Robert Harper & Company Pty Ltd v A Boake Roberts & Company Ltd [1914] HCA 9; (1914) 17 CLR 514 (6 March 1914)

Robert Harper & Company Proprietary Ltd Opponents, Appellants; and A. Boake Roberts & Company Ltd Applicants, Respondents.

The respondents in this case applied to register a trade mark for "Fruit Extracts" in class 42, which comprises substances used as food, or as ingredients in food. The "essential particular" was described as "the distinctive label," which was printed or placed on the application. It is an oblong label of no specific size, having in its middle a small five-pointed star upon a flaming sun with the word "Trufruit" in large letters, and the word "Extract" in smaller letters, in separate lines above the device, and the words "A pure fruit extract" and "Highly concentrated" in two lines below the device. A space is left between the lines "Trufruit" and "Extract," apparently for the insertion of the name of the fruit from which the extract contained in the bottle or other receptacle is made, and the word "Trufruit" is printed in inverted commas. On the application itself the label was printed in black and white, but under the Act any colour might be lawfully used by the proprietor if the trade mark were registered.

The appellants, who opposed the registration, are the proprietors of a number of trade marks for a large number of substances used as food, or as ingredients in food, including preserved fruits, essence of coffee and chicory, soluble cocoa essence and fruit juices. Their trade marks are the word "Star" alone, the devices of a five-pointed star, of a six-pointed star, and of an eight-pointed star, the words "Gold Star," the words "Silver Star," the device of a small eight-pointed star upon a larger eight-pointed star super-imposed upon a Maltese cross with the words "Star Brand" printed above, and the device of a sun below the words "Sun Brand."

The objection taken by the appellants is founded upon secs. 25 and 114 of the Trade Marks Act 1905. Sec. 25 provides that "except by order of the Court, the Registrar shall not register in respect of goods a trade mark identical with one belonging to a different proprietor which is already on the register in respect of the like goods, or class of goods, or so nearly resembling such a trade mark as to be likely to deceive." No doubt "fruit extracts" and "fruit juices" are like goods, or like classes or descriptions of goods, whichever expression is used. The question, therefore, is whether the device sought to be registered so closely resembles any of the appellants' marks as to be likely to deceive. On a comparison of the device and the marks—and in great part cases like this depend upon a comparison by the eye—it is plain to me that the respondents' proposed trade mark so nearly resembles one or more of the appellants' trade marks, which they are entitled to use for fruit juices, as to be likely to deceive persons if the proposed trade mark is registered in respect of fruit extracts. But if this were the only objection I should be disposed to accede to the respondents' application to adjourn the hearing of this matter in order to allow an application to be made under secs. 71 and 72 to expunge the registration of the appellants' trade marks in respect of fruit juices, for which a good primâ facie case was made out upon the written proceedings brought before us. It is necessary, therefore, to deal with the objection founded upon sec. 114, which depends upon somewhat different considerations. That section provides 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 used or registered as a trade mark or part of a trade mark." That section was expounded by the House of Lords in the well known case of Eno v. Dunn[1]. The test under that section is: Would the public be likely to be deceived, if this mark were registered, into thinking that the applicants' goods were really goods manufactured or sold by the opponents? It must be borne in mind that the label, if registered, may be of any size and any colour. It would be idle to contend that it was only intended to be used as a small black label a little larger than a postage stamp. The matter was dealt with by this Court in Lever Bros. Ltd. v. Abrams[2], where it was pointed out that there must be some nexus of similarity between the kinds of things to which the registered mark is applied and those as to which the new mark is sought to be applied. It is not necessary that they should be the same, but there must be some nexus of similarity. I think there is in substance such a nexus of similarity between preserved fruits, essence of coffee, and chicory on the one hand, and soluble cocoa essence and fruit extracts on the other, that persons might be induced to confound the owners of the one with the owners of the other.

The probability of deception is difficult to determine, and I should hesitate very much to decide against the applicants in this case but for the further rule laid down in Eno v. Dunn[3], which I follow, that is, that the onus lies on the applicant in cases of doubt to show that there is no probability of deception. I have come to the conclusion, after some hesitation, that the applicants have not discharged that onus, and, therefore, that registration ought to be refused in consequence of sec. 114. For this reason the appeal should be allowed.

I think it unnecessary to add anything to the judgment which has just been delivered, with which I entirely agree.

The respondents have failed to satisfy their obligation of negativing the danger of deception. The well-known words of Lords Watson and Herschell in Eno v. Dunn[4] definitely settle that obligation. In a very recent case—In re United Kingdom Tobacco Co.[5]—Lord (then Mr. Justice) Parker said:—"Where a person applies for the registration of a new mark it is for him to show that that mark is free from all danger of leading, either on the part of the public or on the part of the trade, to deception or confusion."

That is a very distinct onus, and if after considering all the relevant circumstances a doubt remains, the mark is not to be registered. The resources of art and ingenuity must be sufficient to create a distinctive mark for the applicant's goods, without creating at the same time a zone of danger either for other traders or the public.

The Commissioner says:—"The determination of the dispute between the parties rests solely on a comparison of the marks." It was argued that all the tribunal has to do in such a case is to look at the marks, and if visually they appear sufficiently different the matter is settled. If the Commissioner's words mean that, they need correction, and, in view of the contention before us, it is desirable to add a few words on this subject.

In re Worthington & Co.'s Trade Mark[6] shows that consideration must be given not merely to the label as it appears upon the document lodged for registration, but upon the possible appearance it may present, in whatever lawful form the registered owner may choose to use it, in the honest and ordinary course of trade.

In In re Trade Mark of La Société Anonyme des Verreries de l'Etoile[7] the very point was met by the Court of Appeal. Lindley L.J. said[8]:—"Two marks may be calculated to deceive either by appealing to the eye or to the ear, or by one appealing to the eye and one to the ear." There, one firm had registered as a trade mark the device of a star, and their goods were known by the designation of "Star" or "Star Brand." The other firm registered the words "Red Star Brand" without any device. This was held objectionable, and was expunged on the application of the first firm. Lindley L.J. said[9]:—"Finding that the applicants' glass is sold as Star glass, or Star Brand glass, and bearing in mind that the star may be in any colour, I cannot say that Red Star Brand is not calculated to deceive." And so per Kay L.J.[10].

In the United Kingdom Tobacco Co. Case[11] Lord Parker thought that primâ facie the two competing marks showed no likelihood of deception or confusion, but added "that is not conclusive on the subject. There may be special considerations which induce the Court to infer that some confusion may arise, though from the words themselves primâ facie it is unlikely that any such confusion would arise."

Then his Lordship referred to the evidence as to the way the public ordered the goods, and found that they in practice shortened the full registered trade mark in such a way as to tend to confusion in case the second were registered. He said[12] "there is a danger of the registration of this new mark leading to confusion or deception, not because the word does not distinctively differ from the word already on the register, but because of the tendency of the public to abbreviate, and to use the abbreviation of a brand as the ordinary designation in common parlance of that brand."

In the present case there is a large body of evidence, the truth of which cannot be doubted, showing that the appellants' goods are known at all events by a great many traders and others as "Star" goods.

That includes preserved fruits, and coffee, chicory and cocoa essences. I attach more importance to the preserved fruits than to the coffee, chicory and cocoa essences.

The question as to preserved fruits is whether as to them the applicants have discharged their burden by clearing their mark of danger of deception and confusion. This a question of fact dependent on the circumstances of the case. There are two of these circumstances which make me think they have not. One is the prominence of the star on their label, which, by means of energetic and not at all dishonest business measures, might easily, and I think would probably, lead to the star being regarded as the guide, and to the goods being spoken of as Star fruit extract. The device of the star would probably form an extremely vivid mental impression, which would find outward expression in the word Star itself. Then the next feature of prominence is the word "Trufruit." That is plainly intended to catch the eye, and impress itself on the mind. Preserved fruit is fruit treated in some way, probably compressed and flavoured, and between such a commodity called "Star fruit" and a commodity being an extract of fruit of no stipulated degree of concentration, and which came to be popularly spoken of as "Star trufruit," or "Star fruit extract," there cannot, consistently with the authorities, be said to be such freedom from danger of deception or confusion as to make registration proper. Taking into consideration the nature of the goods, and the nature of the marks, the words of Lord Blackburn in Johnston v. Orr Ewing[13], quoted by Lord Watson in Somerville v. Schembri[14], may fitly be applied. He said:—"Those are differences which might prevent purchasers from being deceived. I do not think they are such as to prevent its being likely that they would be deceived." Therefore, apart from "fruit juices" the appeal should succeed.

If the matter depended on fruit juices, I also should be disposed to accede to the request of the Attorney-General to postpone this case in order to enable his client to apply under sec. 72 to remove the appellants' trade mark from the register in respect of fruit juices for non-user during three years. I decide nothing definite as to any contention respecting the meaning or effect of that section, and, of course, I suggest nothing as to the result of such application. But I would add a word regarding two of Mr. Starke's arguments. One was that sec. 51A, where it applies, is a bar to proceedings under sec. 72; and the other was that, even if the application were successful under sec. 72, it would be of no advantage to the respondents in the present appeal. As to those I would say that the very recent case of Andrew v. Kuehnrich[15] before the Court of Appeal appears to me to make both of these contentions very difficult to maintain.

Appeal allowed. Respondent to pay costs of appeal and costs of opposition before Registrar. Costs to be taxed in this Court.

[1] 15 App. Cas., 252.

[2] [1977] FCA 7; 8 C.L.R., 609.

[3] 15 App. Cas., 252.

[4] 15 App. Cas., 252.

[5] 29 R.P.C., 489, at p. 496.

[6] 14 Ch. D., 8.

[7] (1894) 2 Ch., 26.

[8] (1894) 2 Ch., 26, at p. 28.

[9] (1894) 2 Ch., 26, at p. 28.

[10] (1894) 2 Ch., 26, at p. 30.

[11] 29 R.P.C., 489, at p. 496.

[12] 29 R.P.C., 489, at 497.

[13] 7 App. Cas., 219, at p. 230.

[14] 12 App. Cas., 453, at p. 458.

[15] 30 R.P.C., 677.

High Court of Australia

Robert Harper & Company Pty Ltd v A Boake Roberts & Company Ltd [1914] HCA 9; (1914) 17 CLR 514 (6 March 1914)

HIGH COURT OF AUSTRALIA