Lever Bros v G Mowling & Son [1908] HCA 30; (1908) 6 CLR 136 (3 June 1908)

HIGH COURT OF AUSTRALIA

Lever Bros. Opponents, Appellants; and G. Mowling & Son Applicants, Respondents.

H C of A

On appeal from the Supreme Court of Victoria.

3 June 1908

Griffith C.J., Barton, Isaacs and Higgins JJ.

Mitchell K.C. (with him Sproule), for the appellants.

Irvine K.C. (with him Levinson), for the respondents, took a preliminary objection.

Mitchell K.C.

Irvine K.C.

Griffith C.J.

The trade mark in question in this case, and which is sought to be registered in Victoria in respect of common soap, is a label consisting of three lines, the first line having at one end of it the word "Mowling's" and at the other the words "The Best," while between them is a pictorial representation of three large six-pointed stars enclosed in lines something like an Egyptian cartouche. The next line consists of the words "Three Star," followed by a blank, intended, I suppose, to be filled in with the word "soap," and the third line contains in very small print the words "manufactured by G. Mowling and Son, Melbourne." The registration of this label is objected to substantially on two grounds, both of which are based upon secs. 16 (2) and 17 of the Victorian Trade Marks Act 1890 (No. 2). Sec. 16 (2) provides that:—Except as aforesaid the Commissioner shall not register with respect to the same goods or description of goods a trade mark having such resemblance to a trade mark already on the register with respect to such goods or description of goods as to be calculated to "deceive." Sec. 17 provides that:—"It shall not be lawful to register as part of or in combination with a trade mark any words the use of which would by reason of their being calculated to deceive or otherwise be deemed disentitled to protection in a Court of justice or any scandalous design." It is said that this trade mark, if registered, would be calculated to deceive on two grounds, first, that the appellants have registered as a trade mark the word "Starlight" in respect of laundry soap and toilet soap; and, secondly, that the appellants have for some years used in Victoria a label, which, however, is not registered, consisting of an oval frame enclosing a female figure with the word "Starlight" over her head, pointing with her left hand to a very bright star, and having in the body of the label several other stars, and the words "Royal Toilet Soap," the whole label being surrounded with eight large stars and twelve groups of four stars each.

The question to be determined is whether the respondents' label as described is so like either of these two labels as to be calculated to deceive. The majority of the Court below were of opinion that it was not. The onus may be upon an applicant to show that the trade mark is not calculated to deceive. But there is no similarity between the word "Starlight," taken by itself, and the respondents' label, unless, indeed, it can be said that by registering the word "Starlight" the appellants have appropriated to themselves the use of the word "Star" in any combination. The use of the words "Three Star" does not suggest to the mind of an ordinary person that the thing to which those words are attached is the same article which he is accustomed to know under the word "Starlight." I confess that my difficulty is to find anything in this part of the case to answer. It is said that an ignorant messenger sent to buy "Starlight" soap might be deceived into buying "Three Star" soap. But when one is considering whether a trade mark is reasonably calculated to deceive, it must be supposed that people of ordinary intelligence—not particularly bright and intelligent, and not particularly stupid—are being dealt with. On the facts I entirely concur with the majority of the Supreme Court that the respondents' label is not calculated to deceive on this ground.

In respect of the other label which the appellants have been using, I entirely concur with the judgment of Cussen J. when he said that the appellants' case on this label is weaker than that on the word "Starlight."

Another point suggested is that on its face the respondents' label is not distinctive and therefore should not be registered. Unless there is some authority showing that such a label is not "distinctive," one would say that on its face it is distinctive. It is not like any other label we know to be in existence. It distinguishes the goods as being the goods of the person using it. I again find a difficulty in grasping or answering this objection. The real answer is found by looking at the label. On its face it is distinctive, and, unless the plain, ordinary meaning of the word "distinctive" has been cut down by some authority, I do not see how it can possibly be said not to be distinctive.

I have referred to this point although it may be doubtful whether it could have been raised in the Supreme Court, as it was not one of the grounds taken in the notice of objection. If there had been any difficulty in the rest of the case, it would have been necessary to consider that question more carefully. For the reasons I have given I agree with the decision of the majority of the Supreme Court.

Barton J.

I am of the same opinion and do not think it necessary to add anything. I think the opposition was groundless and that this appeal also is groundless.

Isaacs J.

I concur in the judgment of the Court. I think that, assuming as we must that the respondents' label will be fairly used, there is no reasonable probability of there being deception.

Higgins J.

I concur.

Appeal dismissed with costs.

Solicitor, for the appellants, E. Hart for A. De Lissa, Sydney.

Solicitors, for the respondents, Braham & Pirani.