Lever Bros Ltd v Lewis Grant Abrams [1909] HCA 32; (1909) 8 CLR 609 (27 May 1909)

Lever Bros., Ltd. Opponents, Appellants; and Lewis Grant Abrams Applicant, Respondent.

I think that this appeal must be allowed. The appellants appeal from a decision of the Registrar of Trade Marks allowing registration of a trade mark which the respondent had applied to have registered. The mark in question is a circular label having written across it, and occupying the middle portion or section, the word "Sunlight" in large letters, those at the outer edges being considerably larger than those in the middle. Above that word where the north pole of the circle would be is an emblem of the rising sun with the word "Nothing" on one side of it and the word "brighter" on the other. Beneath the rising sun is the word "for" having below it a space intended apparently to receive the name of the article to which the trade mark was to be applied, and in the lower segment of the circle is the word "Agent" over "L. G. Abrams, Sydney." The respondent desires to make the essential particular of his trade mark the word "Sunlight," the rest of the label being added matter.

The application was for registration of the trade mark in respect of boot polish, linoleum cream, and harness dressing. The appellants objected to the registration upon the ground generally that the trade mark of the applicant was likely to deceive. The objection was based upon two separate provisions of the Trade Marks Act 1905. The first is sec. 25 which provides: (His Honor read the section), and the other is sec. 114 which provides: (His Honor read the section). Sec. 25 relates, as appears on its face, to questions arising between the owner of an existing trade mark and a person desiring to register another mark. Sec. 114, as was pointed out by Lord Macnaghten in Eno v. Dunn[1], in dealing with a similar sec. (73) in the English Trade Marks Act 1883, relates to questions arising as between the trade and the public. The appellants are the owners of the registered trade mark "Sunlight," consisting of that word only, which is registered in respect of various things included in Class 50, sub-class 10 under the Trade Marks Act, viz., "soap (not included in other classes), polishing extract, polishing paste, and similar polishing compounds, and materials for polishing or cleaning cutlery, china, glass, earthenware, buildings, marble paint and other substances being goods included in Class 50, sub-class 10."

To deal first with sec. 25, it is contended by the applicant that the boot polish, linoleum cream and harness dressing are not "the like goods, or class of goods" with those for which the appellants are registered. So far as linoleum cream and harness dressing are concerned I have not much difficulty in saying that they are "the like goods, or class of goods." The meaning of those words was discussed in In re The Australian Wine Importers' Ltd.[2], and, although the Court there did not think it necessary to formally decide whether wine, whisky and rum were the same class of goods, they found no difficulty in expressing the opinion that they were. I do not find very much difficulty in saying that polishing extract, polishing paste, and materials for polishing, amongst other things, earthenware, buildings, marble &c., are the same class of goods as harness dressing or linoleum cream. With regard to boot polish there is perhaps a little more difficulty, but I express no opinion on the subject, as I do not think it necessary to do so. I think therefore that, if sec. 25 alone were referred to, the goods in respect of which the respondent desires to register would come within the section, except possibly so far as boot polish is concerned. The mark of the respondent is not identical with that of the appellants, because the added matter is part of the trade mark which he desires to register, although not essential, and is not part of the appellants' registered trade mark. But it is a significant fact that the emblem of the rising sun, which the respondent makes part of his mark, but as to which he disclaims any right of exclusive user, is a mark that has been commonly used by the appellants, so that the respondent proposes in fact to make use of the mark that the appellants have been using for their goods for many years. If he uses his trade mark he will have to use the same mark as that used by the appellants. It follows that the two marks are practically almost identical, apart, of course, from the words "Agent L.G. Abrams."

Now I pass to sec. 114. That section, or rather the corresponding section in the English Trade Marks Act, which differs only slightly in words, has been expounded by the House of Lords in Eno v. Dunn[3]. It is a section for the protection of the public, and the question to be determined under it is whether, if such a trade mark as the respondent seeks to register were registered, the public would be likely to be deceived into thinking that they were buying the goods of the appellants. It is suggested for the respondent that it does not actually appear in this case whether the appellants actually sold any goods which may properly be described as polishing extract or polishing paste as distinguished from soap and soap compounds. But that is not the question for consideration. The appellants' trade mark is upon the register lawfully, and there has been no application to expunge it. The appellants are at liberty under their registration to make and sell those things marked with their registered mark, and if they did so, there is, I think, every reason to suppose that ordinary reasonable persons seeing the respondent's trade mark on his goods would be led to believe that the goods to which it was attached were goods manufactured by the appellants. That the respondent thought so himself, is, I think, fairly plain from the fact that he has adopted as part of his trade mark the emblem of the rising sun, and also from the use of the words, "Agent L. G. Abrams," although he says that that is a true description of his business. Any ordinary person of the class likely to purchase these goods, on looking at them would think, on seeing these words, that Abrams was merely the agent for this particular kind of goods which were manufactured by some one else. In my opinion the design is likely to deceive the public, and I do not think that the case can be distinguished from Eno v. Dunn[4]. What I am now saying applies with particular force to the case of boot polish. There must, of course, be some nexus of similarity between the thing to which one trade mark is applied and that to which the other is applied. As Lord Herschell said in Eno v. Dunn[5]—if a person applied the expression "fruit salt" to such a thing as an umbrella it was not at all likely that it would be supposed to have any connection with the "fruit salt" manufactured by Mr. Eno. But there is no such dissimilarity between boot polish and polishing paste or extract, which are things for which the appellants' trade mark is registered. In my opinion, the likeliness of the respondent's trade mark to deceive is clearly established. Eno v. Dunn[6] is an authority for the proposition that as soon as a primâ facie case of a liability to confusion between a trade mark that it is sought to register and one already on the register is made out, the onus is cast upon the applicant of showing affirmatively that his mark is not calculated to deceive. In this case I think the affirmative proposition, that the trade mark is likely to deceive, has been established.

For these reasons I think that the application should have been refused, and, therefore, that the appeal should be allowed.

I am of the same opinion and have very little to add. The opposition to registration of the trade mark in question is put upon grounds involving the interpretation of secs. 25 and 114 of the Trade Marks Act 1905. Sec. 25 is taken from the English Act, 5 Edw. VII. c. 15, sec. 19, and, notwithstanding some verbal differences, its effect is substantially the same as that of the English section from which it is taken. The English section itself is merely the repetition of a section which has been in the English Patents Act for a number of years. I therefore take it that the English decisions expounding the English Acts are applicable to cases arising under sec. 25 of the Act now in question.

I need not repeat what my learned brother the Chief Justice has said with regard to these goods being "the like goods, or class of goods." In so far as harness dressing and linoleum cream are concerned there can be no question that they are so nearly allied to one another in their use, in their nature and in the class of persons dealing at the places where they are likely to be bought, that there is strong reason for holding them to be the same class of goods as those for which the appellants are registered. Dr. Cullen's argument has satisfied me that the same considerations apply to the boot polish, though not perhaps so strongly. The trade mark, for the purpose of determining whether it is identical with or so nearly resembling the Sunlight trade mark as to be likely to deceive, must, I think, be taken to be the whole trade mark registered. The applicant's counsel has made it clear that if he wishes to obtain the protection of the Act he is bound to use the whole trade mark. I shall therefore consider the case on that basis. That is to say, the trade mark is not the word "Sunlight" only, but "Sunlight" with the additions which appear upon the mark itself. There is, I think, good ground for holding that if the applicant's trade mark is applied to these goods, it is when thus applied one which so nearly resembles the Sunlight trade mark that it is likely to deceive. I prefer, however, to base my decision upon the provisions of sec. 114 which correspond with sec. 73 of the English Trade Marks Act of 1883. Lord Herschell stated the principle upon which that section is to be applied very clearly in Eno v. Dunn[7], where he said:—"I think it is enough to say that I am not satisfied that there would be no reasonable danger of the public being deceived. The case was argued on behalf of the respondent as if he had an absolute right to have any trade mark registered which was not proved to fall within the term of either the 72nd or 73rd section of the Act. I do not so read the Statute. Those sections prohibit the registration of a trade mark in certain specified cases; but there is no duty cast upon the Comptroller of registering every other trade mark that may be applied for. On the contrary, whilst he is in certain cases prohibited from registering, a discretion whether to register or not appears to me to be in all cases plainly conferred. Of course this discretion must be reasonably and not capriciously exercised; but it is, in my opinion, a reasonable exercise of it to refuse registration when it is not clear that deception might not result from it." Kay J. in In re The Australian Wine Importers' Ltd.[8] made similar observations, and his judgment was upheld afterwards by the Court of Appeal. In that case there had been upon the register as a trade mark, the device of a golden fleece having the words "Golden Fleece" printed on it, the device consisting of a sheep suspended by a band passed round it and upon the sheep the printed words. That was the trade mark under which a wine and spirit merchant had sold his goods for a number of years. Another wine merchant sought to put upon the register a new mark consisting of a sheep suspended, as in the other mark, and the words "Golden Fleece," not for spirits, but for wine. It was contended that the latter was likely to be confused with the trade mark actually on the register. Kay J. said (1):—"The meaning and intention of that might be, assuming, as I am for the moment, that the other tradesman who has already got the mark on the register has a large and well established business—to get the advantage of that well established business; that is, to make the world suppose or suspect that this wine is wine which has either been manufactured or selected by the man who has been selling the Golden Fleece spirits; in other words, to get the advantage of another man's trade; to profit by his reputation; to deceive buyers into the belief that the wine sold is wine manufactured or sold by the other merchant. If there is a possibility of that kind of deception the Comptroller ought, in my opinion, to say that the mark shall not come upon the register. It is not all the same question as though the spirit merchant were now bringing an action against the applicants to prevent them using the trade mark. That is quite a different matter. Probably he might not succeed: it might be said to him You shall not have an injunction; the Court will not interfere by its extraordinary jurisdiction in your favour, because you are only using the mark for spirits: but does it follow that, because he could not get an injunction, the other man is entitled to put the trade mark upon the register? In my opinion it does not follow at all, and I have said so many times." Those are the principles which are to be applied in the administration of sec. 114. Now what is the position of these parties? The opponents, it appears, have had their mark registered some considerable time, and have been in the habit of making soap and soap products; their wares have been largely advertised and have become connected in the mind of the public with the word "Sunlight." That is to say, they have established by advertisement and trade of an extensive nature a very large business in all their goods which are identified with the word "Sunlight." That is their position. The position of the applicant is that, though he has invented and traded in this class of goods, he has not sold them under this particular name before. The whole field was open to him to choose from as to what should be his trade mark. The onus is on him, as was pointed out in Eno v. Dunn[9] by Lord Watson, to show that there is no likelihood of confusion or deception of the public in the use of the trade mark which he has chosen. Now under these circumstances I look at the trade mark applied for and I find there the word "Sunlight," which is associated with the sale of the opponents goods of the like kind in the minds of persons likely to use these things for domestic purposes. I find there also the emblem of the rising sun and, what is more important still, the word agent above the name of the applicant. Well it is quite true that this Court may make an order granting registration in a modified form, striking out the word "agent" and the rising sun, but I think their presence throws a strong light upon the advantage which the applicant sought in using the word "Sunlight." There is, so far as I can see, no other reason why the applicant, who is going to manufacture these goods himself, who manufactures other articles, and has a separate business as agent, should describe himself in the trade mark as agent rather than as manufacturer. It all goes to strengthen the suggestion to the public that the goods sold are "Sunlight" goods of the opponents manufacture. Now it is not necessary, nor do I wish to assert, that there is any fraud or improper dealing in all this, but it is for the Court to consider whether, under all the circumstances, the public are likely to be deceived by the use of a trade mark of this kind. I have come to the conclusion that, having regard to the form of the trade mark applied for, the business carried on by the opponents, the way in which the word "Sunlight" has become identified with their preparations, and the similarity of their preparations to those for which the trade mark is now sought to be registered, the use of this trade mark would be likely to deceive, and that the application should not be granted.

I therefore agree that the appeal against the order of the Registrar must be allowed.

I am also of opinion that the appeal should be allowed. But I desire to express no opinion as to the meaning of sec. 25. The exact meaning and application of that section must be left for the future to determine. I rely purely upon sec. 114, which prevents the registration of any "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." This phrase comes in between a prohibition as to registration of a scandalous design and of a mark the use of which would be contrary to law or morality. This is based upon the English Act of 1883, sec. 73. The cases in which the English Courts have found that a mark should not be registered under that section are collected in Kerly, 2nd ed., p. 200 and the following pages. Sec. 114 I regard as not intended for the protection of one trader against another, or for the protection of one trade mark as against another, but as prohibiting the registration of any trade mark which is likely to deceive the public. This view is, I think, not only confirmed, but clearly laid down in Eno v. Dunn[10], and In re The Australian Wine Importers, Ltd.[11]. Here we have in paragraph 6 of the declaration of Mr. Meek and the following paragraphs specific evidence to this effect—that if an unskilled purchaser were to go into a shop, having bought "Sunlight" soap, and liking it, and were to see "Sunlight" boot polish also sold there, he would be likely to fancy that the articles were made in the same manufactory. Now that statement is not really categorically denied in the declaration of Abrams, the applicant. If we refer to paragraphs 7—9 of his declaration it will be seen that he puts forward as an answer this platitude, that "the sale of the goods depends at the present time not upon the name, but upon the merits of the article." The rest of his statements are wordy, argumentative and unconvincing. To support him he has the statement of a Mr. McDermott, a grocer and general storekeeper, who sells "Sunlight and other brands of soap, boot polish, and other like goods." He does not use "Sunlight" boot polish, has had no experience of the sales of it, and gives as the sum of his opinion that, because he is sure that the public are not deceived as to the makers of "Champion" vinegar and "Champion" jam being the same person, therefore they are not likely to be deceived between the makers of "Sunlight" boot polish and "Sunlight" soap. I think we are at liberty to form our own opinion upon the facts as well as this witness, and I unhesitatingly come to the conclusion that under the circumstances of this case the trade mark is likely to deceive the public.

Appeal allowed. Declaration that the application should be refused. Respondent to pay the costs of the appeal and costs before the Registrar, to be taxed in this Court.

[1] 15 App. Cas., 252, at p. 263.

[2] 41 Ch. D., 278.

[3] 15 App. Cas., 252.

[4] 15 App. Cas., 252.

[5] 15 App. Cas., 252, at p. 260.

[6] 15 App. Cas., 252.

[7] 15 App. Cas., 252, at p. 261.

[8] 41 Ch. D., 278, at p. 281.

[9] 15 App. Cas., 252.

[10] 15 App. Cas., 252.

[11] 41 Ch. D., 278.

High Court of Australia

Lever Bros Ltd v Lewis Grant Abrams [1909] HCA 32; (1909) 8 CLR 609 (27 May 1909)

HIGH COURT OF AUSTRALIA