are to be determined as at the date of the application. (v) The onus must be discharged by the applicant in respect of all goods coming within the specification in the application (pursuant to s. 32 (2)) of the goods or class of goods in respect of which the registration is desired, and not only in respect of those goods on which he is proposing to use the mark immediately. And the onus is not discharged by proof only that a particular method of user will not give rise to confusion. The test is, what can the applicant do if he obtains registration?

[7]

The second of these propositions was said by Mr. Thomas to be inconsistent with some of the language used in the judgments in Reckitt & Colman (Australia) Ltd. v. Boden [4] . The proposition means that a probability of confusion, if it is real, is sufficient under s. 114 even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. I find nothing to suggest the contrary in the Reckitt & Colman Case [4] . Of course, it is in relation to commercial dealings with goods that the question of confusion has to be considered, and the persons whose state of mind is material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark. References to these persons as purchasers or customers, and to buying and selling, in the Reckitt & Colman Case [4] as in many others, indicate nothing more than a recognition of this fact. Latham C.J. [5] gave as the ground for denying the probability of deception that ordinary purchasers "purchasing with ordinary caution" were not likely to be misled. Upon these words Mr. Thomas founded a submission which, as I understood it, amounted to this, that there cannot be a likelihood of deception sufficient to prevent registration under s. 114, if ordinary caution would lead an ordinary purchaser, in whose mind confusion had been engendered by the mark, to inquire into the origin of the goods, and if a competent seller of the goods, acting competently and honestly, would be likely to answer the inquiry in such a way as to dispel the confusion before a sale took place. I do not find any support for this proposition in the words of the Chief Justice, and I do not accept it as correct. His Honour had no occasion to advert in that case, and in using the word "misled" he was not in fact adverting, to the distinction between an initial confusion which may or may not be quickly dispelled and one which continues up to and enters into an actual sale. The second of the propositions I have set out has the authority, not only of Romer L.J., but also of Lord Morton, who, as Morton J., said in Re Hack's Application [1] : "The question whether a particular mark is calculated to deceive or cause confusion is not the same as the question whether the use of the mark will lead to passing-off. The mark must be held to offend against the provisions of s. 11 if it is likely to cause confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived" [2] .

[22]

The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. [1] and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [2] . There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application [3] . Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case [3] the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application [3] , Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are "of the same description" ": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. [4] . Much the same considerations are evident in the observation of Dixon J. (as he then was) in Reckitt & Colman (Australia) Ltd. v. Boden [5] when he said: "What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments" [1] .

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