James Minifie & Company v Edwin Davey & Sons [1933] HCA 17; (1933) 49 CLR 349 (24 April 1933)

James Minifie and Company Defendants, Appellants; and Edwin Davey and Sons Plaintiffs, Respondents.

This appeal is from a judgment of Cussen A.C.J. by which he determined a question raised in a special case stated by the parties to an action. The action is brought by the respondents, as proprietors of a registered trade mark, for infringement. The acts of infringement relied upon are unusual. The appellants, flour millers, sell flour for export. Under an agreement or arrangement with a correspondent or customer in Singapore, the appellants ship flour in bags from Melbourne to Singapore on c.i.f.e. terms. The conditions of the arrangement require that the appellants should use bags bearing an imprint of a mark said to belong to their customer in Singapore. The mark, which consists of a crowing cock within a ring containing lettering which gives the name of the Singapore merchant and describes him as sole importer, is surmounted by the appellants' name and the word Melbourne. By the special case it is stated that the merchant is registered proprietor in Singapore of the mark complained of and uses the same upon goods put upon the market there by him, but the parties do not agree that he had the sole right to use the mark there. The case then asks this question: "Assuming the brand on the bags referred to in par. 8 hereof so closely resembles the plaintiff's registered trade mark as to be calculated to deceive, has the defendant by reason of the acts aforesaid or any of them infringed the plaintiff's registered trade mark?" The acts of infringement relied upon consist of the use of the bags thus marked to enclose the flour, the transportation to the wharf of the flour in this condition in more or less closed trucks or vehicles, the handling on the wharf, the placing aboard ship and the circumstance that all this is done under an agreement or arrangement involving a sale of the flour. It is not disputed that the acts of infringement must be done within Australia. But Cussen A.C.J. was of opinion that what was done in Australia amounted to a use, within the meaning of sec. 53 of the Trade Marks Act 1905-1922, in respect of the goods in respect of which it is registered, of a mark assumed so nearly to resemble the respondents' mark as to be likely to deceive. This decision is attacked by the appellants upon the ground that in sec. 53 "use, in respect of the goods" regards use as a mark for the purpose of indicating that the goods are the goods of a particular proprietor of the mark used, by virtue of manufacture, selection, certification, dealing with, or offering for sale and that, whatever may have been done in Singapore, the mark was not used for this purpose in Australia. Upon the facts it is clear enough that the appellants did not use the mark to represent to anybody that the goods were theirs. On the contrary it would be reasonably clear to anybody who saw the mark that it was used for the purpose of indicating that a merchant in Singapore to whom they were being sent had imported the flour into that place. The wide words of sec. 53 need to be restricted in their meaning if they do no more than the appellants contend. It must be remembered that we are bound to proceed upon the assumption that the mark placed by the appellants on the bags so nearly resembles the respondents' mark as to be likely to deceive, and this must mean deceive in Australia. I have been unable to avoid some misgivings about this assumption. By dividing the question of infringement up in the way which the special case does it seems to me possible that the parties have split what may really be an indivisible issue. But, accepting fully the assumption stated in the special case, I cannot think that the language of sec. 53 should be so restricted as to exclude the acts complained of. No light appears to me to be thrown upon the expression "use, in respect of the goods" in the definition of infringement by decisions or dicta in cases relating to such provisions as those standing as secs. 16 (3), 28 and 72. What is done in Australia in the present case amounts to an application of the deceptive mark to the goods for the purpose of an ordinary transaction of trade. The fact that the appellants' purchaser in Singapore of the goods treats the mark as his own and is not intended to understand from it that the goods are those of the appellants or of the respondents does not seem to me to displace the fact that it is placed upon the goods as an identifying mark and that with it on them the goods are put into a course of trade by the appellants. There is no authority requiring a construction of sec. 53, which would restrain its meaning to the exclusion of such a use of the mark and there is a number of dicta, which were cited in the argument, opposed to such a restriction. In my opinion the judgment of Cussen A.C.J. is right and the appeal should be dismissed.

Under the Trade Marks Act 1905-1922 of the Commonwealth, Edwin Davey & Sons are registered as the proprietors of a trade mark in class 42 in respect of flour, &c. The essential particulars of the mark are the device of a cock and the word "Chanticleer." Minifie & Co. are flour millers carrying on business in the State of Victoria. A. Clouet & Co. Ltd. of Singapore order and purchase from Minifie & Co. considerable quantities of flour at a price per ton c.i.f. & e., Singapore. The flour is manufactured in Victoria, packed in bags made or obtained by Minifie & Co., and shipped to Singapore. On the bags Minifie & Co. print or cause to be printed, between the words "Minifies Melbourne" and the words "Best Roller Flour," the device of a crowing cock, surrounded by a circle in which appear the words "Sole Importers A. Clouet & Co. Ltd. Singapore." The device of the crowing cock, or rooster as it is called by A. Clouet & Co.Ltd., is registered as their trade mark in Singapore, and it requires the mark to be put upon the bags of flour sold and shipped to it by Minifie & Co.

A special case was stated for the opinion of the Supreme Court, and the question was: Assuming that the brand placed by Minifie & Co. upon the bags of flour sold and shipped to A. Clouet & Co. Ltd. at Singapore so closely resembles Davey & Sons' trade mark as to be calculated to deceive, did Minifie & Co. by reason of the acts aforesaid infringe Davey & Sons' trade mark? Cussen A.C.J. resolved that question, and in our opinion rightly, in the affirmative. Under the Trade Marks Act 1905-1922, sec. 50, the registration by Davey & Sons of their trade mark gave them the exclusive right to the use of the mark upon or in connection with the goods in respect of which it is registered. It is a proprietary right. And, by sec. 53, that right is infringed by the use in respect of the goods in respect of which it is registered of a mark substantially identical with the trade mark or so nearly resembling it as to be likely to deceive.

But it was argued that there would be no infringement unless the infringer used the mark in Australia as a trade mark, that is to say, for the purpose of indicating that goods are the goods of the proprietor of the trade mark (see Trade Marks Act, sec. 4, "Trade Mark"). Mr. Dean referred us to the case of Edward Young & Co. v. Grierson Oldham & Co.[1], in which the Court of Appeal held that the corresponding English enactment ought to be construed as implying that there would be no infringement unless the alleged infringer used the mark as a trade mark: that is to say, as indicative of the origin of manufacture (see J. B. Stone & Co. v. Steelace Manufacturing Co.[2]). In the present case the assumption is that Minifie & Co. put Davey & Sons' registered trade mark on the bags shipped to Singapore, and it is clear that they did so in Australia, and in connection with the same class of goods as those in respect of which that mark was registered and as indicative of the origin of manufacture. They used it in their business and for the purpose of their export trade. And, if it were necessary to go so far, we think that the manner in which the mark was used would improperly indicate that Minifie & Co. themselves, and not Davey & Sons, were the proprietors of the mark.

The infringement of the plaintiffs' proprietary right in the mark is thus clear on the assumption made, and the appeal should be dismissed.

The appellants are flour millers carrying on business in Melbourne. They have been selling flour to a merchant at Singapore upon c.i.f. & e. terms, to be shipped from Melbourne to that port. Under the terms of sale the bags containing the flour are branded in Melbourne by the appellants with a trade mark of which the merchant is in Singapore registered proprietor. The respondents are the proprietors in the Commonwealth of Australia of another trade mark registered in respect of flour, and they allege that the mark of the Singapore merchant so closely resembles it as to be likely to deceive. The respondents sued the appellants for infringement of the Australian mark. The parties have agreed upon a special case which states as additional facts that the appellants, after manufacturing the flour and packing it in bags which they caused to be so branded, load it at their mill into trucks or lorries by which it is conveyed under cover to the wharf where it is either slung direct from the trucks into the ship's hold or else stacked in sheds and thence put on board.

The question submitted by the special case for decision requires the assumption that the brand on the bags so closely resembles the respondents' registered trade mark as to be calculated to deceive, and asks whether the appellants by reason of the acts stated infringe the respondents' trade mark. Cussen A.C.J. gave an affirmative answer to the question. I agree in his conclusion.

Sec. 53 of the Trade Marks Act 1905-1922 provides that the rights acquired by registration of a trade mark shall be deemed to be infringed by the use, in respect of the goods in respect of which it is registered, of a mark substantially identical with the trade mark or so nearly resembling it as to be likely to deceive. Upon the assumption required by the special case, the matter is reduced to the question whether the mark of the Singapore merchant is, within the meaning of this provision, used in Australia in respect of the goods. The appellants maintain that the phrase refers to use as a trade mark in Australia, in the sense of a mark used for the purpose of indicating in Australia that they are the goods of the person using it, by virtue of manufacture, selection, certification, dealing with, or offering for sale (compare sec. 4, definition of ). Sec. 50 states the rights acquired by registration, namely, "the exclusive right to the use of the trade mark upon or in connection with the goods in respect of which it is registered." Again it is suggested that "use" in this provision means use as such trade mark in Australia. It is said that the acknowledged policy of the Trade Marks Act is to strengthen and protect with new remedies a form of property or proprietary right already existing and not to create a new one, and, accordingly, that what is forbidden is a use of the mark analogous to that which would amount to passing off. But this method of reasoning is of little assistance because the very question may be said to be whether, for the protection of the existing form of proprietary right or interest, the statute has not made it an infringement to use the mark in respect of goods in any way in the course of trade. It is, perhaps, true that the words are capable of an application which would go beyond use in trade or business and extend to use in the hands of ultimate consumers or utilizers of the goods. But, while it is natural to understand the language of a provision in the Trade Marks Act as restricted to commercial and trading operations, some firmer ground is needed to support an implication further restricting its meaning. There is good reason for preventing any use of a trade mark upon or in connection with goods which tends to confuse the public as to what it signifies and so to impair the reputation which the registered proprietor has obtained or is seeking to obtain under it.

In the present case, the application of the Singapore mark to the goods is for the purpose of identifying them and it is done pursuant to an agreement for sale. It is essentially a commercial use of the mark, and, although as between the appellants and the merchants at Singapore, it was not intended to signify anything and to no one was it intended to represent or suggest that either the respondents or the appellants were associated with the goods, nevertheless it was affixed in Australia to the goods as and for a merchandise mark. I think we are not warranted in restricting the general expressions employed in sec. 53 so as to exclude such a use of the mark in respect of the goods. This opinion seems to be supported by such judicial dicta as exist dealing with the exact point and by the opinions of text writers.

The question for decision is whether, upon the assumption made in the special case that the brand on the bags of flour, with which the appeal is concerned, so nearly resembled the respondents' registered trade mark as to be calculated to deceive, the appellant has, upon the facts stated in the special case, infringed that trade mark. Sec. 53 of the Trade Marks Act 1905-1922, says that the rights acquired by registration of a trade mark shall be deemed to be infringed by the use in respect of the goods in respect of which it is registered of a mark substantially identical with the trade mark or so nearly resembling it as to be likely to deceive. Sec. 50 of the Act says that, subject to the reservation in the section, the registration of a person as proprietor of a trade mark shall give to such person the exclusive right to the use of the trade mark upon or in connection with the goods in respect of which it is registered. The case therefore turns upon the question whether there was a use by the appellant of the "impugned device" within the intendment of sec. 53, or, in other words, whether the use by the appellant of that device conflicted with the exclusive right which, under sec. 50, the respondents acquired by the registration of the trade mark. The right which is dealt with by sec. 50 is the right to use the registered trade mark as a trade mark, and the use which constitutes infringement under sec. 53 is the use of the offending mark as a trade mark (Edward Young & Co. v. Grierson Oldham & Co.[3]; J. B. Stone & Co. v. Steelace Manufacturing Co.[4]). The question whether the impugned word in the latter case was "used as a trade mark" was held to turn upon the construction of the defendant's advertisement which embodied it.

Reading the imprint on the flour bag put in evidence, in the light of the facts, I think that the device indicates flour of the appellant's manufacture which is exported to Singapore and imported there solely by A. Clouet & Co. The device was, in my opinion, used by the appellant as a trade mark. But a further critical question remains, whether the use of the impugned device which in the present case did not involve the passing off of the goods in Australia was a use which by sec. 53 is deemed to be an infringement of the exclusive right to use the registered trade mark which was given by registration in this country. This contention was based upon the view of the Act which the following statement from the judgment of Cotton L.J. in In re Lyndon's Trade Mark[5], may be adopted to express: "It was the general object of the Trade Marks Act not to give new rights, but to regulate the use of, and the means of protecting, trade marks." Secs. 50 and 53 regulate the use of, and the means of protecting, trade marks. There is nothing in these sections or in the Act to warrant the conclusion that any use of a mark identical with or resembling a registered trade mark, which would not have been an infringement of a common law trade mark, proved to be such before the Act, should not be regarded as an infringement of a registered trade mark. In the course of his judgment in In re Worthington & Co.'s Trade Mark[6], where the section under consideration was sec. 6 of 38 & 39 Vict. c. 91, which provided against the registration in respect of the same goods of a trade mark so nearly resembling a trade mark already on the register as to be calculated to deceive, James L.J. said:—"In dealing with the words of the Act of Parliament, it appears to me (though I do not usually like to use general maxims in considering Acts of Parliament or any other instrument) that this Act is one as to which we may fairly say, that its provisions ought to be construed liberally, so as to advance the remedy and repress the mischief. It appears to me that the intention of the Legislature was to prevent a person having a trade mark from being liable to be injured by another trade mark, which might be used to imitate his or be passed off as his." In the same case, Brett L.J.[7] said:—"There again there is nothing about form or outline, it is the trade mark taken as a whole. That being so, and the mischief to be guarded against being a mischief to be done to one person by another in the course of trade and in the use of these marks in trade, it seems to me that it would be a narrow construction of the statute to say that we are only to look at the mark as it is printed in the advertisements, and that the proper construction is to say that we are to look at the trade mark as it will be used in the course of trade." The object of the present sec. 25 of the Australian Trade Marks Act is similar to that of sec. 6 of the Act in relation to which these decisions were given. Sec. 50 and sec. 53 should, I think, be construed respectively to extend to the use of a registered trade mark in the course of trade and to the use in the course of trade of a mark identical with or resembling the registered trade mark in question. That, in my opinion, is the natural scope and operation of these sections. A narrower construction would leave any person other than the registered proprietor free to a limited extent to use in the course of trade a trade mark identical with or resembling a registered trade mark. No rule is expressed in the Act for defining what would be the area of that immunity.

Moreover, it may be noted that sec. 25 would not effectively prevent the mischief that has been described being done to the registered proprietor in the course of trade, if sec. 53 does not strike at the use in the course of trade of a device to which registration had been denied under the former section.

The appellant used the device in this case as a trade mark in the course of trade. In my opinion he thereby infringed the respondent's registered trade mark. This conclusion is in accordance with the dicta of Stirling J. and the opinion of Kerly which were cited in argument.

[1] (1924) 41 R.P.C. 548.

[2] (1928) 45 R.P.C. 127; (1929) 46 R.P.C. 406.

[3] (1924) 41 R.P.C. 548.

[4] (1928) 45 R.P.C. 127.

[5] (1886) 32 Ch. D. 109, at p. 117.

[6] (1880) 14 Ch. D. 8, at p. 13.

[7] (1880) 14 Ch. D., at p. 15.

High Court of Australia

James Minifie & Company v Edwin Davey & Sons [1933] HCA 17; (1933) 49 CLR 349 (24 April 1933)

HIGH COURT OF AUSTRALIA