A. and F. Pears Ltd v Pearson Soap Co Ltd - [1925] HCA 52

A. &F. PEARS LIMITED

THE PEARSON SOAP COMPANY LIMITED RESPONDENT. Trade Mark-Registration-Likelihood of deception-Onus of proof-Discretion of

Registrar-Trade Marks Act 1905-1922 (No. 20 of 1905-No. 25 of 1922), secs. 16, 24, 25, 44, 114. SYDNEY,

An application was made by a company named the Pearson Soap Co. Ltd. Nov. 23, 24

for registration of the words "Pearsonia" and "Pearsonette" as a trade mark in respect of detergents and cleansers. The applicant was the registered proprietor of-a trade mark "Pearson's" in respect of sand-soap. The applica- tion was opposed by A. &F. Pears Ltd., a company which manufactured the well-known Pears' Soap, and which was the registered proprietor of many trade marks in connection with soap which included the word "Pears." The application was granted subject to a condition that the marks should be applied respectively to pumice powder and pumice paste put up in containers on which the name and address of the applicant company appeared in visible proximity

Held, by Isaacs, Higgins and Rich JJ. (Knox C.J. and Starke J. dissenting), that on the evidence the applicant had not discharged the onus of showing that the marks were not likely to deceive, and, therefore, that it was not entitled to registration of the mark either with or without the condition.

37 CLR 341

APPEALS from the Law Officer.

Applications were made by the Pearson Soap Co. Ltd. for the registration as trade marks of the words "Pearsonia" and

Pearsonette" in class 47, each in respect of detergents and cleansers. The applications were opposed by A. &F. Pears Ltd. The Registrar upheld the opposition and refused to grant the applications. On appeal the Law Officer granted the applications with the following modifications and conditions that the trade mark 'Pearsonia' should be applied to pumice powder put up in tins or containers on which the name and address of the applicant Company appeared in visible proximity to the trade mark; and that the trade mark

' Pearsonette " should be applied to pumice paste put up in tins or containers on which the name and address of the applicant Company appeared in visible proximity to the trade mark.

From the decisions of the Law Officer A. &F. Pears Ltd. now appealed to the High Court.

The other material facts appear in the judgments hereunder. Jordan (with him Weston), for the appellant. The Registrar's decision was right, and the Law Officer was not justified in overruling his decision. Having regard to the appellant's registered trade marks, the words are likely to deceive and are within the prohibition of secs. 25 and 114 of the Trade Marks Act 1905-1922. The burden is on the respondent to satisfy the Court that there is no likelihood of deception, and that burden has not been satisfied (Eno v. Dunn

37 CLR 342

Flannery K.C. (with him Treatt), for the respondent. The words are registrable under sec. 16 as being invented words, and also as being words which have no reference to the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1925] HCA 52
Decision Date: 18 December 1925

CaseChat Overview and Summary

The High Court of Australia considered an appeal by A. and F. Pears Ltd against a decision of the Registrar of Trade Marks, which had allowed the registration of a trade mark by Pearson Soap Co Ltd. The dispute concerned the potential for the proposed trade mark to deceive or cause confusion among the public, given the existing and well-known trade mark of the appellant.

The central legal issue before the Court was whether the Registrar had erred in exercising his discretion to register the respondent's trade mark, specifically in relation to the likelihood of deception or confusion with the appellant's established mark. The Court was required to assess whether the Registrar had given due weight to the established reputation of the appellant's trade mark and the potential for consumers to be misled into believing that the respondent's goods were associated with or originated from the appellant.

The Court ultimately found that the Registrar had not properly considered the onus placed upon the applicant for registration to demonstrate that the mark would not deceive or cause confusion. Applying the principles of trade mark law, the Court held that the similarity between the marks, coupled with the extensive reputation of the appellant's mark, created a significant likelihood of deception. Consequently, the Court allowed the appeal, setting aside the Registrar's decision.

Orders