Kendall Co v Mulsyn Paint & Chemicals [1963] HCA 1; (1963) 109 CLR 300 (29 January 1963)

HIGH COURT OF AUSTRALIA

THE KENDALL CO. v. MULSYN PAINT AND CHEMICALS [1963] HCA 1; (1963) 109 CLR 300

Trade Mark

High Court of Australia
Kitto J.(1)

CATCHWORDS

Trade Mark - Application for registration - Opposition by Massachusetts corporation using similar mark in respect of similar goods - Reputation in Australia at time of application - Proprietorship - "Being likely to deceive" - Trade Marks Act 1905-1948 (Cth), ss. 25, 32, 45, 114.

HEARING

Sydney, 1962, October 30, November 9, 12-14; 1963, January 29. 29:1:1963
APPEAL from the Acting Deputy Registrar of Trade Marks.

DECISION

1963, January 29.
KITTO J. delivered the following written judgment:-
This is an appeal against a decision of an Acting Deputy Registrar of Trade application was lodged on 12th October 1956, that is to say before the commencement of the Trade Marks Act 1955 (Cth) (1st August 1958), the jurisdiction of the Court to entertain the appeal exists under s. 45 of the Trade Marks Act 1905-1948 (Cth), and the appeal must be decided on the provisions of that Act: see s. 5(4) of the 1955 Act. (at p303)

2. The trade mark of which registration was sought and granted consisted of the word "POLYKIN", and the registration is in class 50(10) in respect of "coverings and wrappings for use in the heat, moisture and/or electrical insulation of pipes, boilers, roofing and other articles used in industry, none of the said goods being in the nature of paints, enamels or varnishes". The application was and is opposed by the present appellant, a Massachusetts corporation, on the ground, broadly, of the similarity of the proposed mark with a mark consisting of the word "Polyken" which the appellant has used for some years in respect of similar goods. It is obvious, and the respondent agreed, that the two words so closely resemble one another that if they were used on the same description of goods confusion would be likely to result. Accordingly a question arises for decision under s. 114 of the Act. (at p303)

3. There is really no other question in the case. Two grounds of opposition independent of s. 114 have been mentioned in the course of the argument, but they may be disposed of briefly. One is the ground provided by s. 25. That section, however, applies only where there is identity or similarity between the mark for which registration is sought and a mark belonging to a different proprietor which is already on the register. Since "Polyken" is not on the register, the section has no bearing on the present case. The other ground is that the respondent (it is a firm, but for convenience I shall speak as if it were a corporation) is not entitled to registration of the mark, because it has not made good the assertion necessarily involved in its application that it is the "proprietor" of the mark in the sense of s. 32. The respondent's selection of the word "Polyken", it is said, is an obvious appropriation of "Polyken" with an immaterial variation, and "really and in conscience" (as Isaacs J. would have expressed it: Blackadder v. Good Roads Machinery Co. Inc. (1926) 38 CLR 332, at p 341 ) the respondent should not be considered the proprietor of it. But proprietorship in the relevant sense may exist in virtue of selection or adoption for use in Australia as and for a trade mark (coupled with an intention so to use it and with the statutory equivalent of actual use, viz. the applying for registration), provided that the mark has not yet been so used here or made the subject of an application for registration here. This is so notwithstanding that the mark is registered and used in another country as the mark of someone else in respect of the same goods; though of course it is otherwise if the claim to proprietorship is in fraud of, or in breach of a duty owed to, the person who is the proprietor in the other country: see Shell Co. of Australia Ltd. v. Rohm and Haas Co. [1948] HCA 27; (1949) 78 CLR 601, at pp 627, 628 ; Re "Yanx" [1951] HCA 28; (1951) 82 CLR 199 ; Aston v. Harlee Manufacturing Co. [1960] HCA 47; (1960) 103 CLR 391 . If, in the present case, it were proved that before October 1956 the appellant had used the mark "Polyken" at all in the Australian market in respect of relevant goods, the claim of the respondent to be the proprietor of "Polykin" would have been defeated, as the cases cited show, even though the appellant's use of "Polyken" had not been sufficient to create a reputation for that word; for the notion in s. 32 of proprietorship of a mark before registration, that is to say the notion of being the person entitled to be registered as proprietor (Kerly on Trade Marks, 8th ed. (1960) p. 34), is satisfied by user even without the establishment of a reputation: cf. Hall v. Barrows (1863) 8 LT (NS) 227, at p 229 . But there is no evidence here that "Polyken" was ever used as a mark in Australia before October 1956, and therefore, there being no proof of fraud or of any relationship between the parties disentitling the respondent to adopt either word as its own mark in this country, there is no valid answer to the respondent's claim that its selection of "Polykin" as a trade mark, its proved intention to use the word upon and in connexion with goods of the relevant description, and the making of its application for registration, combine to entitle it to maintain the application as proprietor. (at p305)

4. I turn, therefore, to the question under s. 114, which is whether, as at the material date in October 1956, the use of "Polykin" in Australia as a trade mark on goods within the stated description would, by reason of its being likely to deceive, be deemed disentitled to protection in a court of law. Clearly it would, if the fact is that the word "Polyken" was then known, as distinguishing the appellant's goods, to any substantial number of the persons likely to be concerned in the purchasing of goods within class 50(10) in Australia, that is to say the persons to whom the respondent intends its mark to be addressed (see per Lord Morton in In re Hack's Application (1940) 58 RPC 91, at p 104 ). I do not accept the contention that the only knowledge to be considered is knowledge obtained from experience in or in relation to the Australian market. The manner in which, or the source from which, knowledge has been acquired is, in my opinion, immaterial. The only question is whether "a number of persons" (see Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, at p 608 ) of the class mentioned, that is to say a substantial number of them (see the formulation of the question by Lord Jenkins approved by the Court of Appeal in Kidax (Shirts) Ltd's Application (1960) RPC 117, at p 120 ), had such an acquaintance with "Polyken" as referring to the appellant's goods that, seeing "Polykin" used in Australia as the trade mark of goods of the same general description, they would either infer that those goods had come from the same source, or at least would be caused to wonder whether that might not be the case (1954) 91 CLR, at pp 595, 608 . The question in W.D. & H.O. Wills (Australia) Ltd. v. Rothmans Ltd. [1956] HCA 15; (1956) 94 CLR 182 to which I have been referred was entirely different. It was a question as to the construction of s. 72, and the Court held that what that section meant by user of a trade mark was user in Australia. Here the question is what s. 114 means by "likely to deceive", and the only geographical limitation which must be included in the answer is that which confines the class of persons who are to be considered to persons on the purchasing side of the Australian market in the relevant kind of goods. If authority be needed for denying that the class is to be still more narrowly confined, that is to say to persons likely to be deceived because of knowledge acquired in the Australian market in the goods, a sufficient citation is Radio Corporation Pty. Ltd. v. Disney [1937] HCA 38; (1937) 57 CLR 448 . (at p305)

5. Now, apart from the evidence of one witness, a Mr. Jennings, there is no admissible evidence in the material before me to warrant a finding that anyone in Australia had ever heard of "Polyken" before the respondent applied for registration of "Polykin" in October 1956, unless it was Mr. Rettig, the manager of the respondent's business. His firm had been manufacturing paints and protective coating materials for industrial purposes and marketing them under various names beginning with "Poly", and he says that when it decided to add a new line of wrapping material for protective and insulation purposes, in the form of adhesive tape in which polyethylene or polyvinyl chloride was to be used, he coined for the new product the trade mark "Polykin". He has given two different reasons for his choice of the suffix "kin", one that it suggested kinship with the firm's existing products, and the other that the protective tape acted as a skin and for ease of pronunciation he dropped the "s". I am not satisfied that either explanation is in accordance with fact. If the respondent's success in the case depended upon its establishing that "Polykin" was not adopted because Mr. Rettig knew of "Polyken" as in use in the United States and got as close to it as he could get without taking the precise word, I should allow this appeal. But what Mr. Rettig knew is beside the point. The question is whether other people were so acquainted with "Polyken" as the trade mark of the appellant's goods that there existed the likelihood of deception to which s. 114 refers. (at p306)

6. It is proved that five copies of magazines published in the United States, each containing an advertisement for the appellant's protective coatings under the mark "Polyken", were available for public inspection in the Public Library, Sydney, before October 1956. They were the January 1956 issue of Chemical and Engineering News, the February 1956 issues of The Petroleum Engineer and of Corrosion, the March 1956 issue of Mill and Factory and the May 1956 issue of Architectural Record. But it is not proved that anyone ever inspected any of these copies, or that any of the five magazines had any circulation in Australia before October 1956; and no one has come forward to say that before that time he saw any of the advertisements. (at p306)

7. Then there is evidence as to certain purchases of rolls of the appellant's adhesive tape before October 1956 in New York by the Australian Consulate-General at the request of Trans Australia Airlines. Sometimes the name "Polyken" appeared in the documents brought into existence in America in relation to such purchases, and at least one such document (of 6th May 1954) in Australia contained the word "Polyken"; but there is no foundation in the evidence concerning these purchases for any conclusion that the word acquired any reputation in Australia. The bin cards used in the T.A.A. stores do not mention the name: they record purchases of about 94 rolls, and the issue of about 77 rolls to various departments of the organization, between 1952 and 1962; but they refer to them by the catalogue number OP6.1-10, and as "Industrial Tape 2", with some mention of Bauer and Black, a firm name for a division of the appellant's business. It does appear that some at least of the rolls which in consequence of the purchases reached T.A.A. in Australia bore the word "Polyken" on the inside of the core, where it was able to be seen by persons using the tape, although it was not prominently displayed. There was thus some opportunity for members of the staff of T.A.A. to become acquainted with the word, and I conclude from the evidence of Mr. Jennings that some of them did. He has been an officer of the Supply Department of T.A.A. since 1946, and is now the Supply Manager. At the relevant period he was the chief buyer of supplies required for maintenance. He has said in evidence that he has known "Polyken" tapes since 1951 in Australia. To him, at least, the word "Polyken" in connexion with industrial tape would have conveyed, in October 1956, what he called "tape of American origin, the genuine article". The word was not used in documents, apparently, but Mr. Jennings recalled that to some extent, though he could not say to what extent, engineers requiring tape from the stores would ask for it orally by the name. "I knew of the material", he said, "and the people who taught me to know about it would have been right down the line from our inventory management group to storemen and so on". The class of employees concerned with industrial tape were quite numerous: there were, for example, roughly 1,200 engineers and from 58 to 65 storemen in the organization, according to Mr. Jenning's evidence. Not unnaturally, he could not be precise either as to the number of employees who showed that they knew the word "Polyken", or as to any particular occasion on which it was used. I accept his evidence as that of an intelligent witness genuinely endeavouring to assist the Court; but standing by itself it does not lead me to think it likely that even within the organization of T.A.A. - and Mr. Jennings had nothing to say as to any wider field - the word "Polyken" was known to many. And it does stand by itself. No other employee of T.A.A. gives supporting evidence. Indeed, several employees whom one would expect, after hearing Mr. Jennings' evidence, to be amongst those familiar with the word "Polyken" have made affidavits denying all acquaintance with it. One of them, Mr. Yuill, electrical supervisor of the aircraft maintenance department of T.A.A., who was an electrical foreman in that department from 1947 to 1960, was cross-examined before me and I accept his evidence. He said that he was aware that his section used an adhesive tape listed in T.A.A.'s catalogue under a particular number and with the name Industrial Tape (it turns out that only one roll of "Polyken" was used by that section), but that it was not until the day before he made his affidavit that he noticed the name "Polyken" on the roll core, appearing there many times but only to be seen by a person looking into the core. He had never before heard the name. Nor had another deponent, Mr M.J. Ryan, who occupies a position in the rival organization of Ansett-A.N.A. corresponding with that of Mr. Jennings in T.A.A. The onus lies on the respondent to disprove the likelihood of deception referred to in s. 114. It has filed affidavits by several deponents in walks of life in which "Polyken" would probably be known if it had any reputation in Australia, and each of them says that he knows of no such reputation. These deponents have not been cross-examined, and I have no reason to doubt their evidence. There is what I regard as an impressive absence of evidence from anyone outside T.A.A. to suggest that the "Polyken" mark was known at all in Australia. On consideration of the material before me I am satisfied that there is no likelihood of deception unless among some of the employees of T.A.A., and as to those employees I think the proper conclusion is that no substantial number of them would be deceived by the respondent's using "Polykin" in respect of the relevant descriptions of goods. In my opinion there is no such probability of deception as would disentitle the respondent to protection for the use of the word Polykin as its trade mark. (at p308)

8. In these circumstances I am of opinion that the decision under appeal must stand and the appeal be dismissed with costs. (at p308)

ORDER

Appeal dismissed with costs including reserved costs (if any).