Standard Paint Company v Hales Ltd [1920] HCA 7; (1920) 27 CLR 350 (1 March 1920)

HIGH COURT OF AUSTRALIA

Standard Paint Company Opponent, Appellant; and Hales Limited Applicant, Respondent.

H C of A

1 March 1920

Knox C.J., Isaacs, Gavan Duffy and Rich JJ.

J. R. Macfarlan (with him Sproule), for the appellant.

Latham and Gorman, for the respondent.

Knox C.J.

In my opinion this appeal should be allowed, and registration refused. I feel no doubt that the applicant for registration has failed to establish, as he was bound to do, that the use of the word "Superoid" as a trade mark in connection with the class of goods to which his application relates is not calculated to deceive, having regard to the use and registration of the word "Ruberoid" as a trade mark in regard to goods of the same class. So far from the applicant discharging this onus, I think it is reasonably clear that, having regard to the spelling and pronunciation of the two words in question, and to the fact that both are invented words and not ordinary English words at all, those responsible for the invention of the word "Superoid" in launching this application entertained the idea that they were getting as near as possible to the word "Ruberoid" without incurring the disability of not being able to register the former word. The circumstance that the applicant tendered no evidence in opposition to that furnished by the opponent confirms me in that belief.

For these reasons I think that the appeal should be allowed.

Isaacs J.

I also agree that the appeal should be allowed. I will quote a few words from my judgment in Robert Harper & Co. Proprietary Ltd. v. A. Boake Roberts & Co.[1], not as an authority but because at the present moment I cannot frame my opinion in better words. I said:—"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. Dunn215 App. Cas., 252. definitely settle that obligation. In a very recent case— In re United Kingdom Tobacco Co.329 R.P.C., 489, at p. 496.—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." Applying those principles and observations to the present case, the best that can be said for the respondent is, to my mind, that there is nothing in the circumstances to alter the mutual effect of the two marks when they come into competition in the market. Having regard to the nature of the goods to which the marks apply, the goods being exactly the same in each case, it cannot be said in this case that the registration of the respondent's mark would be free from danger of confusion or deception.

I therefore think that the respondent has failed in discharging the onus cast upon it.

Gavan Duffy J.

I agree that the appeal should be allowed.

Rich J.

I agree that the appeal should be allowed, and I base my judgment on the ground that it is not clear that deception may not result from registration. I repeat what I said in Don v. Burley[4]. I amplify that a little. The words of sec. 33 (3) are plain. There is no absolute right to registration of a trade mark, but, subject to certain limitations, the Statute clothes the Registrar with a discretion to refuse or accept registration (In re Garrett's Application[5]). It is a proper exercise of this discretion to refuse registration where the matter is left in dubio, the applicant not making it perfectly clear that there is no danger of deception.

Appeal allowed with costs. Respondent to pay costs of appeal, and such amount by way of costs as would have been allowed if appellant had been successful both before the Registrar and the Law Officer, such costs to be taxed.

Solicitor for the appellant, F. B. Waters.

Solicitors for the respondent, Strongman & Crouch.

[1] 17 C.L.R., at p. 520.

[2] 15 App. Cas., 252.

[3] 29 R.P.C., 489, at p. 496.

[4] 22 C.L.R., at p. 141.

[5] (1916) 1 Ch., 436, at p. 441.