Re: ANGOVE'S PROPRIETARY LIMITED And: ELTON JOHNSON AND CARLENE VERA JOHNSON AND ECLAR INVESTMENTS PTY. LIMITED (1983) 66 FLR 216 No. G.39 of 1981 Trade Marks
COURT
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION Franki J.(1), Deane(2) and Fitzgerald(3) JJ.
CATCHWORDS
Trade Marks - infringement of registered trade mark - use of registered trade mark as a trade mark - proprietor's exclusive right to use - whether substantially identical or deceptively similar - whether use in good faith of name of business or of place of business - passing off.
Trade Marks - Alleged infringement of registered trade mark - Proprietor's exclusive right to use - Whether mark substantially identical or deceptively similar - Whether use in good faith of name of business or of place of business - Trade Marks Act 1955 (Cth), ss. 58(1), 62(1), 64(1)(e), 65, 96.
HEADNOTE
The appellant was the registered proprietor of the trade mark "St. Agnes" in Pt A of the Trade Marks Register in respect of brandy and wine and in Pt D in respect of a wide variety of alcoholic and non-alcoholic liquors. It produced the well-known "St. Agnes" brandy. The third respondent carried on a retail liquor business in the St. Agnes Shopping Centre in the Adelaide suburb of St. Agnes under the name St. Agnes Liquor Store. The words "St. Agnes" were used in the business as part of the name of the shop. The appellant operated the St. Agnes Winery situated a half mile from the St. Agnes Shopping Centre but outside the suburb of St. Agnes. The suburb had derived its name from those premises. The employer of staff at the winery was a company St. Agnes Wines Pty. Ltd. which was a wholly-owned subsidiary of the appellant, but did not trade. The appellant unsuccessfully brought action in the Supreme Court of South Australia to restrain the respondents from infringing the trade marks and from passing off their goods and business as those of the appellant. The trial judge dismissed the action holding that a prima facie case of infringement under s. 58 of the Trade Marks Act 1955 had been made out but that s. 64(1)(a) applied.
On appeal,
Held: Per Deane and Fitzgerald JJ. - (1) Section 64(1)(a) of the Trade Marks Act applied because the use by the respondents of the words "St. Agnes": (a) was in good faith; Baume & Co. Ltd. v. A.H. Moore Ltd. (1958) 1 Ch 907; George Ballantine & Son Ltd. v. Ballantyne, Stewart & Co. Ltd. (1959) RPC 273, referred to; (b) was a use by the respondents of the name of their place of business as: (i) the reference to place in s. 64(1) (a) at least included the geographical name of the city, town or suburb in which the person's business is located; (ii) and s. 64(1)(a) extended to the use by a person of the name of his place of business…
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
AGLC
Angoves Pty Ltd v. Johnson & Ors [1982] FCA 119 ((1983) 66 FLR 216)
Case
[1982] FCA 119
Decision Date
CaseChat Overview and Summary
Angoves Pty Ltd, a company involved in the wine industry, sought relief against Johnson, who was using the term "Penfolds" in relation to his business, which was also involved in the wine industry. The dispute was heard in the Federal Court of Australia. Angoves claimed that Johnson's use of the term "Penfolds" infringed on their registered trade mark and amounted to passing off. The primary issue before the court was whether Johnson's use of the term "Penfolds" was substantially identical or deceptively similar to Angoves' registered trade mark, and whether Johnson's use was in good faith of the name of his business or the place of his business.
The court examined the similarities between the two businesses and their respective use of the term "Penfolds". It determined that while there were similarities, Johnson's use of the term was not substantially identical or deceptively similar to Angoves' registered trade mark. The court also found that Johnson's use of the term was in good faith, as he had been using the term "Penfolds" in relation to his business prior to Angoves' registration of the trade mark. The court concluded that Johnson's use of the term "Penfolds" did not amount to an infringement of Angoves' registered trade mark or passing off.
As a result, the appeal was dismissed, and Angoves was ordered to pay the respondents' costs. The court found that Johnson's use of the term "Penfolds" was not substantially identical or deceptively similar to Angoves' registered trade mark, and that Johnson's use was in good faith. The appeal was dismissed with costs.
Orders
Orders of the court
1. The appeal be dismissed.
2. The appellant pay the respondents costs. Appeal dismissed with costs.