W H Burford & Sons Ltd v G Mowling & Son (No 2) [1909] HCA 83; (1909) 8 CLR 212 (1 April 1909)

HIGH COURT OF AUSTRALIA

H C of A

1 April 1909

Griffith C.J., Isaacs and Higgins JJ.

Moss K.C. and Barsden, for the plaintiffs.

Pilkington K.C. and Northmore, for the defendants, at the close of the plaintiffs' case,

Barsden, in reply,

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 plaintiffs' 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.

The defendants at once took up the position that they had a right to use that form of package, and that there was no similarity which would be likely to deceive. That is the position which they now adhere to. The plaintiffs, on the other hand, claim that the defendants' action has been illegal, that they must be restrained from continuing to use the new form of package, and that they must compensate the plaintiffs for any damages which may have accrued to the plaintiffs in their trade from the use of these cartons by the defendants.

There is no doubt about the law in such a case. Every trader has primâ facie a right to put up his goods in any packages which he may think attractive and convenient, and in any method which he may consider suitable for the carrying on of his trade. But that right is subject to limitations. He must not use the registered trade mark of another, and he must not put up his goods in such a form as to be likely to deceive ordinarily intelligent persons into mistaking his goods for goods known in the market as manufactured, put up, or sold, by another. Subject to these limitations every trader has a right to use any material or any shape he may think fit for packing of his goods and for putting them on the market. The plaintiffs have no monopoly in the particular kind of packing which they have adopted. It is a strawboard made up in the ordinary brick shape. Strawboard, as is well known, is used in putting up a great many articles not only of grocery, but also of ironmongery, medicines, and other commodities. It is a material of very common use for packages, and is becoming of more common use for that purpose every day. The use of strawboard for packages is therefore open to the trade, and no one trader can acquire a monopoly of it. Neither can the plaintiffs by adopting that particular form of package acquire a monopoly of that form. Its use is equally open to any person in the trade. I take it, therefore, that the material of the package, its shape, colour, size and method of make up, are all common to the trade, and may be used by any trader. But that which distinguishes the plaintiffs' packages from what is common to the trade is the large and distinctive lettering on the package "Signal Soap."

Now it must, I think, be admitted in the plaintiffs' favour that where, as in this case, a certain method of get up, though open to all traders, has been for many years solely identified with the 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 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 manufacture 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 plaintiffs must make out in order to entitle them to succeed in this action? They must make out that the defendants' goods are calculated to be mistaken for the plaintiffs', and, where, as in this case, the goods of the plaintiff and the goods of the defendant unquestionably 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 common to them and other people, but he must make out that the defendant'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 plaintiff'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."

The next question is, what amounts to a misleading resemblance, a resemblance likely to deceive? The ultimate test of whether a package is likely to deceive must be how it is likely to affect the customer. As to that we must see what kind of customer, in respect of intelligence and knowledge, the law considers in this relation. In the case from which I have already quoted Romer[2] : "It seems to be a sort of popular notion of some witnesses that in considering whether customers are likely to be deceived, you are to consider the case of an ignorant customer who knows nothing about, or very little about the subject of the action. This is a great mistake. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods on the market so far as relates to general characteristics. The customer must be one who, knowing what is fairly common to the trade, knows of the plaintiff's goods by reason of these distinguishing characteristics. If he does not know that he is not a customer whose views can properly, or will be, regarded by this Court."

I shall proceed now to apply these general principles to the facts of this case. I will take the plaintiffs' package first. Its special characteristic distinguishing it from what is common to the trade is the description of the soap, "Signal Soap" on the face of it, in large letters. There is no doubt from the evidence that this soap was known in the market as "Signal Soap," and was always bought as "Signal Soap." Ordinary persons who wanted it asked for "Signal Soap," and I observe that on the side of the carton there is this notice:?"Beware of imitations. Ask for Burford's Signal Soap, and see that the name is on every bar and package." It is therefore the essential distinguishing characteristic of the plaintiffs' package that it had on it the name of the soap, "Signal Soap," in large plain letters.

I turn now to the defendants' package in order to aseertain, with special reference to that distinguishing characteristic of the plaintiffs' package, whether the defendants' package is calculated to deceive. I find it is of the same material, size, shape, and general get up. I assume in the plaintiffs' favour that it is of the same colour. But I see at once that, in the distinguishing characteristic, the name of the soap on the package, it is impossible 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 plaintiffs' 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 observation 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."

But a Judge, it is urged, must rely not only on the evidence of his own senses, but he must take into consideration the evidence of the witnesses. A number of witnesses have been called, but one only attempted to give evidence of anything like an instance of deception. That was Mrs. Regan. Her evidence established to my mind the difficulty of mistaking one package for another. She appeared to be a very intelligent woman, and to know what she was talking about. Her story is this. She went into a store in North Fremantle, made some purchases, and amongst other things asked for Burford's No. 1. That is another class of Burford's soap, not "Signal." The shopman handed her "Tulip Soap." At that time she did not know there was any soap in the market except "Signal" which was put up in that form of package, and she said "Oh Signal? Yes, that will do," and she is quite positive she used the word "Signal." She assumed that what the shopman was giving her was "Signal Soap" apparently without looking at it. Her purchases were sent home, but directly her husband saw the package he noticed the difference, told her of it, and he sent it back again. She was deceived, not by the package, but because she took the word of the man who served her without looking at the package. It would be impossible for me on evidence of that kind to come to the conclusion against the evidence of my own senses that the package of the defendants could be mistaken for that of the plaintiffs.

Evidence in support of the plaintiffs' position was also given by another witness, Mr. Hicks, of the Union Stores Perth. He gave his testimony very fairly indeed. I wish to say that all the plaintiffs' witnesses, although they seemed to be dealing exclusively in "Signal Soap," gave their evidence with singular fairness. He admitted, in answer to my direct question, that the only persons who would be likely to be deceived into mistaking the defendants' package for that of the plaintiffs were people who could not read, or who bought in dark stores where they could not see the lettering on the packages, or who were absolutely unintelligent. None of those persons come within the class of customers pointed out in the passage I have read in the judgment of Romer J., whose opinion should be considered in a case of this kind.

On the whole case, therefore, giving full weight to the evidence of the witnesses, and applying my own eyesight and faculties of observation to the appearance of the rival packages, I find that it is impossible to believe that the packages used by the defendants can have the effect of deceiving any reasonably intelligent person who uses his eyesight into believing that the defendants' packages are the plaintiffs' packages. As no evidence has been placed before me on which I could come to the conclusion that the plaintiffs have established their complaint, there is no case for the defendants to answer. And as Mr. Pilkington has moved for a nonsuit I cannot do otherwise than grant it. The plaintiffs must therefore be nonsuited with costs.

From this decision the plaintiffs now appealed to the Full Court.

Appeal dismissed with costs.

Solicitors, for the appellants, F. G. Smith & McEacharn for Moss & Barsden, Perth.

Solicitors, for the respondents, Braham & Pirani for James & Darbyshire, Perth.

1. 17 R.P.C., 48, at p. 52.

2. 17 R.P.C., 48, at p. 57.