W H Burford and Sons Ltd v G Mowling and Son [1909] HCA 83

W H Burford and Sons Ltd v G Mowling and Son [1909] HCA 83 - HCA 1909 case summary — Zoe

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O'Connor J. The plaintiffs in this case are W. H. Burford & Sons Ltd., soap manufacturers, carrying on business in South Australia and Western Australia. It appears that for the last twenty years they have been selling a laundry soap under their special registered trade mark as "Signal Soap." They have been in the habit of putting it in packages called cartons, which are strawboard cases of about the shape and size of an ordinary brick and they appear to be a cheap, substantial, and enduring kind of package. For the last fourteen years they have been carrying on their business in Signal Soap in Western Australia, and it has always been sold here in these cartons. The defendants, Mowling & Son, are also soap manufacturers, and some four or five years ago they came into the Western Australian market selling a soap of practically the same kind - also a laundry soap. Up to November last their packages were in the form of long bars wrapped in strong paper marked " Tulip Soap," which was the name of their soap, just as the plaintiffs' packages were marked "Signal Soap." The defendants, however, in that month altered their packages to cartons of about the same size and shape as those of the plaintiffs. Correspondence has been put in between their agents in Perth and the head office of Messrs. Mowling & Son in South Australia to show their object. It is plainly disclosed in the letters, and it was this: They saw that Signal Soap was doing good business in that particular form of packet, and they determined that the same method of putting up their soap would be advantageous to them also. They therefore decided to put up their soap, which had previously been put up in long cartons, in the same form of carton as that of the plaintiffs. The result was that they put in the Western Australian market a carton containing their "Tulip Soap" of exactly the same shape, size and material as the plaintiffs' cartons. The colour was slightly different: the colour of the plainti strawboard being a dark yellowish brown, that of the defendants' being a light yellowish brown. Thereupon the plaintiffs wrote to the defendants complaining that their conduct amounted to an endeavour to pass off the goods of the defendants as those of the plaintiffs, and demanded that the selling of soap in their new packages should be discontinued.

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plaintiffs' goods in a particular market, it is incumbent on a trader, who adopts the same method of get up for the purpose of pushing his trade in a similar article in the same market, that he shall 4 clearly differentiate his goods on the face of the package from those of the plaintiffs. The matter which I have to determine is, therefore, in substance, narrowed down to the question whether the defendants, in adopting cartons of the same material, colour, shape and size as the plaintiffs, have made the difference of manu- facture and owner ship clear on the face of the package. The principles applicable to the determination of that question were clearly laid down by Lord Justice Lindley, then Master of the Rolls, in Payton & Co. Ltd. v. Snelling, Lampard & Co. Ltd. (1). The case had been decided by a Judge of first instance, went to the Court of Appeal, and afterwards to the House of Lords. The judgment in the Court of Appeal, from which I am about to quote, was approved in the House of Lords. Lindley L.J. said: - " After all said and done, what have we to consider ? What is it that the plaintifis must make out in order to entitle them to succeed in this action? They must make out that the defendants' goods are calcu- lated to be mistaken for the plaintiffs', and, where, as in this case, the goods of the plaintiff and the goods of the defendant unques- tionably resemble each other, but where the features in which they resemble each other are common to the trade, what has the plaintiff to make out? He must make out not that the defendant's are like his by reason of those features which are comnion to them and other people, but he must make out that the defend- ant's are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plain- tiff's from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails." E;

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characteristic, the name of the soap on the package, it is impos- sible for anyone who can see to mistake the defendants' package for the plaintiffs'. To my mind that is perfectly clear. "Tulip Soap" is printed in very large letters on two sides. " Signal Soap" is printed in smaller letters on only one side of the plain- tiff' carton. Testing the two packages by the evidence of my own senses I look at them side by side the length of this Court away from me, some thirty feet I suppose. I can see the words "Tulip Soap" very much more plainly than the words " Signal Soap." It is impossible that any one with normal sight looking at the packages at this distance could make any mistake between them. It is said, however, that in the general shape and form of the lettering on the other sides of the packages there is a similarity. It is true there is a similarity in the shape of the lettering, but the lettering consists of directions for the use of the soap under different circumstances, and the evidence is that all soap manufacturers put similar instructions on their packages. At all events there is nothing in that similarity which can in any way detract from the effect of the clear distinction which is made by the words in black type " Tulip Soap " distinguishing it from the "Signal Soap" of the plaintiffs'. Nor do I attach any importance under the circumstances to the similarity in position and shape of the advertisement of candles and starch at the end of the cartons. The view I take of the case from my own obser- vation of the packages may be stated in a few words. The plaintiffs' soap is sold on the market as "Signal Soap" and has always been known as "Signal Soap." The defendants' is sold as "Tulip Soap " and has always been known by that description. They are both, it is true, put up in the same kind of packages, but the words "Tulip Soap" are printed on the defendants' packages so clearly as to make it impossible for a person of ordinary eyesight to mistake that package for the package of the plaintiffs' " Signal Soap."

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Court

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Before

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Judgment (62 paragraphs)

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