Angelides v James Stedman Hendersons Sweets Ltd [1927] HCA 34; (1927) 40 CLR 43 (30 August 1927)

Angelides and Others Defendants, Appellants; and James Stedman Hendersons Sweets Limited Plaintiff, Respondent.

The respondent originally set up two claims—infringement of trade mark and passing off. The first was abandoned in the Supreme Court, and has not since been heard of. No further reference to it is now necessary, except to say that from what follows it will be seen the respondent was well-advised not to suggest that "Minties" formed what is sometimes called an essential feature of the trade mark. The claim that was relied on, and upon which the respondent succeeded, was the claim technically known as "passing off," a convenient but not altogether appropriate term. It should be noted at once, on reference to the pleadings, that no charge of fraud is made against the defendants. The vital importance of that circumstance will be made clear. Harvey J. decided this claim in favour of the respondent, and from the decree thus made the defendants appeal. In my opinion, the appellants are entitled to succeed. But for the contrary opinions, from which I have the misfortune to differ, I should have thought that on the admitted and uncontroverted facts of the case, and on the way the claim is presented in the statement of claim, the appellants' right to succeed was sufficiently plain. The respondent's real case is that it has a right to monopolize for confectionery the word "Minties." If it has not that right, it cannot succeed in this or any similar litigation, either at law or in equity. If it has the legal right to the word in that connection, it should still fail in this suit in the way it is framed.

Before stating the legal propositions which, in my opinion, govern this case, it will be well to narrate the material events to which those propositions apply. As on 23rd September 1922 the respondent registered for class 42 (food substances) a trade mark substantially as follows: [The trade mark as in par. 3 of the statement of claim was set out.] The word "Sweetacres" was in white letters on a black ground, the word "Minties" being in ordinary capitals. It is very desirable to look back to the moment of registration in order justly to appraise mentally what has happened since, and how it has happened. There is great danger, as it seems to me, in this case, of two cardinal errors. One is that success may be mistaken for merit. The other is that judicial condemnation of lack of commercial candour may be exhausted on the appellants reserving none for that which is deservedly attributable to the respondent, and possibly in a greater degree. The only sure way to avoid both pitfalls is to trace the main steps taken by the respondent to attain the position it claims to protect. In its registered trade mark it made no separate claim to the word "Minties." During the argument it was sought to maintain it as an invented word in order to lighten the burden of the proof necessary on the respondent's behalf. This was urged variously on the grounds that it was a substantive so used for the first time—a circumstance adverted to by Harvey J.; also that it was a diminutive of "Mint." There is far more invention in the legal argument than in the construction of the word. In 1922 there stood in the Dictionary (Oxford Dictionary 1908) the word "Minty," meaning (a) abounding in mint, and (b) resembling the flavour of mint. True, it had not been used substantively, but when the occasion presented itself for utilizing the word in business, nothing in the nature of invention was necessary to make it a noun. The constant practice of elliptically employing adjectives as nouns would naturally suggest itself. Familiar instances are easily quoted. For example, the adjective "dainty" is first used substantively, and then, by a perfectly regular process, the plural is recognized as "dainties." So "daily," "weekly," "quarterly," "annual," become nouns, as "dailies," "weeklies," "quarterlies," "annuals." Numberless instances could be recalled of adjectives used elliptically as nouns. Such are the briny, blacks, reds, the mighty, a general (servant), googlies, the regulars and the irregulars; and so on. This is substantially what the respondent did. Mr. Wyllie, a director, in an affidavit, deposed that it was decided on "as an invented name, as it was an easy-sounding name, suggesting the flavour of peppermint, and was not in any way similar to any other nougat then upon the market." He admitted, however, in cross-examination, that personally he did not know how the name came to be selected or invented. Nor was any evidence given on that point. The importance of Mr. Wyllie's evidence, however, is that he recognizes it as descriptive of the flavour of peppermint. This descriptive character has always been maintained. The labels on the tins describe it thus: "Minties (Reg) the new digestive nougat Mint." This, be it observed, also makes the word "Minties" the name of the article itself.

The first question that arises is: Immediately that was put on the market, could the respondent have claimed a monopoly of the word, and all words resembling it, as it is claiming now? Or could the public, including competing traders, have said in effect: "Minties is not really a new word, it is only a new form of an old word, the change preserving the whole of the old word, and introducing well-known expedients for colourably varying the original form"? In my opinion the latter is the true position. So long as the word was used so as not to deceive in the get-up, so long as it was accompanied with safeguards in that respect, I cannot imagine for a moment that a competitor, immediately after its introduction, would be told by a Court that the respondent had at that time the monopoly it now claims. If a Court can sanction the private appropriation of a word with an indefinitely extending area of protection around it, the moment someone chooses to use as a trade appellation an adjective as a noun for the first time conformably to precedent, we may expect quite a crop of similar reservations. It would be interesting to anticipate a few; such as "tasties" for pies, "lovelies" for dresses, "ruddies" for apples, "juicies" for oranges, "sugaries" for candy, "dressies" for ladies' hats, "soapies" for soap, "nutties" for nuts, "creamies" for pots of cream, or "baggies" for bags. But why stop at altering "y" into "ies," why not "attractives" for blouses, "delightfuls" for shawls, "excellents" for jams; and so on ad infinitum? The suggestion made during the argument that "minties" might be regarded as a diminutive does not seem to me to be justified. The comparative size of the article would make a diminutive sense deceptive, even if there were no other objection. One thing is certain, that invention is incompatible with the suggestion. No attempt was made to register the word as an invented word in 1922; nor was its separate registration applied for until August 1925, when apparently it was hoped it had by that time been invested with some essential feature of a registrable trade mark. That application is still pending, and the word has never been separately registered. Possibly this action is for the purpose of assuring success on that application.

At this point a very important consideration presents itself: If, when the trade mark and the product were launched on the market, the respondent had, as I conceive, no monopoly in the word as such but was entitled only to regard it as part of its get-up, when and how did the public lose the right it then had? It is not, as it seems to me, sufficient to say "the word had never been so used before." If on the first use it is the subject of monopoly, cadit quœstio; for then, unless it is allowed to become publici juris, the monopoly remains. But here it is the reverse process. Not being originally private property, how it has become so, once it is launched into the world, must be shown by the respondent just on the same principle as with respect to any other word which had originally been part of the language. No doubt, the burden is different in each case, but the principle is the same; and, with great respect to the judgment under appeal. I do not think sufficient notice is taken of this consideration. This makes it essential to consider how the respondent has discharged the burden it has assumed in asserting the ultimate creation of its monopoly.

Though until August 1925 the respondent never even attempted to obtain separate registration of the word "Minties," and although since then it has been fully aware that that registration has not been effected, and had during the latter part of the period been contested, the respondent has in the most strenuous manner sought, till after those proceedings were begun, and even since, to mislead the public mind, and to create the false impression that separate registration of the word had been effected, and that the respondent already had an exclusive right to the word for the purpose of the relevant trade. Even if we assume, as Harvey J. has found, that the public mind now, that is, at the time of instituting the suit, associates "Minties" with the respondent's productions only, the serious question arises, how was this public belief created? Was it the result of candid trading; no imposition, no misrepresentation being made to those more directly interested in respect of the word, so that they voluntarily and freely abstained from engaging in competition under that name or some name closely resembling it—be it "mentes" or any other word, or even with appropriate safeguards?—or was it the outcome in any material sense of the untruthful representation by the respondent that it had by statute the exclusive right to the word for mints in all circumstances, thereby deterring, or possibly deterring, other trade competitors from using that or any similar word in any way whatever, and at the same time deluding the public into believing that the respondent, and it alone, had the right to call such productions "Minties"? I regret to record my view, but it is clear, and, I think, beyond reasonable doubt, that the public belief, which I assume to exist, is due in large measure to misrepresentation. To some extent, Harvey J. has recognized this. He says: "On some of its goods there are statements from which one would gather that the word Minties alone is a registered trade mark." He thinks there are some instances where the word "registered" is attached to the whole registered mark. I have been unable to discover any, though I asked learned counsel to point them out. I can only conclude that his Honor referred to statements in which in some way or other the whole trade mark appeared, however disconnected. Harvey J., however, goes on to say: "But on the other hand, there are certain portions of the make-up, such as the lids of the tins, the wrappings in which the sweets are contained, and the bags which are distributed to the distributors, in which the only reference to a registration is in conjunction with the word Minties alone." But for an unfortunate misapprehension of the effect of M. Melachrino & Co. v. Melachrino Egyptian Cigarette Co.[1] it is very possible the decision would have been the other way. But in any case the learned Judge, while finding what, in my opinion is not itself sufficient to defeat its claim, has understated the effect of the respondent's trade operations, and its representations to its retail purchasers, to competitors, and to the general consumers. To begin with, the respondent's own statement of claim seems on the admitted facts conclusive against it. As far as concerns passing off, par. 4 states explicitly what the respondent asserts is the foundation of the way the public came to regard the sweet as manufactured by the respondent and no other. Par. 4 is as follows: "The said sweet has for a considerable time past been and still is manufactured and sold by the plaintiff under the name of Minties each sweet being sold in a paper wrapper a specimen of which is hereunder attached, namely:" Then follows one of the wrappers, which loses by description. It is meant to capture the mind through the eye, and its effectiveness can only be partially indicated by words. So far as I am able to describe it, it is this:—The wrapper is, roughly speaking, 2½ to 3 inches laterally and about two-thirds of that longitudinally. There is a green border of leaves with spaces, in which, occupying a breadth less than that of the leaves, there is a representation of the seal portion of the trade mark, the lettering being very small, in green and white on a green ground; the seal as a whole being quite unobtrusive, and almost obscured so far as visual attractiveness is concerned, by the rest of the green border. Without careful regard, one might easily fail to give attention to the seals. In any event, the seal is hopelessly severed in arrangement and effect from what appears in the centre of the wrapper. In the centre are words in large red capitals on a white ground, which substantially in relation to the rest appear thus: [The wrapper as illustrated in the statement of claim was set out.] Now, that is a very specific statement of the respondent as to the way its monopoly arose. From the way it is stated, I should imagine (1) that the respondents believed and wished the Court to believe that those wrappers had a most material, and even commanding, influence in producing the public belief relied on; and (2) that whatever else was done was in accordance with, and in confirmation of, that main fact; and (3) as a consequence, that the belief was produced not by the word "Minties" alone, but by the words "Minties (Reg)". For myself, I accept that view, and am thoroughly convinced it is correct. But it has very definite consequences, both as to there being a material misrepresentation and as to its not being collateral merely.

The wrappers in evidence varied at times by substituting other words, such as "a different mint," "fatigue curers" and "after the meals," &c., for the words "new digestive nougat mint." But otherwise they are identical. But no one in his senses can doubt that any person reading the wrapper would conclude that "Minties" was registered as a separate word. Harvey J., as already appears, so concluded. It is also inconceivable that the "public" influenced by the wrappers did not include retailers as well as consumers. Equally plain is it that competitors always on the alert would naturally have regard to the statement made.

From this fundamental position the respondent has never extricated itself. The rest of the case only strengthens the conclusion so far reached. The importance of traders and others knowing how far misrepresentation to the public may go without forfeiting the protection of a Court of equity, makes it most desirable to describe what was done. From its direct and outstanding significance, there is one piece of evidence that I ought to take out of its order. Mr. MacIndoe, the sales manager of Nestlés Co., who are the respondent's distributing agents, was cross-examined. The following are questions and answers:—Mr. Flannery: "Have you been a party to bringing pressure on any persons who were selling goods which were or might be in competition with those produced by Stedman Henderson based on the ground that the word Minties was registered?—Yes, I would be a party to it." His Honor:—"Have you ever done it?—Yes. Have you ever told anybody that Minties was a registered word and they could not copy it?—Yes: and I have instructed my travellers to say that. It is more an indirect way in which I have approached the market, but I have." Mr. Flannery: "You have personally, and, so far as you could, through your travellers?—Yes."

Dealing in order with the rest of the evidence, it appears that from very shortly after registration of its composite trade mark, the respondent distributed to retailers 5-lb. circular tins of its product. Those tins had a lid, on which was stamped in the centre these words, very plainly, "Minties (Reg)". Around those words were directions to replace the lid to keep the contents in good condition. But no other portion of the trade mark there appeared. Around the body of the tins were five labels, mechanically painted, each consisting of a red ground surrounded by a border of green leaves. On four of these the seal portion of the trade mark is seen, but below it, and much more distinctly separated from it, and in noticeably larger letters comparatively than in the registered trade mark, appears the word "Minties" (with quotation marks), having closely associated with it the word "(Reg)". I have no hesitation in saying that in every one of the four labels referred to, the word "Reg" would, by the vast majority of people at least, be read as the wrapper would, namely, as attached only to "Minties." Why the quotation marks? But to make assurance doubly sure, the fifth label interposes between the seal portion of the trade mark and the words "Minties (Reg)" these words, "Make no Mistake." So that to imagine the word "(Reg)" applied to the seal, would also be to imagine them as applicable to "Make no Mistake."

Again, the very wording of one of the labels precludes the notion of composite registration. It says: "Minties (Reg) the new digestive nougat mint." This collocation entirely excludes the seal words "Quality, Sweetacres, Products." Another label says "Minties (Reg.) the Universal Sweet." Indeed, all the labels have a similar collocation. Inside the tins were a price ticket and a packer's ticket, as to both of which the same observation must be made. In addition to this, from about July 1926 right up to the institution of the suit, the respondent enclosed in its tins, as information and warning to its retail dealers, a sheet of about thirty lines, printed for the most part in black, and containing no picture of, or reference to, the seal portion of the trade mark. But the word "Minties" very prominently appears in red letters about sixteen times, and the sheet contains this statement: "The word Minties is registered and owned solely by James Stedman Henderson Sweets Ltd., the manufacturers." The respondent issued advertising cards, approximately two feet long by sixteen inches broad. One was given to its retail dealers for advertisement purposes; the other placed in public trams. Each of them had a red ground surrounded by a framework of green leaves. In the centre of the top framework was embedded the seal portion of the trade mark, very much as it was embedded in the wrappers mentioned in par. 4 of the statement of claim. Below the seal portion appears the word "Minties," about three times as long as the seal, and all its letters longer than the seal is broad, three of the letters, namely, M, T and S, being about twice as long as the seal is broad. Closely following the word "Minties" and obviously associated with it alone, is the abbreviated word "Reg". The remaining words are "The Universal Sweet. 6d. per Bag." Manifestly, anyone reading the placard would read it thus:—"Minties (Reg) the Universal Sweet," &c., and would sever "reg" from the seal. The same must be said of the tram placard, which is almost a facsimile of the retailers' placard. But I must add that, as to these also, no verbal description can adequately convey the full extent to which the seal portion of the mark is relegated to obscurity, while "Minties," followed almost in contiguity by "Reg", is made the prominent and arresting feature.

Another device was by means of what has been called the Drawing Book. This was a most ingenious book, obviously designed to impregnate the public mind with "Minties," entirely dissociated as a word from the seal portion of the trade mark. On every page where it occurs, the seal is sedulously separated from "Minties" and from "Reg" where the latter is associated with "Minties." On one page the seal alone is represented as a "trade mark." The word "Minties" without "Reg" is effectively placed out of the range of that word.

In nearly every instance where Minties is stated to be registered, it is done in this way:— 3 oz. MINTIES At all for (Reg) Confectioners 6d. The Universal Sweet. & Stores. Then the bags handed to ordinary purchasers had upon them within a green-leaved surround:— This Bag contains MINTIES (Reg) The Universal Sweet. [The seal portion of the trade mark] Made by James Stedman-Henderson Sweets Ltd. Sweetacres, Sydney, N.S.W.

On 24th August 1926, just a day before the respondent made the first of the trap orders to complain of the unfair conduct of the appellants, it published in The Australian Confectioner, a monthly trade journal, a facsimile—except that it is all in black—of its pamphlet, stating that "the word Minties is registered, and owned solely by James Stedman Henderson Sweets Ltd." Further, though the seal portion of the trade mark is made to appear on the page, it is entirely unconnected with "Minties," and no indication is given that the registration of "Minties" is in combination with the seal. So far as appeared, the contrary were the facts. Obviously, the respondent did not let its right hand know what its left was doing. That publication—striking enough, when the date is considered—only confirmed expressly what the trade would conclude from prior advertisement in other terms, as in the same journal for June 1925, and periodically in Melbourne and Sydney daily newspapers.

The result is that a deliberate, sustained campaign was carried on, almost from September 1922 until the commencement of this suit (and afterwards), to lay the foundation of a monopoly in the word "Minties" by creating a false impression that the word "Minties" was registered as a trade mark, independently of all other words or marks, and thereby was, however guarded, forbidden ground to competitors or would-be competitors. In other words, to make the local world believe that the word itself was exclusive trade property. Though hardly necessary, there is some actual evidence from the respondent's own witnesses as to the actual effect of all this. Mr. Derrin, for example, member of a firm carrying on twenty-three confectionery shops, says he knew "Minties" was a registered name, and that the respondent had a monopoly of the word. Other trade witnesses had the impression that the respondent had a monopoly of the word. Further, the public were directly, and also indirectly, asked to believe that "Minties" meant exclusively the preparation of the respondent, the actual mark used being not "Minties" simpliciter but "Minties (Reg)". How that can be described as an honest trade is more than I can conceive. How a trade so bolstered up, and in great part created, can claim the primary protection of a Court of equity, is beyond my comprehension. If the respondent can be regarded as coming into Court with clean hands, I have much misunderstood the standard of commercial candour that equity demands as the price of its assistance.

A good deal of reliance was placed by the respondent on its repentance. It appears that in November 1926, a few days before the defence was delivered—the date of delivery was 6th November—the respondent, as the outcome of an interview with its legal advisers, took some steps to exclude the word "registered" from all printed matter before the ensuing Christmas. Nevertheless, since that date, an order was given on 20th December 1926 for tins called home drums, with the word "Reg" on them as before. And since November 1926 tens of thousands of price cards with the word on them have been issued. No Minties in wrappers without the word "registered" on them have been used, the Mintie bags as before have been issued by the hundred thousand, according to the evidence, the word "reg" obviously meaning "registered", and in some instances public signs with the word "reg" have been left as they were. One of the directors, Mr. Williamson, was asked: "I don't know whether you are prepared to admit that now in the retail shops the mint product of Stedman-Henderson is being sold universally in a wrapper containing the word Registered?" A.—"It is." Q.—"Just as it was being sold during 1926?" A.—"That is so." It is clear, therefore, that if sin there was, it remains. An effort was apparently made on counsel's advice to appear virtuous, but it was not sustained. It remains to apply the relevant law.

Some radical propositions of law were discussed during the argument, and, as on consideration I am unfortunate enough to be of the same opinion as that which I then expressed, it is only fitting that I should be explicit in my reasons. I refer particularly to (1) the nature of a passing-off action; (2) the burden resting on a plaintiff in a case like this; (3) the necessity of distinctly charging a defendant with fraud if he is to be held guilty of fraud; (4) the doctrine of Ford v. Foster[2]; (5) the primary rule of equity which was the starting-point of that doctrine. Most, if not all, of the relevant considerations of law, range themselves under these main heads.

I should preface what I have to say on the law by observing that, beginning with Millington v. Fox[3] in 1838, the Courts have constantly endeavoured to keep pace with the progress of trade by adapting fundamental doctrines to advancing methods and changing circumstances. Two principles appear to me to emerge more and more distinctly. One is that protection will not be given to any trader in respect of acquisitions unfairly made at the public expense; and the other is that, short of that, he will be protected from other individuals unfairly endeavouring to filch from him his trade property. Lindley L.J., in Powell v. Birmingham Vinegar Brewing Co.[4], observed that "the cases have developed by degrees and slowly in advance of one another." Ford v. Foster[5] was an instance; others may be easily recognized. But the central principles are unchanged. The first, which has been expressly stated in relation to trade marks, as by Bowen L.J. in Paine & Co. v. Daniells & Sons Breweries[6] and by Farwell L.J. in In re Joseph Crosfield & Sons Ltd.[7], is no less applicable to trade names and appellations whenever the Court is asked to declare that the plaintiff has by public use or otherwise acquired as against the general community a monopoly in some word which otherwise would be open to the public. I think, and shall endeavour to indicate, that this is involved in the doctrine which the respondent invokes. I shall consider the relevant questions of law in logical order.

(1) Passing-off Action.—Lord Parker's judgment in A. G. Spalding & Brothers v. A. W. Gamage Ltd.[8], concurred in by the rest of the House of Lords, and reviewing earlier authorities, appears to me to leave no room for doubt or discussion on the subject. I therefore simply state what is there enunciated. The suit or action called "passing-off" (see per Lord Parker[9]) is really a proceeding for false representation by the defendant that his goods are the plaintiff's goods, whereby the plaintiff's right of property in his business, or goodwill, has been invaded. If the plaintiff's right is rested on a common law trade mark, the right exists only if and so long as the mark is distinctive of his goods in the eyes of the public, or a class of the public. The representation must be shown to be false, but in equity not necessarily fraudulent, since it is the plaintiff's property that is to be protected. At common law the remedy is sometimes called an action for deceit. But even at common law that statement is not accurate, the only resemblance to an action for deceit being that the representation, besides being false, must be fraudulent. (See also Bullen and Leake's Pleading, 3rd ed., at pp. 409, 410.) It is one of the essential considerations in this remarkable case, as I regard it, that an action at law for passing off must fail, unless the defendant is found guilty of fraud.

(2) Burden on Plaintiff.—Every plaintiff in a passing-off action has the burden of establishing his business right. The weight of the burden varies with the character of the word or symbol relied on. A plaintiff asserting the exclusive right of using a descriptive word undertakes a very heavy burden (see Cellular Clothing Co. v. Maxton & Murray[10], per Lord Davey). In Burberrys v. J. C. Cording & Co.[11] Lord Parker (then Parker J.) made some observations very apposite to the present case. He said:—"Though I do not agree with the argument that a word cannot be at the same time both descriptive and distinctive, I think the fact that it retains its prima facie descriptive signification increases the difficulty of proving that it is distinctive of the goods of any particular manufacturer. If a word is prima facie the name of or description of an article, evidence that it is also generally associated with the name of a particular manufacturer is, in my opinion, by no means conclusive that it has become a distinctive word which cannot be used of the same article when made by others without risk of deception. If the article in question is made exclusively or mainly by a particular manufacturer, it is almost bound to be associated with the name of that manufacturer by the trade and the public, for each trade and each member of the public will naturally associate the article with the name of the manufacturer who supplies it to him and who may possibly be, in his opinion, the only person who supplies it at all. When a witness says that he knows the word Slip-on as meaning, not only a particular kind of coat, but the coat of a particular manufacturer, it is material to know whether he is acquainted with the article as made by anyone else. If he is not, the word, however it may be associated in his mind with the particular manufacturer, is not really to him a distinctive word." Again, Lord Parker says, after referring to the Trade Marks Acts[12]:—"Apart from those Acts, it is dangerous for a trader to allow the word he chooses to become the popular name of the article to which it is applied, and it is dangerous to choose a descriptive word. If the word is descriptive or becomes the name of the article, it will be difficult, if not impossible, to prove that it is distinctive of his own goods or that there will be any deception in its use by others, and apart from the Trade Marks Acts, the right of anyone to the exclusive use of a word is always limited by the possibilities of its use by others without any risk of deception." As already abundantly appears, the word "Minties" was originally, and has always remained, descriptive of the nature and the name of the article. So that in Lord Parker's opinion there still remains the burden of showing the necessary distinctiveness. Neville J., in Henry Thorne & Co. v. Eugen Sandow & Sandow Ltd.[13], confirms this. What he says is very much to the point with reference to the suggestion that "Minties" of itself is not descriptive of any specific quality. The answer of the learned Judge to a similar objection was clear. He said, in effect, it all depends on the article to which the word is applied. The word "Health," he said, would not really be descriptive if applied to a fishing-rod, but to an article of diet the matter would be different. As to this, his words were: "I must say, not to put it too high, that it seems to me that a person who sought to prove that throughout the United Kingdom—as I think he would have to prove—the word Health, in connection with an article of diet, was only descriptive of his particular manufacture, would have an exceedingly difficult task before him." Horlick's Malted Milk Co. v. Summerskill[14] in the House of Lords, cited by Mr. Flannery, is based on the same principle—the plaintiff's task ranging from comparative simplicity where the word is meaningless, to practical impossibility. This case is far from the simplicity end of the burden. The respondent, in my opinion, has for several reasons failed to discharge its burden. Much of the evidence is as to what the witness says other people would think, or believe, or expect. This is not evidence on which any Court can rely or act. The authorities, of which Bourne v. Swan & Edgar Ltd.[15] is a type, are numerous to show this. There is remarkably little evidence on which a Court could properly act. I think it much smaller than it would be if the plaintiff's view is right that the word "Minties" has come to bear only a secondary meaning, in spite of the trade advertisements I have mentioned.

Then, before the plaintiff can claim the Court's primary protection, we have to bear in mind always what Lord Kingsdown, with Lord Westbury's concurrence, says in Leather Cloth Co. v. American Leather Cloth Co.[16], namely, that a plaintiff will be refused relief in equity, that is, primarily, if there appears "the misstatement of any material fact calculated to deceive the public." Actual deception is not necessary: it is sufficient if the misstatement is calculated to deceive. That is the doctrine of "clean hands" (see per Farwell J. in Cropper Minerva Machines Co. v. Cropper, Charlton & Co.[17]). Otherwise the Court would not be protecting the public, but, on the contrary, assisting to injure it. The Court requires candour. Shadwell V.C., in Pidding v. How[18], says: "It is a clear rule, laid down by Courts of equity, not to extend their protection to persons whose case is not founded on truth." And on this ground the Court refused its primary protection, but gave leave to sue at common law, when, if he succeeded, he could get an injunction on a totally different ground, namely, to prevent multiplicity of actions. This will be more particularly referred to.

3. Pleading Fraud.—It has long been, so I have understood, a settled rule that where the fraud of a defendant is relied on, it must be distinctly charged and particularized. Again, I need not advert to the older authorities, for there is on this subject also recent authority of the highest and most convincing nature. In Claudius Ash, Sons & Co. v. Invicta Manufacturing Co.[19] the plaintiff sued for infringement of trade mark and passing off. That it was beyond doubt a true "passing-off" action is evident in all three Courts (per Warrington J.[20]; per Cozens Hardy M.R.[21] and Kennedy L.J.[22]; and per Lord Loreburn L.C.[23], concurred in by the whole House). Fraud was alleged as to the infringement, but not as to the passing off. Lord Warrington (then Warrington J.) found against the defendant on both causes of action. He found that the defendant was fraudulent both as to the trade mark and as to the passing off. On the appeal[24] Cozens Hardy M.R., Lord Wrenbury (then Buckley L.J.) and Kennedy L.J. reversed the judgment. They found dissimilarity. As to the passing off, they held the evidence insufficient to establish fraud. But what is more to the point here, they held very emphatically that it was not competent to the learned primary Judge to find fraud that was not alleged. The Master of the Rolls said[25]: "I do think that in common fairness it ought to be stated frankly and clearly on the pleadings." Buckley L.J. said the same thing. Kennedy L.J. was most explicit and, notwithstanding what afterwards took place, his language on the subject appears to me deserving of greater prominence than it seems to have had. The Lord Justice said[26]:—"There are two main issues in this case—one of an alleged obvious and fraudulent imitation of a registered trade mark, and the other of passing off goods in the sense of selling goods so made up as, in the words of the statement of claim, to be calculated to deceive purchasers or the public into the belief, contrary to the fact, that the goods were of the plaintiff's manufacture. I desire, for my part, to endorse what has been said of the great importance, in the interests of justice to individuals, in clearly alleging fraud, if you mean to make that your case. It is the most serious allegation that can be made in a civil action, and it ought not to be left to argument or implication. There is no doubt that fraud is charged with regard to imitation of the registered trade mark, but I do not find that charge with regard to the make-up of the goods." The case went to the House of Lords[27]. Lord Loreburn L.C., as to a fraudulent intention on the part of the defendants on the charge of passing off, said[28]:—"To any such charge, there must be, however, two conditions. The first is that it ought to be pleaded explicitly so as to give the defendant an opportunity of rebutting the accusation of intent. The second is that it must be proved by evidence." Lord Ashbourne and Lord Macnaghten agreed entirely. Lord Atkinson also concurred.

(4) Ford v. Foster.—The case of Ford v. Foster[29] was relied on as establishing that where the plaintiff's misrepresentation was collateral only, he had still the same right to protection in equity as if he had not been guilty of any misrepresentation at all. I am utterly unable so to regard that case. Ford v. Foster is a landmark in this department of the law, and it appears to me extremely plain. It was decided in 1872, and, as the relevant law of procedure in England at that date was substantially the same as it is to-day in New South Wales, it is particularly apposite here. I do not, however, mean to say its main doctrine is not applicable everywhere in Australia. Now, the Vice-Chancellor held the plaintiff guilty of a misrepresentation in the course of his trade, and was therefore, inter alia, disentitled to curial protection. The Court of Appeal reversed the judgment, and held that, although the plaintiff had been guilty of misrepresentation, it was "not ... in the trade mark itself nor in the manufacture, but by several collateral representations" (per James L.J.[30]). The two very learned Lord Justices held the plaintiff not thereby disentitled to an injunction. But why? That is the point where, with deference, the respondent's argument is unsound. Putting it shortly, the reason was this:—There having been a material misrepresentation, the plaintiff is at once disentitled to ask for the primary protection in equity of his right of property, and, unless some other ground of equitable interposition appears, he must go without remedy. That appears, so far in the judgment of James L.J.[31]. But as that learned Judge says, and as Mellish L.J.[32] also says, it became necessary under Sir John Rolt's Act, that the Court, instead of doing what was done in Pidding v. How[33], namely, leaving the plaintiff to establish his right against the defendant at law, should itself undertake the task of determining whether the plaintiff would succeed at common law. If he would, then in order to prevent multiplicity of actions equity would grant an injunction in aid and protection of the legal rights. That, of course, is a totally different head of equity from the primary protection of the plaintiff's business property. The point is quite clearly elucidated in Jamieson & Co. v. Jamieson[34] by Vaughan Williams J., who takes great pains to emphasize the fact that the proceeding before the Court under the Judicature Act included a claim for damage for a common law wrong, what was called an action for deceit. In order to determine whether an action would successfully lie, Mellish L.J. said[35] on the authority of Sykes v. Sykes[36] that "if a trade mark is put upon that article for the purpose of deceiving the persons who purchase from the retail dealer, an action at law will lie." That is a charge of fraud. Then, that being prima facie established, the Lord Justice had to consider how far the plaintiff's misrepresentation would afford a defence. It was held that being collateral only, it would not afford a defence to an action at law. That was because, the trade of the plaintiff being an honest trade apart from the misrepresentation, which was unconnected with the trade mark, and which was held to be collateral, the misrepresentation would be no answer at common law to an action. The same procedure would be followed in New South Wales under sec. 8 of the Equity Act 1901. But in view of what has been said with respect to Claudius Ash, Sons & Co. v. Invicta Manufacturing Co.[37] and A. G. Spalding & Brothers v. A. W. Gamage Ltd.[38], the Court in such an inquiry would not be at liberty to find fraud against the defendant in the absence of a distinct allegation of fraud, the mere charge of passing off not being equivalent to a charge of fraudulent intention.

(5) Equity Rule as to Protection.—I have already stated broadly the principle on which equity refuses to protect a plaintiff on the ground of untruth. It is the doctrine of Pidding v. How[39], affirmed and followed in Ford v. Foster[40]. It is, however, necessary to indicate why it is clearly applicable here. In doing this, the case of Morgan v. M'Adam[41] is an invaluable guide. Wood V.C. indicates in the clearest way that the misrepresentation which disqualifies the plaintiff is not necessarily his moral fraud, but what equity calls, or did call, "legal fraud." He says that where a person used a term by which the public are likely to be deceived, that is enough. The learned Vice-Chancellor says[42]: "It is his business, before he holds that out to the public which may mislead the public, to ascertain that he has a good and solid foundation for doing so." Then Wood V.C.[43] says that where the plaintiff is so misleading—that is, not necessarily fraudulently in the moral sense—"in such a state of things the Court, whatever may be the conduct of the defendant, does not ask whether or not it shall interfere to restrain that defendant, but it must see, in the first instance, before it reaches the defendant's case, whether or not the plaintiff has made such a case as to entitle him to the Court's assistance." The plaintiff's fraud referred to in that case is that so fully expounded in Nocton v. Lord Ashburton[44]. The plaintiff in such a case, claiming his right by virtue of public recognition, has a special duty of honesty and of care to the public. If he misleads the public, equity refuses to protect him—that is, primarily—and only assists him if he establishes a legal right of action which, to prevent multiplicity of actions, calls for an injunction. The case of In re Lyle and Kinahan Ltd.'s Application[45] is no qualification of this doctrine. There a statutory right of registration was sought to be enforced. The Court of Appeal allowed registration, notwithstanding some statements in price lists that the mark was registered. In the first place, that statement was not in the label itself, but more than all, it was shown that the applicants had not in fact authorized the statement. It has been made by an employee ignorantly but bona fide, the directors being ignorant of it and withdrawing it as soon as they heard of it. Their conscience was not in fault. Parker J., in Mrs. Pomeroy Ltd. v. Scalé[46], went on substantially the same grounds. Here the position is essentially different. In addition, there is a radical distinction between allowing registration of a trade mark for future trade and giving a remedy for injury to past trade while the misrepresentation was proceeding. The Supreme Court of the United States, in Worden v. California Fig Syrup Co.[47], has recognized and enforced the principle above stated. How can it be said that the plaintiff has not made a material misrepresentation? To begin with, it is trite law that a registered trade mark means the whole trade mark, the whole device. However prominent a single word in a composite mark may be, the composite registration gives no statutory right whatever to the word alone, and it would be a distinct untruth to tell the world that the single word alone was registered. Even a distinctive mark, if part of a registered label, may not be represented as the only thing registered. Fry L.J., for the whole Court of Appeal in In re Apollinaris Co.'s Trade Marks[48], said: "An owner of a registered trade mark may put it on a registered label, but not so as to mislead a reader of that label, and induce him to believe the only thing registered is the distinctive mark." It was gravely argued that the very distinct and persistent efforts, quite successful as it appears, to make the public believe that "Minties" alone was registered are consistent with upright commercial conduct, and, at all events, not open to the reprobation of a Court of equity. That is not the view of Courts of great authority. There is no obligation on the owner of a trade mark to announce to the public that it is registered. But if he does, he must not mislead. It was said several times that it is simple truth to say "Minties" was and is registered, and that it is not the less true because it is registered in combination with other ingredients of the whole trade mark. If that is a good answer, it would apply to the word "Quality" and the word "Products." But as the words "Minties (Reg)" appear particularly with the quotation marks before and after the word Minties, which are not in the registered mark, they seem to me to fall unmistakably within the words of Lord Herschell in Reddaway v. Banham[49]: "A man who uses language which will convey to persons reading or hearing it a particular idea which is false, and who knows and intends this to be the case, is surely not to be absolved from a charge of falsehood because in another sense which will not be conveyed and is not intended to be conveyed it is true." And so per Lord Macnaghten[50]: "I venture to think that a statement which is literally true, but which is intended to convey a false impression, has something of a faulty ring about it; it is not sterling coin; it has no right to the genuine stamp and impress of truth." Bowen L.J., in Newman v. Pinto said[51]: "A lie may be told by a box just as well as by the mouth of an individual." The pamphlets and verbal evidence quoted, however, as well as many other circumstances, leave no doubt of the indirect design to produce the false impression. In such a case Fry L.J., in Newman v. Pinto[52], laid down in very wholesome terms what is the consequence of a false representation disseminated in trade and intended to mislead. He said:—"When we find a deliberate design to deceive, and we are asked to believe that the design has failed, and that nobody has been deceived by it, I say, speaking for myself, that the burden of proving that rests with the greatest weight on the shoulders of him who asserts that the intended deceit has failed. Those who conceive a design for the purpose of deceiving, and who ask the Courts to hold that the design is innocent, must prove it." That, applied to trade misrepresentation, such as we have before us, seems to me a rule of justice, and even of necessity. Now, that has been recognized very distinctly by Stirling J. in Sen Sen Co. v. Britten[53]. In that case[54], in arguendo, M. Melachrino & Co. v. Melachrino Egyptian Cigarette Co.[55] was referred to very much as Harvey J. has referred to it. Ford v. Foster[56] was also referred to. But Stirling J. observed[57]:—"There the plaintiff had not a false statement in the thing which he was seeking to protect. Here, on the very thing you are seeking to protect, you have this statement. That is my difficulty." All that appeared was "Sen Sen, Trade Mark." What the plaintiff was seeking to protect was the expression "Sen Sen." That was used coupled with the words "Trade Mark," which meant altogether, "Sen Sen is our Trade Mark." Stirling J., however, held that that did not imply registration, but that if it had implied registration, then, the implication being false, the plaintiffs would have been thereby disentitled to an injunction. His words are quite distinct. He says: "Of course, if the plaintiffs are brought within the terms of that Act" (the Trade Marks Act) "they must be denied relief." And he adds: "And I go further and say that, without committing an offence under this section, the plaintiffs might undoubtedly to my mind be guilty of such misrepresentation as not to entitle them to relief in a Court of equity." His Lordship's mind was plainly directed to two aspects of the matter. First, the false representation looked at as an offence—an illegality that is punishable by the Legislature as an attempted imposition upon rival traders and the public generally—was sufficient in itself to disentitle the plaintiff to primary relief. A Court cannot measure the offence otherwise than as the Legislature has done. If deliberate and clear, whether it is done for a year or ten years, the quality of the dishonesty is the same. However, we need not in this case stop to discuss that closely; when we know the offence in this case was continued for about five years, and persisted in with all the appreciation of its falsity, that is apparent. But Stirling J. also looked at the matter from the general standpoint of equity—what I may call the Pidding v. How[58] standpoint. He is thus in line with Chitty J. in the Melanchrino Case[59], in a passage which, as I think, unfortunately escaped observation in the Supreme Court. Chitty J. says: "The plaintiffs do not put forward their trade mark as being the trade mark registered." Clearly that learned Judge thought the distinction vital. And further, as I have mentioned, the learned Judge held that the misrepresentation was not collateral, it was with reference to the very thing claimed as trade mark. Cochrane v. Macnish & Son[60] by a reasoned exception illustrates the rule. The Privy Council held that as by patent no one was misled or could be misled, and as there was no design to mislead, the misrepresentation was not one disentitling to relief (see Kerly, 5th ed., p. 506).

Some reliance was placed by learned counsel for the respondent on the view that the misrepresentation did not affect the general public—the consumers—but merely the trade. The answer to this, I think, is pretty obvious. To mislead the trade, frighten would-be manufacturers and would-be retailers of an article with an admissible trade mark, injures the whole public. It falsely creates a monopoly with no criterion of the effect of price or quality. Indirectly, it misleads the public too, by excluding any possibility of associating the word with any other manufacturer. If it is said that the consuming public are indifferent to the registration of the mark, that is true, because they do not want to manufacture or to sell. But, to my mind, that is immaterial. The improper purpose is effected notwithstanding.

This is now an action for passing off only—for passing off sweets manufactured by the defendants as sweets manufactured by the plaintiff company, and thus getting the benefit of the great demand for the plaintiff's sweets called "Minties." There was originally a claim also for directly infringing the plaintiff's registered trade mark (pars. 3, 8); but for some reason which I do not quite appreciate this claim was abandoned by the plaintiff.

In my opinion the learned Judge of first instance (Harvey C.J. in Eq.) was absolutely right in his findings that the defendants have been passing off as charged. The plaintiff began to sell sweets flavoured with mint under the name of "Minties" about September 1922; and its sales in New South Wales alone increased from 161,920 lbs. in 1923 to 1,218,083 lbs. in 1926. The sweets were not new as to contents; but the word "Minties," which had never been used before, struck the fancy of the public. Before August 1926, when the defendant began to use the word "Mentes" for the same kind of sweets, the word "Minties" had come to mean the sweets (rolled up in tissue paper) manufactured by the plaintiff, and distributed on the plaintiff's behalf by Nestlé's Anglo-Swiss Company. Whenever "Minties" were asked for, the plaintiff's sweets were wanted. In August 1926, the defendants, who had in what they called their "Puritan" shops in Sydney been selling the same class of sweet as "Mint Chews" began to sell them as "Mentes"—"Puritan Mentes." When in these shops customers asked for "Minties," it is clear that they were often supplied with "Mentes." The defendant excuses himself on the ground that in Greece (where he comes from) the word "menta" means peppermint, and that the plural is "mentais": but we are dealing with the rights of parties in an English-speaking market; and the defendants do not even use the word "mentais." Harvey C.J. in Eq. says: "I have no shadow of doubt that he" (the defendant) "selected the word Mentes because of its similarity to the word Minties"; and there is really no ground for disputing this conclusion. This action was commenced on 3rd September 1926.

In par. 13 of the defence, however, it is objected that the word "Minties" is a descriptive word and that the plaintiff is therefore not entitled to the protection of the Court in the use of the word. But this objection is not a sufficient answer, itself, in a passing-off case. It might prevent the registration of the word as a trade mark under sec. 16 (1) (d) of the Trade Marks Act 1905-1922. It would naturally aid the plaintiff even in a passing-off case, if the plaintiff could establish that the word is non-descriptive of the goods; but where, as in this case, it is proved aliunde that the word, even if descriptive, has become definitely associated with the plaintiff's goods, and that the defendant is using the word with the intention of getting some of the plaintiff's trade, the plaintiff has a clear cause of action whether the word is descriptive or not (Reddaway v. Banham[61]).

For the present I pass by the consideration that the word "Minties," as a noun, is an invented word, and therefore, perhaps, registrable under sec. 16 (1) (c); even if it suggests that the sweets are flavoured with mint. No one used the word "Minties" before it was applied to the plaintiff's sweets. The point is that even if the word is merely descriptive in its primary meaning, as contended, yet if it has acquired, as here found, the secondary meaning of having been made by the plaintiff, and if by the use of the word the defendants are passing off their goods as the goods of the plaintiff, the injunction was rightly granted. The case of Reddaway v. Banham[62], before the House of Lords, is conclusive on this point, as well as on other points of this present case. There the words taken were, in their primary meaning, clearly descriptive—"camel hair belting." The defendant there relied on a previous case of Burgess v. Burgess[63], where a son of one Burgess sold, like his father, "Burgess's essence of anchovies"; but in that case this descriptive name had not, as a matter of fact, acquired the signification of being made only by Burgess the father. That made the whole difference. As Lord Herschell said[64], "the name of a person, or words forming part of the common stock of language, may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves without explanation or qualification by another manufacturer would deceive a purchaser into the belief that he was getting the goods of A when he was really getting the goods of B. ... In my opinion, the doctrine on which the judgment of the Court of Appeal was based, that, where a manufacturer has used as his trade mark a descriptive word he is never entitled to relief against a person who so uses it as to induce in purchasers the belief that they are getting the goods of the manufacturer who has theretofore employed it as his trade mark, is not supported by authority, and cannot be defended on principle." The truth is that in every case we are forced back to the "fundamental rule" in passing-off cases, as it was stated by Lord Kingsdown in Leather Cloth Co. v. American Leather Cloth Co.[65]; and, as Lord Herschell says, that fundamental rule applies "whatever be the particular mode adopted by any man for putting off his goods as those of a rival trader, whether it is done by the use of a mark which has become his trade mark, or in any other way." As Lord Halsbury L.C. states it—the principle of a passing-off action is simple, "nobody has any right to represent his goods as the goods of somebody else"[66]; and there may be such representation even if such ordinary, descriptive English words are used as "camel hair belting." Reddaway v. Banham[67] is really a stronger case than the present; for in the present case the plaintiff's name is a word not used before, "Minties." I may add that I do not regard the word as an adjective to which a plural form is affixed, but rather as a diminutive of endearment—like "girlie," "doggie," "Willie," &c.; but this point is not material.

The same case shows incidentally, from the judgment of Lord Macnaghten[68], that the averment in par. 7 of the statement of claim—the defendants are "passing off goods not of the plaintiff's manufacture as and for the said sweet so manufactured by the plaintiff"—is a charge of dishonesty in itself, even though the word "fraud" is not used (see also Cropper Minerva Machines Co. v. Cropper, Charlton & Co.[69]). The words "passing off" may be fairly paraphrased as pretending untruly for the purposes of trade; and this is fraud. There is no need to use the word "fraud" if other words are used to the same effect. The case of Claudius Ash, Sons & Co. v. Invicta Manufacturing Co.[70] has been misunderstood. There the words "passing off" were not used at all in the statement of claim. The statement of claim is set out in full in the report, and the allegation was that "the use of the word Stent's in respect" of the commodity, "as also the get-up of the same, is calculated to deceive purchasers ... into the belief, contrary to the fact, that the same is of the plaintiff's manufacture." In other words, the claim was for innocent misrepresentation—a distinct ground for relief in equity (see per Lord Parker in A. G. Spalding & Brothers v. A. W. Gamage Ltd.[71]); and the Lords of Appeal refused to treat the case as if "intent to deceive"—passing-off—fraud—had been alleged (see Lord Loreburn's judgment).

But there is another objection, stated in pars. 10 and 11 of the defence, which has to be considered. It is that even if the defendants are carrying on their trade in fraud of the plaintiff, the Court ought not to give the plaintiff relief, because (as it is alleged) "the plaintiff in the course of selling the said sweet has represented ... that the word Minties is a registered mark of which the plaintiff is the registered proprietor," and that the representation is untrue to the knowledge of the plaintiff. When a shopkeeper sues in trover for some plated ware, can the defendant successfully defend the action on the ground that the shopkeeper represents to his customer that the articles are plate instead of plated ware? But it is true that as from 23rd September 1922 the plaintiff was registered as the proprietor of a trade mark containing an oval figure and words thus—[The trade mark was here set out]; and it is true that the plaintiff has, on its boxes and tins and circulars and advertisements, wrappers, &c., made very prominent the words "Minties (Reg)", putting inverted commas on each side of the word Minties. In my opinion the word "reg" would indicate to ordinary minds that the word "Minties" was registered under the Trade Marks Act, but not necessarily that "Minties" was a trade mark in itself, or that it was a "registered mark," as alleged in the defence. The abbreviated word "reg" would mean, under the circumstances, that the word "Minties" was registered—not that it was the trade mark; and it was literally true that the word "Minties" was registered—but with something else. It is not an unreasonable conclusion on the part of a man who has one whole trade mark registered that each part of it is registered; and it might be sufficient for the plaintiff that the misrepresentation alleged is not proved—the word "Minties" is not a registered mark. It must be remembered that a trade mark is infringed if the defendant use a material and substantial part of a trade mark which belongs to another person; for infringement he need not be shown to use the whole mark (Orr Ewing & Co. v. Johnston & Co.[72]); and in calling such emphatic attention to "Minties" as registered, the plaintiff probably was not only riveting the connection of the word with his place of manufacture ("Sweet Acres"), but was seeking also to show that "Minties" was a material and essential part of his trade mark. Indeed most of the confusion that has arisen in this case seems to me to be due to failure to recognize that a trader is entitled to do what he can, honestly, to identify an attractive name or symbol with his business, and to that end to point emphatically to what he regards as the most material name or symbol in his label or other device. There is in fact an application of the plaintiff pending for the separate registration of the word "Minties" by itself.

But I feel bound to say that cases in England as to misrepresentation made by a plaintiff in such an action do not seem to me to put the position on a satisfactory footing. I do not understand why the clear principle laid down in Ford v. Foster[73] has not been consistently followed—that the plaintiff, defrauded by the defendant, will not be refused an injunction to which he is otherwise entitled unless he is himself guilty of fraudulent representation in his trade mark or in his business. In other words, the Courts will not let themselves be used by the plaintiff to aid him in his fraud; but they will enforce the plaintiff's rights against the defendant even if other people have rights against the plaintiff. This is the principle on which Wood V.C. acted even before Ford v. Foster[74], in Morgan v. M'Adam[75]. There, the plaintiffs manufactured crucibles, and called them "Patent Plumbago Crucibles." The defendant called his business "the Patent Plumbago Crucible Company," and sold his crucibles as "Patent Plumbago Crucibles"; and the plaintiffs sought an injunction. The plaintiffs had, in fact, no patent; and the Vice-Chancellor refused him relief: "I am asked in substance—and that is the reason why a Court of equity cannot interfere—to protect the plaintiffs in the use of a name, the use of which name is calculated to mislead and defraud the public with whom they are dealing; and if I protected them in the use of that name, I should be assisting them (and that is the principle upon which the Court has proceeded, I apprehend, in all these cases) in misleading and defrauding the public"[76].

The position was similar in the leading case of Leather Cloth Co. v. American Leather Cloth Co.[77]. But the Courts have not steadily followed this principle; for, under such a defence, they have sometimes meticulously examined alleged fraudulent representations, though collateral, in circulars, advertisements, &c. In Cropper Minerva Machines Co. v. Cropper, Charlton & Co.[78] the plaintiff had untruly represented himself as "the old and original firm," and Farwell J. stated that the representation was sufficient to disentitle the plaintiff to relief; but as he held that there was no "passing off" by the defendant the statement was merely obiter. In Mrs. Pomeroy Ltd. v. Scalé[79] the plaintiffs had made representations as to the defendant in advertisements, wrappers, &c., which were not justified; but a few days after the action started, the plaintiffs discontinued the representations: and the Court (then Parker J., afterwards Lord Parker of Waddington) said that their hands were not "so dirty" that they cannot maintain an action. In In re Lyle and Kinahan Ltd.'s Application[80], on the other hand, the applicant in his price list had referred to his mark untruly as "registered label and trade mark To counterfeit this label is forgery"; and yet the application was granted—Fletcher Moulton L.J. pointing out that if the representation had been made in the label (to be registered) itself, the applicant would not be entitled to registration. So in Newman v. Pinto[81] the plaintiff was selling his cigars as Havanas although they were made in Germany. The Court treated the trade as fraudulent; and said that "a false representation contained in the trade mark itself" furnishes "a defence alike at law and in equity." These cases show that the principle of Ford v. Foster[82] is still a living principle. Certain Judges seem to think that a false representation by the plaintiff is no answer at all to an action for passing off (Vaughan Williams L.J. in Jamieson & Co. v. Jamieson[83]; Lord Alverstone L.C.J. in Wolff & Son v. Nopitsch[84]). But however this may be, we cannot, in this Court, disregard the opinion of the Judicial Committee of the Privy Council in Cochrane v. Macnish & Son[85], an appeal from Jamaica. Cochrane sought to have a label registered with "Club Soda," the name applied to his manufacture of soda-water; but in the label appeared the words "Manufactured in Ireland by H. M. Royal Letters Patent." There was no patent, of course, for the manufacture of soda-water; but the Judicial Committee accepted the applicant's explanation that he meant manufactured by patented machinery; and the Judicial Committee added that it was "not prepared to hold that by reason of some words not designed to mislead, and at most equivocal, the appellant has been guilty of a misrepresentation which disentitles him to relief." That the Court will not refuse relief where the representation is merely equivocal, and may not have been designed to mislead, see Sen Sen Co. v. Britten[86]. And in In re Registered Trade Marks of Bass, Ratcliffe & Gretton Ltd. [No. 2][87] the Court of Appeal dealt with a case very similar to the present in principle. It is very significant, for it was an application to have a trade mark removed from the register, on the ground of misrepresentation in the mark itself. In the mark itself, a label, there appeared a diamond with the words "Trade Mark" across it, and this, it was urged, suggested that the diamond alone constituted the trade mark, and that the rest of the label might be used by outsiders. The Court refused to remove the label from the register, Romer L.J. said that even if "trade mark" does apply solely to the diamond on which it appeared (he thought it did not) it was not reasonably calculated to do harm to anyone; and that if the deception were innocent, it was no ground for removing the label from the register. This case showing the necessity for materiality in the false representation, and of consequent injury to purchasers, has been rather ignored in the argument.

In my opinion there are several distinct grounds for rejecting this defence contained in pars. 10 and 11 of the defence as pleaded; and the Court will not examine any defence that has not been pleaded (Benedictus v. Sullivan, Powell & Co.[88]):—(1) The plaintiff did not represent that the word "Minties" is a registered mark of which the plaintiff is the registered proprietor. The plaintiff merely represented, at most, that the word "Minties" was registered, as it was in literal fact. (2) Even if the representation was equivocal, and might lead persons to believe that the word "Minties" was the sole thing registered, it was an innocent deception; and it did no harm to the general public asking for the sweet. It is obvious that a retail customer wanting such a sweet would not care whether the name was registered or not. If the word were "patented," it might be very different, as it would mean official recognition of some novelty and utility in the thing patented; and it might lead to the belief that the plaintiff was the only person entitled to sell it. (3) The alleged misrepresentation is not contained in the trade mark itself, or in the business of the plaintiff (Ford v. Foster[89]). (4) It is not a misrepresentation sufficiently serious or material (even if inaccurate) to justify a refusal of relief to the plaintiff where the defendant is—I must use the unpleasant word to convey my meaning—stealing his business.

The appellants have not complained of the form of the injunction, either in their notice of appeal or in their argument; and probably my colleagues are right in not interfering with it. The form in such a case was carefully considered by the House of Lords in Johnston v. Orr Ewing[90], and followed in Reddaway v. Banham[91]. But the fact that the word "minties" is a new word, not common words such as "camel hair belting," should be taken into consideration. Personally, I should prefer an order "that the defendants and each of them and their agents and servants be restrained from using the word Minties or the word Mentes or any other word colourably differing from Minties as describing their goods. And from passing off in any other way their goods as the goods of the plaintiff."

The respondent in this action made, in the first instance, two claims: (1) for infringement of its registered trade mark; (2) for passing off.

As to the first claim, for infringement of trade mark.—It was proved that the appellants' mints were sold as "Puritan Mentes" and that they were sold in wrappers quite different in colour and design from the wrappers in which the respondent's "Sweet Acres Minties" were sold. No attempt has been made to copy the trade mark. It is not, therefore, surprising to me that the claim for an infringement of the trade mark was abandoned by the respondent in the Supreme Court.

As to the second claim, for passing off.—Harvey C.J. in Eq. found that the appellants had passed off their own sweets as the respondent's—that is, their employees had handed to some persons, who asked for "Minties," "Puritan Mentes" made by the appellants. He also found that the respondent had been the first, and for some time past the only, trader who had used the word "Minties" for sweets made by his firm, and that the appellants had used the word "Mentes" because of its similarity to the word "Minties" used by the respondent. The question this Court has, therefore, to decide is whether in the special circumstances of this case the respondent has acted in such a way as to justify the Court in refusing to give it the injunction asked for—the appellants having been found guilty of the passing off referred to.

I have had the privilege of reading the judgments in this case just published by my brothers Isaacs and Higgins. It is unnecessary for me to refer in detail to the evidence before the Court, because it has been so fully and clearly set out in the judgments referred to. It is also unnecessary to repeat the references to the very many cases quoted in those judgments in support of the views expressed by my brother Justices.

After full consideration of the facts, and of the cases referred to in the judgments and those submitted by counsel on the hearing of the appeal, I hold (1) that "Minties" is a descriptive word; (2) that the word "Minties" has been associated since 1922 solely with the productions of the respondent, but that association was obtained in the circumstances set out very fully in the judgment of my brother Isaacs; (3) that the respondent wilfully and consistently, since 1922, misrepresented to traders and the rest of the public that the word "Minties" was a registered word of which it was the proprietor, instead of being one word only in a registered trade mark; (4) that the misrepresentation was material and could, and did, lead persons to believe that the word "Minties" was the only thing registered; (5) that it was a misrepresentation likely to injure the public; (6) that it was a misrepresentation in connection with the business of the respondent and with the particular word of which the respondent claimed a monopoly.

For some time I was not quite satisfied that the misrepresentations by the respondent were serious enough to justify a refusal of relief to the respondent; but after consideration of all the cases quoted bearing on the point I think it is clear that, although all cases of the sort should be decided on general principles, the facts proved in each case ought to govern the decision in the particular case before the Court. I have come to the conclusion that the misrepresentations in this case were sufficiently serious and important to justify the Court in refusing the respondent the relief asked for.

For the reasons above mentioned, and for the reasons set out in the judgment of my brother Isaacs (with which judgment I agree), I am of opinion that the appeal should be allowed.

The plaintiff brought an action in the Supreme Court of New South Wales in its equitable jurisdiction against the defendants for passing off goods not of the plaintiff's manufacture as and for goods of the plaintiff's manufacture. The statement of claim alleged also that the defendants had infringed a registered trade mark of the plaintiff's, but this allegation was abandoned before the learned trial Judge and in this Court; so we need not further consider it.

"Nobody has any right to represent his goods as the goods of somebody else" (Reddaway v. Banham[92]; A. G. Spalding & Brothers v. A. W. Gamage Ltd.[93]). The plaintiff has, for some four or five years, made a nougat sweet slightly flavoured with mint. It pushed its trade in this sweet in various ways and thus built up a considerable business. In 1922 it registered a trade mark consisting of an oval device with the word "Minties" beneath it, in respect of substances used as food or as ingredients in food. It used this mark on its labels, tins, and in its advertisements, but the word "Minties" was always the most prominent feature on the tins and in the advertisements, and under this name the plaintiff's sweet was sold. The word "Minties" cannot be found in any English dictionary, but the defendants insist that it is derived or formed from the noun mint or the adjective minty, and indicates substances of a minty composition or flavour especially in the case of sweets. Other nougat sweets flavoured with mint, the goods of traders other than the plaintiff, were undoubtedly on the market during the whole or part of the time that the plaintiff was carrying on its trade as "Minties." These other sweets were known under a variety of names such as "Mintos," "Mintets," "Pasca Mints," "Max Mints," "Snowie They're Minty," and so forth. It was, therefore, argued that the word "Minties" was descriptive of the character or quality of the article sold, but the learned Judge who heard the evidence found that the word "Minties" meant sweets made by the plaintiff as distinguished from sweets made or sold by other manufacturers; in other words, that it did not mean sweets of a particular flavour or character, but sweets of a particular manufacturer. In our opinion, this conclusion was clearly right. It is supported by the evidence of rival manufacturers to the plaintiff, by the evidence of retail sellers and even by evidence of the employees of the defendants themselves who deposed that they had informed customers that they did not stock "Minties," which they knew were and meant the goods of the plaintiff, but "Mentes," "the same thing," "our own goods."

The learned Judge also found that the defendants so described their sweets as to be likely to mislead purchasers, and to lead them to buy the defendants' sweets as and for the plaintiff's sweets. This finding is clearly warranted by the evidence. The defendants have carried on a business for some time as the Puritan Chocolate Company. They sold a nougat sweet flavoured with mint under the name Puritan "Mint Chews," but since 1925 they have substituted "Mentes" for the words "Mint Chews." At the time of this substitution, the defendants knew that the plaintiff had built up a considerable trade in its sweets under the name "Minties." The defendants suggest that they substituted the word "Mentes" for the words "Mint Chews" because it is the English equivalent of the plural of a Greek word meaning peppermint drops. The learned primary Judge had no shadow of a doubt, nor have we, that the word "Mentes" was selected because of its similarity to the word "Minties." Moreover, in this case, we have the affirmative evidence of actual passing off by the defendants' employees of the defendants' sweet "Mentes" for the plaintiff's sweet "Minties." "It is quite true that the word fraud is not to be found in the statement of claim. But the whole gist of the action was that the defendants were endeavouring to palm off their goods as the goods of the plaintiffs by selling them under a designation which would ... deceive customers. ... That is, as it seems to me, a charge of dishonesty, and I must say I think the charge was established" (Reddaway v. Banham[94]). The defendants, however, insist that the plaintiff has been guilty of such conduct as disentitles it to an injunction (Leather Cloth Co. v. American Leather Cloth Co.[95]; Ford v. Foster[96]). The plaintiff, it is said, has falsely represented that the word "Minties," and it alone, is its registered trade mark. Some doubt has been expressed whether a defendant who has been guilty of passing off his goods as the goods of another can escape "scotfree" simply on the ground that the conduct of that other "was not such as it should be" (see Jamieson & Co. v. Jamieson[97]; Wolff & Son v. Nopitsch[98]). Such conduct would not, it seems, afford any defence to an action at common law for deceit (cf. Ford v. Foster). But in the view we take of the case we need not consider this matter further. Lord Westbury in the Leather Cloth Co.'s Case[99] says it is essential that the plaintiff should not in his trade mark or in the business connected with it be himself guilty of any false or misleading representation. According to Lord Kingsdown in the same case in the House of Lords[100] a trader may be guilty of such misrepresentations with respect to his goods as to amount to a fraud upon the public, and to disentitle him on that ground as against a rival trader to the relief in a Court of equity which otherwise he might claim. In Ford v. Foster it was said that the misrepresentation must be in the trade mark itself, and not in some collateral representation, though that does not seem quite consistent with the generality of the principle enunciated in the Leather Cloth Co.'s Case[101] (Ashburner's Principles of Equity). But in the case of In re Registered Trade Marks of Bass, Ratcliffe & Gretton Ltd. [No. 2][102] Romer L.J. said that it must be shown that the misrepresentation is reasonably calculated to injure someone; to lead him to do or abstain from doing some act the doing or abstaining from doing which might possibly injure him, or, to put it in other words, that there is a material misrepresentation (Leather Cloth Co.'s Case[103]). Vaughan Williams and Matthews L.JJ. in Bass's Case thought the question one of fact and that the less the Court said about it the better. (See also Cochrane v. Macnish & Son[104]; Mrs. Pomeroy Ltd. v. Scalé[105].) Now, the trade of the plaintiff's was, as the primary Judge said, an honest clean trade, and, in our opinion, there was no misrepresentation whatever on the tins or in what has been called the literature in relation to the business of the plaintiff, and certainly nothing calculated to mislead or to injure anyone. The plaintiff placed its trade mark on all those methods of advertising its sweets. Generally speaking, it used its oval device with the word Minties beneath it in large letters and within inverted commas; and under the word "Minties" sometimes in the middle of the word and at others at the end of the word, it placed the letters Reg, meaning registered. On wrappers the oval device was placed around their border and the word "Minties" across the centre. The plaintiff was entitled to represent that its trade mark was registered and to put that representation somewhere and somehow upon its advertising matter. If the plaintiff had placed the letters Reg at the top, bottom or side of its labels and show cards, then no doubt the Court would have been told that the plaintiff claimed the totality of the label or show card as its trade mark and was guilty of misrepresentation. The natural and appropriate place, we think, for the letters Reg is under the word "Minties" placed beneath the oval device. That is the course that the plaintiff adopted, and it does not misrepresent any fact. The suggestion that the plaintiff should not have printed "Minties" in large letters or placed it in inverted commas is unworthy of serious consideration. So, too, is the suggestion that it was a misrepresentation to place upon a label the oval device, and underneath it the following:—"Make no mistake.—Minties.—Reg". That is an appeal to buy and use the sweet known as "Minties"; the emphasis is certainly not upon the inconspicuous letters Reg.

We were referred to a circular placed inside the tin which contains the following statement: "The word Minties is registered and owned solely by James Stedman-Henderson Sweets Ltd. the manufacturers and although Minties is a household word through service and quality imitations cannot be called and sold as Minties." Cases such as Ford v. Foster[106] and In re Lyle and Kinahan Ltd.'s Application[107] suggest that a representation so made is not necessarily fatal to the claim for an injunction; the question, as already indicated, is one of degree, and it is not unimportant that the statement is not in the trade mark itself. But, in any case, the statement that the word "Minties" is registered is equivocal: it does not assert that the word "Minties" and it alone, is registered (Cochrane v. Macnish & Son[108]; Bass's Case[109]). Again, the statement that the word is owned solely by the plaintiff has been substantially established in this action; it has been found that the word means sweets of the plaintiff as distinguished from sweets made by other manufacturers. The form in which the injunction is granted was not challenged at the bar or in the notice of appeal, and under these circumstances, we do not feel called upon to say whether the form adopted in Reddaway v. Banham[110] and Johnston v. Orr Ewing[111], or the more absolute form of Wotherspoon v. Currie[112], Montgomery v. Thompson[113] and F. Pinet et Cie. v. Maison Louis Pinet Ltd.[114], should or should not have been followed.

[1] (1887) 4 R.P.C. 215.

[2] (1872) L.R. 7 Ch. 611.

[3] [1838] EngR 377; (1838) 3 My. & C. 338.

[4] (1896) 13 R.P.C. 235, at p. 243.

[5] (1872) L.R. 7 Ch. 611.

[6] (1893) 2 Ch. 567, at 584.

[7] (1910) 1 Ch., at 151-152.

[8] (1915) 32 R.P.C. 273; 84 L.J. Ch. 449.

[9] (1915) 32 R.P.C., at p. 283.

[10] (1899) A.C., at p. 343.

[11] (1909) 26 R.P.C. 693, at p. 704.

[12] (1909) 26 R.P.C., at p. 708.

[13] (1912) 29 R.P.C. 440, at pp. 451-452.

[14] (1916) 86 L.J. Ch. 175.

[15] (1903) 1 Ch. 211, at p. 224.

[16] (1865) 11 H.L.C., at p. 542.

[17] (1906) 23 R.P.C. 388, at p. 394.

[18] [1837] EngR 861; (1837) 8 Sim. 477, at p. 480.

[19] (1911) 28 R.P.C. 252.

[20] (1911) 28 R.P.C., at p. 264 (5 lines from end).

[21] (1911) 28 R.P.C. 597, at p. 605.

[22] (1911) 28 R.P.C., at p. 609.

[23] (1912) 29 R.P.C. 465, at p. 475.

[24] (1911) 28 R.P.C. 597.

[25] (1911) 28 R.P.C., at p. 607.

[26] (1911) 28 R.P.C., at p. 609.

[27] (1912) 29 R.P.C. 465.

[28] (1912) 29 R.P.C. 465, at p. 475.

[29] (1872) L.R. 7 Ch. 611.

[30] (1872) L.R. 7 Ch., at p. 625.

[31] (1872) L.R. 7 Ch., at bottom of p. 625 and top of p. 626.

[32] (1872) L.R. 7 Ch., at pp. 630, 632.

[33] [1837] EngR 861; (1837) 8 Sim. 477.

[34] (1898) 15 R.P.C., at p. 191.

[35] (1872) L.R. 7 Ch., at p. 630.

[36] [1824] EngR 175; (1824) 3 B. & C. 541.

[37] (1911) 28 R.P.C. 252.

[38] (1915) 32 R.P.C. 273.

[39] [1837] EngR 861; (1837) 8 Sim. 477.

[40] (1872) L.R. 7 Ch. 611.

[41] (1866) 36 L.J. Ch. 228.

[42] (1866) 36 L.J. Ch., at p. 230.

[43] (1866) 36 L.J. Ch., at p. 232.

[44] (1914) A.C. 932, with especial reference to p. 952.

[45] (1907) 24 R.P.C. 249.

[46] (1906) 24 R.P.C., at p. 192.

[47] [1903] USSC 23; (1903) 187 U.S. 516, at p. 528.

[48] (1891) 2 Ch. 186, at p. 233; 8 R.P.C. 137, at p. 164.

[49] (1896) A.C., at p. 213.

[50] (1896) A.C., at p. 219.

[51] (1887) 4 R.P.C. 508, at p. 518.

[52] (1887) 4 R.P.C., at p. 520.

[53] (1899) 16 R.P.C. 137.

[54] (1899) 16 R.P.C., at p. 138.

[55] (1887) 4 R.P.C. 215.

[56] (1872) L.R. 7 Ch. 611.

[57] (1899) 16 R.P.C., at p. 138.

[58] [1837] EngR 861; (1837) 8 Sim. 477.

[59] (1887) 4 R.P.C., at p. 222.

[60] (1896) A.C. 225.

[61] (1896) A.C. 199.

[62] (1896) A.C. 199.

[63] (1853) 3 DeG. M. & G. 896.

[64] (1896) A.C., at p. 210.

[65] (1865) 11 H.L.C., at p. 538.

[66] (1896) A.C., at p. 204.

[67] (1896) A.C. 199.

[68] (1896) A.C., at p. 219.

[69] (1906) 23 R.P.C., at p. 398.

[70] (1912) 29 R.P.C. 465.

[71] (1915) 32 R.P.C., at p. 283.

[72] (1880) 13 Ch. D. 434; (1882) 7 App. Cas. 219.

[73] (1872) L.R. 7 Ch. 611.

[74] (1872) L.R. 7 Ch. 611.

[75] (1866) 36 L.J. Ch. 228.

[76] (1866) 36 L.J. Ch., at p. 232.

[77] (1865) 35 L.J. Ch. 53, at p. 64.

[78] (1906) 23 R.P.C. 388.

[79] (1906) 24 R.P.C. 177.

[80] (1907) 24 R.P.C., at p. 260.

[81] (1887) 4 R.P.C. 508.

[82] (1872) L.R. 7 Ch. 611.

[83] (1898) 15 R.P.C. 169.

[84] (1900) 18 R.P.C. 27.

[85] (1896) A.C. 225.

[86] (1899) 16 R.P.C. 137.

[87] (1902) 2 Ch. 579.

[88] (1894) 12 R.P.C. 25.

[89] (1872) L.R. 7 Ch. 611.

[90] (1882) 7 App. Cas. 219.

[91] (1896) A.C. 199.

[92] (1896) A.C., at p. 204.

[93] (1915) 84 L.J. Ch. 449.

[94] (1896) A.C., at p. 219.

[95] (1865) 11 H.L.C., at p. 542.

[96] (1872) L.R. 7 Ch. 611.

[97] (1898) 15 R.P.C., at p. 191.

[98] (1900) 18 R.P.C., at p. 32.

[99] [1863] EngR 1050; (1863) 4 DeG. J. & S. 137, at p. 142.

[100] (1865) 11 H.L.C., at p. 542.

[101] [1865] EngR 199; (1865) 11 H.L.C. 523.

[102] (1902) 2 Ch. 579.

[103] (1863) 4 DeG. J. & S., at p. 143.

[104] (1896) A.C. 225.

[105] (1906) 24 R.P.C., at p. 192.

[106] (1872) L.R. 7 Ch. 611.

[107] (1907) 24 R.P.C. 249.

[108] (1896) A.C. 225.

[109] (1902) 2 Ch. 579.

[110] (1896) A.C. 199.

[111] (1882) 7 App. Cas. 219.

[112] (1872) L.R. 5 H.L. 508.

[113] (1891) A.C. 217.

[114] (1898) 1 Ch. 179.

High Court of Australia

Angelides v James Stedman Hendersons Sweets Ltd [1927] HCA 34; (1927) 40 CLR 43 (30 August 1927)

HIGH COURT OF AUSTRALIA