Angoves Pty Ltd v Johnson

[1982] FCA 119

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 Act 1955 ss.58(1), 62(1), 64(1)(a), 65, 96

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 as a trade mark, in the course of trade in relation to goods. Baume & Co. Ltd. v. A.H. Moore Ltd. (1958) 1 Ch 907; George Ballantine & Son Ltd. v. Ballantyne, Stewart & Co. Ltd. (1959) RPC 273; Parker-Knoll Ltd. v. Knoll International Britain (Furniture and Textiles) Ltd. (1961) RPC 346; (1962) RPC 265, applied.

Per Franki J. dissenting - The use of the name "St. Agnes Liquor Store" by the respondents in the relevant exhibits was not a use of the name of the respondents' place of business within s. 64(1)(a).

(2) Per Fitzgerald J. and semble per Deane J. - (a) If s. 58(1) does provide that use of the registered mark is an infringement, although not amounting to an infringement under s. 62(1), the relevant operation of s. 58(1) is confined to the use of the exact registered mark without addition or alteration. No such use or infringement occurred in this case. Mark Foy's Ltd. v. Davies Coop & Co. Ltd. (1956) 95 CLR 190; Shell Company of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 CLR 407, discussed.

(3) Per Franki J. - The appellant's action in passing off must fail because it had not established a sufficient reputation in the sense that the words "St. Agnes", when applied to products other than brandy, identified its products at the relevant time.

(4) Appeal dismissed.

HEARING

Sydney, 1981, December 8-9; 1982, June 18. #DATE 18:6:1982

APPEAL.

The appellant appealed from a judgment of the Supreme Court of South Australia dismissing an action by the appellant under the Trade Marks Act 1955 alleging infringement of its trade marks.

H.C. Williams Q.C. and S.H. Milazzo, for the appellant.

D.N. Angel Q.C. and S. Biggs, for the respondents.

Cur. adv. vult.

Solicitors for the appellant: Mouldens.

Solicitors for the respondents: Cleland & Co.

T.J. GINNANE

ORDER

1. The appeal be dismissed.

2. The appellant pay the respondents costs. Appeal dismissed with costs.

JUDGE1

The appellant, Angove's Proprietary Limited, sought to restrain the respondents from infringing certain registered trade marks and from passing off goods in which they deal as the appellant's goods and passing off their business as the appellant's business. The learned trial judge dismissed the action ((1981) 36 A.L.R. 487).

The appellant is the registered proprietor of the trade mark "St. Agnes" in Part A of the Register in respect of "brandy and wine" (No.A64,160), in Part D of the Register in respect of "beer, ale, and porter, mineral and aerated waters and other non-alcoholic drinks, syrups and other preparations for making beverages" (No. D165,255) and in Part D in respect of "wines, spirits and liqueurs" (No. D165,256). The first registration was effective from 1934 and the registrations in Part D were entered in 1963. The Register is that set up under s.14 of the Trade Marks Act 1955 ("the Act").

The appellant produces brandy and some other products. Its brandy is, and for many years has been, well known under the trade mark "St. Agnes" and it was admitted in the pleadings that that mark has become well known and distinctive of the appellant's brandy, but not that the mark was distinctive of any other product of the appellant.

The first two named respondents purchased a liquor store, which was known as "Bokara Liquor Store", sometime in 1975 and on 30 September 1976 they made an application to register a change of name of that business to "St. Agnes Liquor Store". The application was granted in October 1976. After June 1978 the business was carried on by the third named respondent. The two first named respondents are the directors of the third named respondent and carried on the business in partnership until 30 June 1978.

In 1959 a new suburb was created with the name "St. Agnes" and a modern shopping centre was built within that suburb. The respondents' liquor store is in that shopping centre. The shopping centre is known as the "St. Agnes Shopping Centre".

At all relevant times the appellant's main place of business was at Renmark, in South Australia, but it also carried on business about half a mile away from the respondents' liquor store in an area called Tea Tree Gully. The founder of the appellant's business, a Dr. Angove, had commenced business at Tea Tree Gully in the 1890's. The name "St. Agnes" was prominently displayed on an old tower on the appellant's premises at Tea Tree Gully.

At the time of the hearing this area was used by the appellant partly as an outlet for, and for warehousing, goods distributed wholesale by the company, partly for a public relations area for groups of visitors, and partly as a tasting area and retail shop for the sale of bottled alcoholic beverages. The area is of about 34 acres of which 18 acres are vineyards and 10 acres are scrub. Certain buildings belonging to the appellant are erected on this land.

Originally the appellant marketed various products under the mark "St. Agnes", including wines, but since 1950 it had not used St. Agnes in relation to any product other than brandy, except for some "nibble pieces", for example, sultanas and pretzels. A wholly owned subsidiary of the appellant, St. Agnes Wines Pty. Ltd., was incorporated as a limited company in 1931 and it became a proprietary company in 1963. However, this company has not traded for many years and its only activity is that of employing certain of the appellant's staff at the Tea Tree Gully premises. This subsidiary maintained an entry in the telephone directory under the name "St. Agnes Wines Pty. Ltd." and that name appeared on certain invoices and, to a very limited extent, elsewhere. After this action had been commenced some advertising took place of St. Agnes wines associated with the appellant's name.

I pass first to consider the question of infringement of trade marks.

In so far as this judgment depends on infringement of the marks registered in Part D, s.58 of the Act, which applies only to marks registered in Parts A and B, is not applicable. The right to obtain relief for the infringement of marks registered in Part D is provided by s.96 where the registered proprietor is given ". . . the right to obtain relief in respect of infringement of the mark in the manner provided by this Act". Section 65 provides:

"The relief which a court may grant in an action or proceeding for infringement of a registered trade mark includes an injunction (subject to such terms, if any, as the court thinks fit) and, except in the case of a trade mark registered in Part C of the Register, at the option of the plaintiff, either damages or an account of profits."

Section 62(1) provides:

"A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, uses a mark which is substantially identical with or deceptively similar to, the trade mark, in the course of trade, in relation to goods or services in respect of which the trade mark is registered."

In my opinion it is clear that the Court may grant an injunction restraining the infringement of a trade mark registered in Part D.

The case for the appellant in relation to the Part A registration was presented upon the basis that the respondents' use of the words "St. Agnes" in the name "St. Agnes Liquor Store" was a use of the mark itself and contravened the rights given by s.58 of the Act. Section 58(1) provides:

"Subject to this Act, the registration of a trade mark in Part A or Part B of the Register, if valid, gives to the registered proprietor of the trade mark the right to the exclusive use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act."

The appellant relied upon s.58 and did not seek to call in aid s.62 which deals with infringement by the use of ". . . a mark which is substantially identical with, or deceptively similar to, the trade mark. . .". In doing so it accepted the views of the trial judge on this point. The first question that arises is whether the use of the words "St. Agnes" in the phrase "St. Agnes Liquor Store" is a use of the trade mark "St. Agnes". In my opinion it follows from Mark Foy's Ltd v. Davies Coop and Co. Ltd (1956) 95 C.L.R. 190 that it is. In that case Williams J., with whom Dixon C.J. agreed, considered that an advertisement which used the words "Exacto cotton garments - Tub Happy Cotton Fresh Budget Wise" was an infringement of the registered trade mark "Tub Happy". It was said at p.202 that the defendants had used "the exact words of the plaintiff's trade mark so that the plaintiff need not rely on s.53". This is the position in the case before us. The case of Mark Foy's Ltd. v. Davies Coop and Co. Ltd. (supra) was concerned with the provisions of the Trade Marks Act 1905 but s.53 of that Act was in substantially similar terms to s.62 of the Act.

In The Shell Company of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 C.L.R. 407 Kitto J., with whose judgment Dixon C.J. and Owen J. agreed, considered the case of Mark Foy's Ltd. v. Davies Coop and Co. Ltd., (supra), and said at p.423: "The present Australian Act differs somewhat from its predecessor of 1905, but not, I think, in any material respect". I am therefore satisfied that, applying the views expressed in Mark Foy's Ltd. v. Davies Coop and Co. Ltd., if the words "St. Agnes Liquor Store" are used as a trade mark, a use of the trade mark "St. Agnes" has taken place.

The Shell Company of Australia Ltd. v. Esso Standard Oil (Australia) Ltd., supra, makes it clear, at p.422, that both in s.58(1) and in s.62(1) the use which is there referred to is limited to the use of a mark as a trade mark.

It is therefore necessary to decide whether the use of the words "St. Agnes Liquor Store" is use as a trade mark.

In the last mentioned case the question arose whether the use of certain figures in a television presentation was use as a trade mark. Kitto J. at p.425 said:

"With the aid of the definition of 'trade mark' in s.6 of the Act, the adverbial expression may be expanded so that the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown on to the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade?"

The statement of claim alleged infringement of the mark particularised as follows: (a) by the sale of goods in which the respondents deal in packages bearing the words "St. Agnes Liquor Store"; (b) by the promotion and advertising of the respondents' business and the goods in which they deal by the name "St. Agnes Liquor Store" both at their place of business and in newspapers circulating generally in South Australia; (c) by the purchase and sale of goods in which the respondents deal in the name "St. Agnes Liquor Store" and (d) by causing and permitting their premises to be described as "St. Agnes" simply.

Senior counsel for the appellant said that it was more concerned with advertising and that it complained particularly of two exhibits P5 and P7. P5 is a brown paper bag for containing a bottle. It was used to contain various bottles including wine. The bag is marked inter alia:

"St. Agnes Liquor Store St. Agnes Shopping Centre, St. Agnes 5097 phone [phone]."

The name of the store was in letters twice the size of the address and telephone number.

It was conceded by the respondents that the name "St. Agnes Liquor Store" was used as a trade mark on exhibit P5 in connection with liquor.

The evidence was that this bag was first used in the respondents' business in about 1977 and that it was continuously used until June 1980 when its use was discontinued. Mr. Johnson, manager and a director of the respondent company, gave evidence that the present intention was to use a bag, exhibit D.33. It is unnecessary to describe D33 in detail but it shows the suburb, name and address of various liquor stores associated in a buying group with the respondents' store. One store was shown as "ST. AGNES

St. Agnes Liquor Store,

St. Agnes Shopping Centre

Ph. 2646565"

Exhibit P7 was a feature article about the respondents' liquor store accompanied by a number of advertisements largely by people who were associating their advertisements with the opening of the store. There was also an advertisement by the St. Agnes Liquor Store bearing in large black letters the name, "St. Agnes Liquor Store", followed in somewhat smaller letters by "St. Agnes Shopping Centre, St. Agnes" and the telephone number. Thereafter details of certain products sold in that store were mentioned.

Senior counsel for the appellant said his client was not interested in pursuing the question of damages but it sought an injunction restraining generally the infringement of the trade mark and, in particular, an injunction restraining the use of the mark "St. Agnes" (a) as part of the respondents' trading name and advertising for the sale of alcoholic beverages and (b) as part of the trading name on their bags and invoices in respect of their trade in alcoholic beverages.

The learned trial judge held that he would not uphold the appellant's claim insofar as it may rest on s.62 of the Act but a prima facie case of infringement under s.58 had been made out. However he held that s.64(1)(a) of the Act applied.

Senior counsel for the respondents argued that the learned trial judge was correct in holding that s.64(1)(a) applied. Section 64(1)(a) of the Act provides:

"Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of a trade mark: (a) the use in good faith by a person of his own name or the name of his place of business or the name, or the name of the place of business, of any of his precedessors in business;".

Two questions arise in relation to s.64. They are whether that section extends to the use of the name of the business itself and, if so, whether the use was in good faith. It is appropriate to note that the case was not presented upon any basis that the use of the words "St. Agnes Liquor Store" was a use by the respondents of their own name within s.64(1)(a) and therefore it is not necessary for me to consider this question.

In my opinion the section does not authorise the use of the words "St. Agnes" in the name of the business "St. Agnes Liquor Store", at least as that name has been used in exhibits P5, P7 and D33. That name has added to it as the name of the place of business, "St. Agnes Shopping Centre, St. Agnes". I consider that "St. Agnes Liquor Store" is the name of the business, not the name of the place of business. However, I see no objection to the address of the respondents' store being stated by the words "St. Agnes Shopping Centre, St. Agnes".

The purpose of s.64(1)(a) is clearly to permit a person to fairly describe the name of his place of business. To hold that "St. Agnes Liquor Store" was the name of a place of business within s.64(1)(a) would involve accepting that a person may avoid infringement by adopting a business name which incorporates the words of a registered trade mark. In the present case it has to be borne in mind that the liquor store was first called the "Bokara Liquor Store" and that it was not called the "St. Agnes Liquor Store" until some years after the appellant's trade mark registrations were obtained.

The correct approach to s.64(1)(a) is illustrated by the judgment of McTiernan J. in F.H. Faulding & Co. Ltd. v. Imperial Chemical Industries etc Ltd. (1965) 112 C.L.R. 537. Passages to which I refer were not considered in the appeal in that case. McTiernan J. at pp.543 and 544 pointed out that s.64(1)(b), which protects use in good faith by a person of a description of his goods, was limited to that which is genuinely descriptive of the character or quality of the goods in connection with which it is used and where the use is purely for the purpose of description. A similar approach was taken in Mark Foy's Ltd. v. Davies Coop & Co. Ltd., supra, by Williams J. at p.202.

Courts have construed s.8(a) of the Trade Marks Act 1938 (U.K.) in a strict way and in accord with the approach adopted in the judgments of McTiernan J. and Williams J. to which I have just referred. Section 8(a) of the U.K. Act is in similar terms to s.64(1)(a) of the Australian Act.

Danckwerts J. in R.J. Reuter Coy. Ltd. v. Mulhens (1953) 70 R.P.C. 102 considered that section in a case where it was argued that it protected the use of "4711" as being the name and address of the defendant's factory in Cologne. There was evidence that the number 4711 was acquired when houses in Cologne were each given a number without regard to street numbers. It was submitted that the section protected the use of "4711", which was the registered trade mark of the plaintiff, not only by itself, but also in a form where it was used on a letter head by the defendant in association with a scroll device and a bell. Danckwerts J. said at p.114:

"As regards the contention that the number '4711' in conjunction with the scroll and bell was used bona fide as the name of the Defendants' firm or place of business, or that of their predecessors, it appears to me that the use of the number and device was not, and was not intended to be, simply a convenient way of giving the Defendants' name and address. It was in fact, and was intended to be, use of a trade mark referring to the Defendants' goods. Both the envelope and the letter give the Defendants' name and address in a fuller manner."

On appeal Evershed M.R., (1954) 1 Ch. 50 at p.83, agreed with Danckwerts J. and said:

"But the use here is not merely use of the number but the use of the number represented in a particular and characteristic way with the embellishment of the scroll and bell".

Birkett and Romer L.JJ. agreed with the judgment of Evershed M.R.

A similar approach was adopted by the Court of Appeal in George Ballantine and Son Ltd. v. Ballantyne Stewart and Coy. Ltd. (1959) R.P.C. 273 where the defence was rejected. In that case the defendant had used its full name on certain labels which are fully described in the judgment of the trial judge, LLoyd-Jacob J.,(1959) R.P.C. 47 at pp.48-49.

Lloyd-Jacob J at p.49 said:

"In the present case the Defendants cannot justify the presence of the representation of their name which is complained of as being required to identify their responsibility for marketing these goods, for their full title and address appears elsewhere on the labels and there in a form more appropriate for appreciation only on close scrutiny, such as would be fitting were precise identification of trade origin required by an observer."

On appeal Lord Evershed, with whom Romer and Pearce L.JJ. agreed, said that he agreed with the judgment of the trial judge and added "Upon the evidence before him indeed no other conclusion was in my judgment possible. . . ". Whilst this last case is, on one view, more relevant on the question of whether a name is used in good faith, it illustrates the restrictive approach where the courts in the United Kingdom have adopted in relation to the provisions of the equivalent of s.64(1)(a).

The judgment of Windeyer J. in Hy-Line Chicks Pty. Ltd. v. Swifte (1966) 115 C.L.R. 159 in relation to s.64(1)(a) was referred to by the trial judge. In that case his Honour pointed out that only s.64(1)(c) was relied upon by the defence but his Honour added by way of obiter dicta at p.161 ". . . the defendants are it seems to me entitled, by virtue of par.(a) of the sub-section, to describe their premises as the 'Hi-Line Poultry Farm and Hatchery', for it is the name of their place of business". His Honour indicated at p.164 that he proposed to make a somewhat unusual order which, inter alia, would contain:

". . . a declaration that the use by the defendants of the name 'Hi-Line Hatchery and Poultry Farm' or 'Swiftes' Hi-Line Hatchery and Poultry Farm' as the name of their place of business at Happy Valley in South Australia, and as the description of the business carried on there, does not constitute an infringement of the plaintiff's trade mark . . . "

In that case the defendants had conducted a poultry farm and hatchery under the name "Hi-Line Poultry Farm" since 1955, four years before the plaintiff's trade mark was registered. The name of the farm was later changed to "Hi-Line Hatchery and Poultry Farm". This hatchery and poultry farm was in a place called Happy Valley in South Australia and so far as appears from the judgment, there was no address or place of business by which it could be described more adequately than "Hi-Line Hatchery and Poultry Farm". It seems to me that there is a great difference between holding that the name "Hi-Line Hatchery and Poultry Farm" in a rural area is the name of a place of business to holding that the name "St. Agnes Liquor Store" situated at St. Agnes Shopping Centre, 1244 North East Rd., St. Agnes, 5097 is the name of a place of business.

I am disinclined to give a broad construction to s.64(1)(a). If this section provided a defence for the use of "St. Agnes Liquor Store" because it extended to protect the use of the name of the defendant's business, it would be equally open to the respondents to choose as their business name "St. Agnes Brandy Store" and to sell brandy not of appellant's manufacture or selection in that store. It would also mean that if a new suburb was created and given the same name as that of a widely known registered trade mark, a trader would be protected if he adopted the name of the suburb as his trade mark or as a significant part of his mark and used it in good faith in respect of goods for which the mark had been registered for many years and was widely known. For example, assume that a trade mark "Hilton" is registered in respect of manufactured tobacco and that for years this mark has been advertised and known throughout the length and breadth of Australia as identifying a particular brand of cigarettes, and assume then that a new suburb is created and that it is given the name "Hilton". Could a manufacturer of cigarettes, knowing of the registration and other relevant facts, manufacture and sell cigarettes under the name "Hilton" or use the name "Hilton Tobacco Company" for its company and rely upon s.64(1)(a) as a defence for an infringement action? In my opinion the section would not extend to such a case.

I have reached the conclusion that the use of the name "St. Agnes Liquor Store" by the respondents, at least in the exhibits which I have mentioned, is not a use of the name of the respondents' place of business. It is therefore unnecessary for me to consider whether the use of that name by the respondent was in good faith. However, I think that it is appropriate to deal somewhat superficially with that question. In my opinion, the proper approach is to test the question of good faith only against the rights of the registered proprietor of the trade mark alleged to be infringed. The name "St. Agnes Wines Pty. Ltd." is that of a subsidiary company of the registered proprietor and that company was not a registered user of the trade mark "St. Agnes". The appellant is not carrying on business under the name "St. Agnes Wines Pty. Ltd.".

At least since 1973 the entries in the telephone book for the appellant at Tea Tree Gully showed its address as 1320 North East Road, Tea Tree Gully and its telephone number as 264 2366. Entries for "St. Agnes Wines Pty. Ltd." at Tea Tree Gully showed exactly the same address and the same telephone number. One can understand that some confusion might be expected to arise when the same address and telephone number appeared in the telephone book for the appellant and its subsidiary, not because of any similarity between the name "St. Agnes Liquor Store" and the appellant's name or trade mark but because of confusion with the name of the appellant's subsidiary. Confusion between the name of a subsidiary of the appellant and the name of a business carried on by the respondent does not appear to me to be relevant in considering whether the respondents conduct was in good faith.

As I have said s.58 cannot found a claim for infringement of a registration in Part D.

I have had the opportunity of reading the judgments in draft form of Deane and Fitzgerald JJ. who have reached the conclusion that the use by the respondent of the name "St. Agnes Liquor Store" is a use of that name as the name of their place of business. The question of whether any relief should be granted in relation to registrations in Part D was not pressed strenuously by the appellant and little argument was directed to the question of infringement of those registrations. There is very little authority concerning Part D registrations. The learned trial Judge took the view that the use of the name "St. Agnes Liquor Store" as a trade mark was not the use of a mark which was substantially identical with or deceptively similar to the trade mark "St. Agnes". In the circumstances it appears undesirable for me to express any opinion on the question of infringement of the registrations in Part D.

In summary I consider that the respondents have infringed registered trade mark A64, 160.

I pass now to consider the question of passing off. The basis of a passing off action is a false representation. See Warnink v. Townend & Sons (Hull) Ltd. (1979) A.C. 731 at p.742. The misrepresentation alleged in this appeal is that, by use of the name "St. Agnes", the respondents have passed off their goods or their business as the goods or the business of the appellant. To succeed in a passing off action a plaintiff must establish that the words it seeks to protect are distinctive of its business or its goods or that those words have acquired a reputation, or, as it is often put, a secondary meaning indicating to a sufficient section of the relevant public that the business carried on, or the goods sold, under those words have gained a reputation which distinguishes that business or those goods from the business or goods of others. The point was expressed by the Privy Council in Cadbury-Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd. (1981) 1 W.L.R. 193 at p.205 as follows:

"It is only if a plaintiff can establish that a defendant has invaded his 'intangible property right' in his product by misappropriating descriptions which have become recognised by the market as distinctive of the product that the law will permit competition to be restricted."

The critical importance of establishing this reputation is illustrated by the judgment of the High Court in W. and A. Gilbey Ltd. v. Continental Liqueurs Pty. Ltd. (1960) 103 C.L.R. 406.

In my opinion the relevant date at which a reputation must exist is the date when the conduct of which complaint is made first occurred, Cadbury-Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd. (supra) at p.204. If the appellant is to succeed it must show that in the last quarter of 1977 it had such a reputation in the words "St. Agnes" that a sufficient number of relevant persons would be likely to confuse the respondent's business or goods with its business.

There is very little evidence that the appellant had a reputation at the relevant date in the words "St. Agnes" except for brandy. Since about 1950 the appellant has deliberately restricted the use of the words "St. Agnes" to brandy for the purpose of enhancing their value in connection with brandy. There is no evidence that the respondents have passed off, as the appellant's brandy, the brandy of any other manufacturer or trader. It is not necessary to consider whether St. Agnes Wines Pty. Ltd. might have any sufficient relevant reputation for goods other than brandy. A wholly owned subsidiary of the appellant is a different company and, in my opinion, at least in this case, the appellant does not gain anything from any reputation that subsidiary might have in the words "St. Agnes". In any event I do not consider that at the relevant time St. Agnes Wines Pty. Ltd. had any sufficient reputation in the words "St. Agnes" and indeed it is not a party to these proceedings.

The essential characteristics to found an action for passing off are set out in Warnink v. Townend & Sons Ltd. (supra) at p.742 as:

"(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."

I have reached the conclusion that the appellant has not shown a sufficient reputation in the sense that the words "St. Agnes", when applied to products other than brandy, identified its products at the relevant time. Therefore I consider that it has failed to show any misrepresentation and so it is unnecessary to consider whether the other essentials of a passing off action have been established. The learned trial judge dismissed the passing off claim on the ground that it had not been shown that the respondents' use of the words St. Agnes was inherently likely to deceive and that, in any event, the appellant had not established the likelihood of loss or injury to its business.

The respondents advanced other defences, namely acquiescence, delay and what might be called "unclean hands". I have considered each of these defences and I consider that they all fail.

I would uphold the appeal so far as it relates to infringement of the trade mark registered in Part A. Because of the views expressed by Deane and Fitzgerald JJ. it is unnecessary for me to deal further with the matter.

JUDGE2

In late 1976, Mr. and Mrs. Johnson, who are the first and second respondents, changed the name of their retail liquor business in the St. Agnes Shopping Centre in the Adelaide suburb of St. Agnes from the Bokara Liquor Store to the St. Agnes Liquor Store. They carried on the business under the new name until June, 1978. Since then, the business has been carried on, under that name, by the third respondent, Eclar Investments Pty. Limited, which is a company of which Mr. and Mrs. Johnson are directors. Nothing turns, for the purposes of the appeal, upon the distinction between Mr. and Mrs. Johnson on the one hand and the third respondent on the other and it is common ground that, if the appellant is entitled to relief against any one of them, it is entitled to relief against them all. I shall, on occasion, refer to "the respondents" in circumstances where precision would require separate reference to Mr. and Mrs. Johnson in respect of the period up to 30 June, 1978 and to the third respondent in respect of the period subsequent to that date. I shall also, on occasion, refer to "St. Agnes Liquor Store" as being the "name of the respondents' shop" in the sense that the name of the shop embraces the name of the business carried on in and from the shop premises as well as being appropriate, in some circumstances, to describe the actual premises.

The appellant is Angove's Proprietary Limited. It is the registered proprietor of the trade mark "St. Agnes" in Part A of the Register in respect of brandy and wine and in Part D in respect of a very wide variety of alcoholic and non-alcoholic liquors "and syrups and other preparations for making beverages". It produces wines and spirits including the well-known "St. Agnes" brand of brandy which is the only product in respect of which it uses "St. Agnes" as a brand name. It complains that the respondents' use of "St. Agnes", as part of the name of their shop, constitutes, in the circumstances, an infringement of its trade marks and a passing off of the respondents' business as or as being connected with the appellant's and of goods which the respondents sell in their liquor store as the appellant's goods. It should be mentioned that the appellant's business includes cellar door sales, restricted to its own products and to a brand of Scotch Whiskey and a brand of London gin of which it is the distributor, at premises which it owns up the road from the St. Agnes Shopping Centre but outside the suburb of St. Agnes. Those premises are known as the "St. Agnes Winery" and include a tower which displays the name "St. Agnes" and which is a local landmark. It is plain that the suburb, which was named in 1959, derived its name from those premises and not vice versa.

The use by the respondents of "St. Agnes" has been restricted to their use of it as part of the name of their shop. Their use of that name has taken a variety of forms. The name has appeared on the shop premises. It has appeared in advertisements. It has appeared on brown paper bags in which products sold are wrapped. It has appeared in the telephone book. All these uses are uses which one would expect to be made of the name of a shop which consists of a combination of words indicating the nature of the business and the name of the particular metroplitan suburb in which it is located.

Cox J. found that the selection of the name "St. Agnes Liquor Store" was prompted by the obvious circumstance that the respondents carried on a liquor store in the St. Agnes Shopping Centre in the suburb of St. Agnes. Mr. and Mrs. Johnson were aware, before they adopted it, that the appellant objected to their use of that name. His Honour found, however, that they did not adopt the name in the hope or expectation that there would be confusion or deception in the sense either that their customers or others would believe that goods which they sold which were not products of the appellant were connected with the appellant or that their business was a branch of, or otherwise connected with, the appellant's business.

It was not suggested that the customers of the respondents' liquor shop were drawn from other than the Adelaide area or that they were unaware of the fact that the actual premises in and from which the respondents carried on their retail liquor business were located in the suburb of St. Agnes. To such customers, the name "St. Agnes Liquor Store" would be an obvious reference to the nature of the business and to the suburb in which it was located. If the respondents' use of the name of that suburb to describe their retail business and their subsequent use of that designation of their business in relation to the goods which they sold constituted infringement of the appellant's trade marks, it is difficult to see why the appellant would not be entitled to prevent a similar use of the name of the suburb by any local grocery, department store, pharmacy, hotel, service station or other business which sold any of the wide variety of goods in respect of which the appellant's marks were registered. The entitlement to the exclusive use of a trade mark in relation to the goods in respect of which the trade mark was registered would, for practical purposes, become, if the trade mark corresponded to the name of a city, town or suburb, an entitlement to prevent any local retail outlet from using the name of the city, town or suburb to identify itself if it happened to sell any of the goods in respect of which the trade mark was registered and if, as would seem inevitable, the geographically descriptive name of the retail outlet would, as a matter of course, be used in relation to the goods it sold.

Section 64(1)(a) of the Trade Marks Act, 1955 ("the Act") provides that, notwithstanding anything contained in the Act, the use in good faith by a person of the name of his place of business does not constitute an infringement of trade mark. The above-mentioned findings of Cox J. as to the reasons which prompted Mr. and Mrs. Johnson to call their shop the "St. Agnes Liquor Store" were, in my view, correct and warranted the conclusion which he reached that the naming of the shop after the shopping centre and suburb in which it was situated was both readily understandable and in good faith. As Fitzgerald J. demonstrates in his judgment, the same can be said of the use which the respondents subsequently made of the name in the course of their business. It follows that the respondents' use of "St. Agnes" enjoys the protection of s.64(1)(a) of the Act if it was a use, within the meaning of that clause, by the respondents of the name of their place of business. In my view, it was. Subject to what follows, I agree with the reasons for that conclusion which appear in the judgment of Fitzgerald J.

Two general comments should be made as to the provisions of s.64(1)(a). The first is that the clause refers to the "name" of a person's "place" of business. In my view, the reference to "place" in the clause at least includes the geographical name of the city, town or suburb in which the person's business is located. The second is that s.64(1)(a) extends to use by a person of the name of his place of business as a trade mark, in the course of trade, in relation to goods: if it did not, the clause would be without practical content.

The name "St. Agnes Liquor Store", in the circumstances of the present case, is, in my view, the equivalent of the "Liquor Store at St. Agnes" in the same way as the names of the other shops to which Cox J. referred are a convenient and sensible combination of the nature of the relevant business and the name of the place where it is situated. In the particular circumstances of this case, the name of the suburb "St. Agnes" has been used by the respondents as a geographical description of their business through which goods are offered for sale and sold rather than as, in itself, describing or identifying the actual goods sold or offered for sale. While the composite name of the business, including the name of the suburb, is admitted to have been used as a trade mark in relation to relevant goods, the actual name of the suburb in the composite name is used as descriptive of the business. Such a use is a use of the name of the respondents' place of business, namely, the name of the suburb in which that business is situated, as such. The present case does not raise the type of problem which would be involved if a manufacturer or distributor of goods used the actual name of the place where his factory or distribution base was situated to describe or identify not the factory or base in or from which the goods were manufactured or distributed but the goods themselves. Nor does the view that the provisions of s.64(1)(a) apply in the circumstances of the present case open floodgates holding back a scheming shoal of dishonest traders. The provisions of s.64(1)(a) are only available when the suggested infringer has acted in good faith. Even when s.64(1)(a) does apply, the law of passing off and the requirements of statutory provisions such as s.52 of the Trade Practices Act, 1974 are not excluded.

The question of infringement must be approached in the context of the provisions of s.64(1)(a). It was common ground that a conclusion that the respondents' use of "St. Agnes" enjoyed the protection of those provisions would dispose of the appellant's claim for infringement. It is, in the circumstances, unnecessary that I form or express any concluded view as to whether, but for the provisions of s.64(1)(a), the actions of the respondents would have constituted infringement of the appellant's trade marks and I refrain from so doing. That hypothetical question raises three matters of some general importance which are best left to be resolved in a case where they necessarily arise for decision but in respect of which I would presently make some tentative comments. The first of those three matters concerns the relationship between s.58 and s.62(1) of the Act. It would seem, at least in so far as this Court is concerned, that s.62(1) cannot be regarded as definitive of what constitutes infringement of a registered trade mark but should be seen as merely expansive, at least in so far as trade marks registered in Part A or Part B of the Register are concerned, of a primary denotation or definition of infringement implicit in s.58. On this approach, with which I have considerable difficulty, s.62(1) is "an appendage" to s.58 and has, as its primary function, the widening of the denotation of "infringement" contained in s.58 (see Mark Foy's Limited v. Davies Coop. & Co. Limited (1956) 95 C.L.R. 190 at p. 204 and The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd. (1963) 109 C.L.R. 407 at p. 423). The second matter is whether the use of the words which comprise the registered trade mark as part of a trade mark containing both them and other words, constitutes infringement under s.58. In that regard, it is relevant to note that the use of the words "Tub Happy" in Mark Foy's Limited v. Davies Coop. & Co. Limited (supra) was a use of those words themselves as a trade mark and not simply a use of those words as part of a larger trade mark (see, ibid, at pp. 204-205). Acceptance of the proposition that the use of a number of words as a trade mark with respect to goods necessarily involves, for the purposes of an infringement action, a use of each of those words or each group of them as a trade mark would, on my understanding of the law, constitute a significant breaking of new ground which would have some surprising consequences (e.g., if the words used as a trade mark were "One Thousand Two Hundred and Thirty Four", there would, for the purposes of infringement, be a use as a trade mark of each of the words involved and of each group of them). The third matter is whether, if it were necessary for the appellant to call the provisions of s.62(1)(a) in aid, the name "St. Agnes Liquor Store" was, when used to designate a shop from which relevant goods had been or could be purchased, substantially identical with or deceptively similar to the registered trade mark "St. Agnes". On that third question, I can, as presently advised, see considerable force in the reasoning which led Cox J. to conclude that it could not.

As regards the appellant's claim for passing off, I agree, for the reasons which he gives, with the conclusion of Fitzgerald J. that it was correctly dismissed. It is unnecessary that I express any view in respect of the special defences which were relied upon by the respondents and which are referred to in the judgment of Cox J. in the Supreme Court and in the judgments of the other members of this Court.

I would dismiss the appeal with costs.

JUDGE3

This is an appeal from a judgment of the Supreme Court of South Australia dismissing an action brought by the appellant against the respondents. The appellant seeks injunctions restraining generally the infringement of the appellant's registered trade mark "St. Agnes" and, in particular, an injunction restraining the use of the mark "St Agnes" (a) as part of the respondents' trading name in advertising for the sale of alcoholic beverages and (b) as part of the respondents' trading name on their bags and invoices in respect of their trade in alcoholic beverages. A further injunction is sought to restrain the respondents from passing off their goods and their business as those of the appellant, and in particular from including the words "St. Agnes" in the trading name of the respondents' liquor store. Ancillary orders are sought with respect to obliteration or modification but a claim for damages was not pursued. The findings of primary fact by the learned trial judge, Cox J., are not challenged, and the issues on this appeal are confined to the inferences to the drawn from those primary facts and to questions of law.

The appellant is the proprietor of the trade mark "St. Agnes", which is registered in respect of brandy and wine in Part A of the Register, and also as a defensive mark in Part D of the Register in respect of "wines, spirits and liquers" and "beer, ale and porter, mineral and aerated waters and other non-alcoholic drinks, and syrups and other preparations for making beverages". Both parties accepted that if the appellant's trade mark registered in Part A of the Register is being infringed so are its identical defensive trade marks registered in Part D, and that if the appellant established a right to relief in respect of the former it is entitled to relief in respect of the latter, but not otherwise.

The appellant produces and markets wines and spirits including "St. Agnes Brandy". Its principal place of business is at Renmark, in South Australia, and it is there that it produces its brandy and other spirits and most of its wine. The appellant also owns premises on the North East Road at Tea Tree Gully near Adelaide. It was on the site of these premises that, in the 1890's,the founder of the appellant's business, Dr. Angove, originally established a winery and distillery. A small quantity of wine is still produced there, but otherwise the premises are now used by the appellant as a site for the warehousing and distribution of its products and as a tasting room and retail shop. To quote from the judgment of the learned primary judge, the appellant's "retail sales outlet . . . is of the type and set-up commonly found in wine-making areas for the purpose of promoting cellar-door sales". The appellant's sales there are restricted to its own products and a brand of Scotch whiskey and a brand of London gin for which it is the local distributor. The appellant trades at Tea Tree Gully under its own name. The premises there include an old tower which is a district landmark and has, for many years, displayed in prominent letters the name "St. Agnes".

Originally, "St. Agnes" was used generally as a brand name by the appellant. However, for the past 30 years, the appellant's use of "St. Agnes" as a brand name has been confined to brandy. It was admitted in the pleadings that the trade mark had become well-known and distinctive of the appellant's brandy but not of any of its other products. A wholly owned subsidiary company of the appellant continues to exist under the name "St. Agnes Wines Pty Limited". The principal activity of the subsidiary company, which does not trade, is to act as the employer of staff at the Tea Tree Gully premises. Its name appeared, at relevant times, on signs within the premises at Tea Tree Gully, and in telephone books; there was an unresolved conflict of evidence concerning the visibility of a sign bearing its name outside the premises prior to a vine being cut back after the present dispute was underway. After this action was commenced, its name was used on occasions in the appellant's advertising, and on invoices in respect of goods supplied by the appellant from the Tea Tree Gully premises. The foregoing constitutes, on the evidence, a comprehensive summary of the appellant's use of "St. Agnes" in the course of trade.

There is no doubt but that the appellant enjoys, and at all material times enjoyed, a substantial goodwill in respect of its brandy by reference to the reputation enjoyed by that product under the brand name "St. Agnes". The learned primary judge, in his careful judgment, did not make any express finding on the question whether the appellant has at any relevant time otherwise had any goodwill by reference to the name "St. Agnes". Consideration of the evidence leads me to conclude that the appellant failed to establish that the name "St. Agnes" was connected by reputation to its business generally, i.e. as a trading name as distinct from the brand name of its brandy. Even if attention is confined to its trading activities at Tea Tree Gully it was not, I think, established that the name St. Agnes Wines Pty Ltd, or St. Agnes Wines, is a name associated by reputation in any significant way with the appellant's trading activities.

The real source for potential confusion in respect of this aspect of the matter is that, perhaps for a variety of reasons including no doubt the name on the tower, the appellant's premises at Tea Tree Gully were and are known as "St. Agnes", sharing that name, as a place name, with a nearby suburb. In that context it might be said that the appellant's general trade at Tea Tree Gully is associated with "St. Agnes"; that is, as the place at which the trade is carried on. However, as a matter of deliberate market strategy, the appellant confines its use of "St. Agnes" to use as a brand name for one of its products, its brandy, and has done so for a number of years.

In 1959, the local District Council created a new suburb in the vicinity of, but not including, the appellant's premises at Tea Tree Gully. For reasons which were obviously related to the appellant and its distinctive premises, the Council called the suburb "St. Agnes". The suburb of St. Agnes is now a typical modern suburb. Within the suburb, on North East Road some half mile from the appellant's Tea Tree Gully premises, a modern shopping centre has been established. Not surprisingly, it is known as the "St. Agnes Shopping Centre". Within it are a number of shops whose names include "St. Agnes". There are "St. Agnes Cycles", "St. Agnes Dry Cleaners", "St. Agnes Toy Shop", "St. Agnes Chemist" and "St. Agnes Fish Shop". There is also the "St. Agnes Liquor Store".

The original liquor store in the St. Agnes Shopping Centre was called the Bokara Liquor Store. In 1975, it was leased to the first two respondents, Mr and Mrs Johnson, who subsequently purchased it. It was then situated in the central mall of the shopping centre. At the end of 1976, Mr and Mrs Johnson changed the name of that business to "St. Agnes Liquor Store". A year later, they moved to larger premises on the outside of the shopping centre with an entrance from North East Road. The business has thrived. In contrast to the appellant's business at Tea Tree Gully, the respondents' business is, in the words of the learned primary judge, "a typical modern liquor store . . . carrying a very large stock of all kinds and brands of liquor". The products advertised and sold include the appellant's "St. Agnes" brandy. However, a great part of the respondents' stock consists of the products of manufacturers other than the appellant. Since June 1978, the respondents' business has been carried on by the third respondent, Eclar Investments Pty Limited, a company of which Mr and Mrs Johnson are directors. No question was raised as to the propriety of granting relief, if otherwise appropriate, against all three respondents. Nor was any suggestion made that, in considering the conduct of the respondents, a distinction should be drawn between Mr and Mrs Johnson on the one hand and their company on the other.

Prior to the respondents changing the name of their business, the appellant learned of the respondents' proposal and wrote to them, drawing attention to its trade mark rights and asking the respondents not to infringe them.

The evidence of Mr and Mrs Johnson was accepted by the learned primary judge, whose findings with respect to the adoption by the respondents of the name "St. Agnes Liquor Store" may be summarized as follows:

(i) the previous name of the business, "Bokara Liquor Store", was genuinely and reasonably considered to be unsatisfactory by the respondents;

(ii) the name "St. Agnes Liquor Store" selected by the respondents was both appropriate and the obvious choice having regard to the nature and location of the business;
(iii) the respondents were unaware of the existence of the appellant's subsidiary, St. Agnes Wines Pty Ltd, that it was the subject of an entry in the telephone book, or that there was any reference to it on signs at the appellant's Tea Tree Gully premises.

(iv) however, the respondents were aware : (a) of the appellant's most popular product, "St. Agnes" brandy (in relation to which they conducted a substantial trade) and its good reputation;

(b) that the appellant's "winery was a little way up the road"; and

(c) that the appellant objected to their proposed use of the business name "St. Agnes Liquor Store".

Having regard to the proximity of the respective businesses, and that both involved the retail sale of alcoholic liquors, the respondents must also have known of the nature of the appellant's business and of the name "St. Agnes" prominently displayed on the tower at the appellant's premises. However, I accept the learned primary judge's conclusion that, when they changed the name of their business to St. Agnes Liquor Store, the respondents "had no apprehension of any significant confusion between the two businesses . . . and had no expectation or intention of diverting custom from the (appellant) to themselves or of otherwise damaging the (appellant's) goodwill". Indeed, in my view, having regard to the appellant's lack of a general trading reputation in the name "St. Agnes", the respondents assessment was readily understandable.

Despite protests by the appellant, the respondents continue to use "St. Agnes Liquor Store" in connexion with their business and the products sold; it is the name under which the respondents purchase and sell the products in which they deal; and it is used in their apparently substantial advertising. Frequently, the name of the business is used in conjunction with the name of the shopping centre and the name of the suburb; e.g. "St. Agnes Liquor Store, St. Agnes Shopping Centre, St. Agnes". For three years the respondents used paper bags with "St. Agnes Liquor Store" printed on them as wrapping for the goods sold in their store, but since about June 1980 they have used instead the bags of a well-known collective purchasing group, "Karana", of which they are members. Signs inside and outside the store refer both to "St. Agnes Liquor Store" and "Karana Liquor Store". The respondents' delivery vehicles, which (coincidentally as the learned primary judge found) bear some superficial resemblance to the appellant's vehicles, carry the name "St. Agnes Liquor Store".

Some confusion occurred and the appellant took steps to bring the details of it to the respondents' attention. About a hundred specific incidents extending from December 1976 to January 1981 were established by the appellant calling as witnesses two employees who kept a record of the incidents. By far the most common example was a telephone call to the appellant's Tea Tree Gully premises asking for the respondents' liquor store. Only a few incidents over the entire period were actually shown to involve persons who thought that there was a connexion between the two businesses. The testimony of Mr Johnston, given under cross-examination by the appellant's senior counsel indicates that the respondents were initially unaware of St Agnes Wines Pty Ltd and thought that the confusion was "between the name St. Agnes as part of St. Agnes Brandy and the name of (the respondents') store". Later, they became aware of the name St. Agnes Wines Pty Ltd in the telephone book and that that entry was of a considerable standing.

The recorded confusion commenced in December 1976. The name of the respondents' business was not altered to "St. Agnes Liquor Store" until the end of 1976 and the new name did not appear in the telephone directory until the 1977-1978 edition in which it was placed in the white pages in ordinary lower-case type. The name "St. Agnes Wines Pty Ltd" has been in the directory for a number of years and has throughout appeared in the white pages in block letters. To quote the learned primary judge:

". . . the rate of such mistakes noted by the plaintiff has steadily decreased since 1977. I expect that it will continue to do so, having in mind the assurance by the defendants' counsel that his clients have arranged for their white page telephone book entry to be printed in block letters in future editions."

The entries in the telephone book cannot totally explain the proven confusion. For example, letters correctly addressed were misdelivered. The most the appellant could hope to derive from the evidence which it led of the instances of confusion which it recorded was that there was a potential for confusion which, whether because of carelessness or for some other reason, on occasion matured into actual confusion.

His Honour also said: "It is not to be taken for granted that a similar number of people made the mistake of going to or telephoning the liquor store when they really wanted the winery. I accept the evidence of the defendants that such incidents were very few."

The learned primary judge, whilst recognizing the possibility that the instances established might be representative of a more wide-spread confusion, nonetheless considered that there was no significant confusion or likelihood of confusion. I respectfully agree.

Further, the evidence of confusion is quite consistent with the view which I have earlier indicated that the appellant did not establish that any significant connexion exists between the name "St. Agnes" and its general trading as distinct from its "St. Agnes" brandy. At most it showed that some business might flow to it at Tea Tree Gully by reason of the entry of the name "St. Agnes Wines Pty Ltd" in the telephone book but there was nothing to indicate that business from that source is of any magnitude. The trading reputation connected with the name "St. Agnes" in connexion with the general retail sale of liquor is that built up by the respondents. The respondents were not shown to have derived benefit by reason of persons associating the two businesses, nor was it shown that that was likely. Nor was there any basis for finding that anyone at all was confused or deceived into the belief that the respondents were other than mere retailers of any of the applicant's products which they happened to sell.

In Ballantine v. Ballantyne (supra), Lloyd-Jacobs J. at first instance expressed the test of whether a use is bona fide as being whether the name used was "innocently applied to the goods or used in relation to the goods without the intention to mislead or confuse others or to attract another trader's goodwill".

". . . What has to be considered in the deliberate and avowed use of the name in a form rightly to be taken as a brand name and thus to identify the goods with any others with which that brand name has become associated in the public mind. Such use could only have been innocently embarked upon, in the sense that its potentiality for deceiving or confusing purchasers and thus affecting another's goodwill was not appreciated by someone who is ignorant of the conditions in the market and of the state of the Trade Marks Register.
. . .

. . . I entertain no doubt that Mr H.A. Hillman was aware before the introduction upon the export market of the defendant's label A, that "Ballantine's" was a brand name well known in the market as identifying the goods of the Plaintiffs, and I find it impossible to believe that he did not so inform his brother at the latest when he returned to England and reported his market survey. In the light of such knowledge, the adoption of any of the labels complained of, tending as their use inevitably must, to the identification of the goods to which they were applied as being 'Ballantyne's', was not a bona fide use of the corporate name of the Defendants. It was not accordingly saved by s.8(a) from being an infringement of registered Trade Mark."

On appeal Evershed M.R., with whom Romber and Pearce LJJ agreed, expressed the view that on the evidence no other conclusion was possible.

In Steiner Products v. Willy Steiner (supra), Buckley J. referred to both Baume v. Moore and Ballantine v. Ballantyne and said at pages 361 and 362.

"The distinction I think lay in what one finds in the passage which I have read from the judgment of Lloyd-Jacob J., namely, the fact that, at the time that they made use of their corporate name in that way, the defendants were to be taken to have known of the existence of the plaintiffs' mark and it was of such character that their use of their own corporate name as a mark for their product would be liable to cause confusion. In those circumstances, the Court inferred that the use of the corporate name in that was was not a bona fide use of the name. So although the use of a name as a mark to distinguish the goods may be a bona fide use of the name, one has to consider the circumstances surrounding that use to see whether in fact it is a bona fide use of the name within the terms and contemplation of the sub-section."

He went on to hold that in that case the user was not in good faith, referring to the defendant's knowledge of the existence of the plaintiff's registered trade mark and to the fact that the defendant's name was used not only as a mark in respect of the goods but otherwise appeared on the product by way of identification of the manufacturer.

No reference was made in Steiner Products v. Willy Steiner and to Parker-Knoll v. Knoll International (supra) which, like the other three English cases which I have referred to, concerned the use of a brand name in respect of goods of the same kind as those in respect of which the plaintiff's trade mark was registered. Further, none of the English cases dealt with the question of continuing user after confusion which had not been anticipated was found to occur.

In the House of Lords, in Parker-Knoll v. Knoll International only Lord Denning referred to the meaning of 'bona fide'. At page 275, after referring to the history of the English equivalent to s.64(1)(a), his Lordship said:

"In the light of this history, it is plain that Parliament has deliberately preserved the right of a man bona fide to use his own name as a trade mark in relation to his goods. His exercise of this right may cause confusion, but no matter. So long as he makes no false representation, he is safe. This right is not confined to his use of his own name as the name of his business (for example, over his shop front) but extends also to his use of it as a mark on his goods (for example, by putting it on a label). And "bona fide" means what it says. It means honestly in good faith. So that the section means that it is no infringement for any person honestly to use his own name, in relation to his goods, so long as he has no intention to deceive anybody and no intention to make use of the goodwill which has been acquired by another trader. I find myself in full agreement with the judgment of Danckwerts, J., in Baume & Co Ltd v. A.H. Moore Ltd (1958) Ch. 137, affirmed as he was on this point by the Court of Appeal (1958) Ch. 907.

Applying this interpretation, it seems to me that Knoll International Limited are entitled to the protection of s.8. They were absolutely honest throughout. Their use of their own name was entirely bona fide. They made no false representation at all. It may have been likely to cause confusion, but this must be endured, lest the plaintiffs be allowed an unfair monopoly of the name KNOLL. The protection extends to the defendants' use of their own name, "Knoll International Limited", and also to the natural abbreviation of it to "Knoll International" omitting the word "Limited". But I would not extend the protection so as to authorise the further abbreviation to "Knoll" alone without the word "International". The user which is protected is the honest user of a man's ordinary name - the name by which he is usually known. A further abbreviation, which reduces it to less than his ordinary name, is not protected if the likelihood of confusion is thereby increased.

Upon this part of this case, therefore, I find myself in agreement with the Court of Appeal."

In his judgment in the Court of Appeal in the same case, Upjohn LJ, with whom Pearson LJ and it seems Lord Evershed MR agreed, referred on two occasions to the views of the Court of Appeal in Baume v. Moore (supra) as being "provisional" (see pages 363 and 364), described the construction adopted by the Court in that case as one which was in his opinion "very favourable to the registered proprietor" (page 364), and said at page 363:

"I cannot myself agree with Mr Tookey's submission that a user ceases to be bona fide when likelihood of deception is brought to the notice of the alleged infringer; that would deprive the section of its plainly avowed object of protecting the person using his name or that of his predecessor."

In Hy-Line Chicks v. Swifte (supra), Windeyer J. seems plainly to have considered (see page 161) that s.64(1)(a) entitled the defendants to continue to use a name which they had been using prior to the registration of the plaintiff's trade mark. It does not seem to have occurred to his Honour that the user would cease to be in good faith if they became aware that confusion was occurring. On the contrary, at page 161 and 164 he said:

"That there is a possibility of confusion in the concurrent use of the same word in the same field, although for different purposes, I do not doubt. But this is no reason for depriving the defendants of their right to sell chicken; or of their right to call their farm by the name they had called it before the plaintiff adopted the same name as its trade mark for chicken; or of their rights to describe chickens from their farm as from their farm."

In Cochrane v. Macneish (1896) A.C. 225, the respondents sold their product as "Club Soda", a registered trade mark of the appellant. Lord Morris, in delivering the opinion of the Privy Council, said at pages 230 and 231:

"The respondents erred, unwittingly at first. But as they persisted in their error after their attention was called to the fact that they were infringing the appellant's rights, their conduct in the eye of the law amounts to fraud, and they must be held responsible for the consequences."

In Ronson Products Ltd v. James Ronson Pty Ltd (No. 2), (1957) V.R. 731, Martin J. referred to Cochrane v. Macneish (supra), and said at page 737:

"From some time in 1951 he knew that the plaintiff was objecting to the use of the name "Ronson" by his company and persistence in that use after knowledge amounts to fraud in the eye of the law."

In the same case, Sholl J. said at pp. 738-739:

"Martin J., however, has pointed out that even if a trade name is innocently come by it may be fraudulent to continue to use it on discovering that its use is likely to deceive the public to the detriment of another trader whose business is already identified with the same or similar name. That statement of the law is, of course, consistent with both principle and authority. But it cannot be asserted that in every case where A is using a name which has an established reputation in connection with his business, so that in a proper case he would be entitled to protection in relation to it, it will be fraudulent for B who has independently and in good faith adopted the same or similar name in connexion with his own business, to continue to use it on discovering the position in regard to A. Whether it will be fraudulent or not to do so must depend upon the answer to the question whether or not there was a genuine likelihood of deception of the public and consequent detriment to A. Unless there is, I cannot see why B's genuine business - which ex-hypothesis he has honestly established under or in association with the challenged name - should be interfered with and perhaps even destroyed, on the complaint of A."

No doubt, s.64(1) may appropriately be regarded as a qualification of the provisions which define what constitutes infringement, including s.62(1) which speaks, inter alia, of a mark which is "deceptively similar" to a registered trade mark. Thus, by virtue of s.64(1), use of even a "deceptively similar" mark will not constitute an infringement if, other conditions being satisfied, the deceptively similar mark is used in good faith. It does not, however, follow that even in such a context knowledge of confusion or a belief in the likelihood of confusion can be excluded from a consideration of "good faith". Use of a mark which is "deceptively similar" to a registered trade mark is not necessarily likely to cause confusion. As I have already pointed out, the test of deceptive similarity for the purpose of s.62(1) is not related to current user, but to possible user.

However, in my opinion, neither the language of the statute nor the authorities establish that it is always sufficient in order to demonstrate an absence of good faith in relation to the continued use of a mark merely to show confusion accompanied by a belief on the part of the alleged infringer that the confusion is the product of his use of the mark. On the other hand, it does seem to me that the alleged infringer's belief as to the likelihood of confusion, or his knowledge of actual confusion, will often if not always be relevant to the assessment of his good faith. It is, of course, a mere exercise in futility for an alleged infringer to intend, or hope for, the opposite of what can be seen to be occurring in consequence of his conduct.

I can perceive no reason to substitute some other test related to confusion for the statutory test of "good faith" or to attempt to define what the statutory test involves beyond stating that it requires an investigation of the motives for the use of the mark which is alleged to infringe, which inquiry will no doubt frequently include reference to the probable and actual consequences of the user. Beyond that, the question of "good faith" is one of fact and degree.

In the present case, I do not think that there is any likelihood of significant confusion in the future. More importantly I am of opinion that, whilst the businesses continue as at present, the respondents will not, by their use as a mark of their business name including the name "St. Agnes", either damage, or derive any benefit from, the appellant's goodwill and that they do not, and never did, do so or intend to do so.

No one could be misled for a moment by the respondents' sale of the appellant's "St. Agnes" brandy. The parties' respective businesses, whilst situated in close proximity, are considerably different in character. More importantly, since one must not for such purposes assume a sophisticated or informed customer or potential customer, there is no significant reputation possessed by the appellant in respect of its trading operations as distinct from the brand name of its brandy. The publicity from these proceedings will have removed the last vestiges of any risk that those likely to deal with either the appellant at Tea Tree Gully or the respondents at the St. Agnes Shopping Centre will associate the two. The litigation has, in effect, permitted the appearance of confusion which has troubled the appellant to be better understood and ensured that there is no cause for concern on that score for the foreseeable future.

In short, in my opinion, the respondents can as matters presently stand use their business name in good faith. I say nothing of what may be the position in the future if the appellant exercises further rights which it has by virtue of its registered trade marks and thereby perhaps alters the context in which the use by the respondents of their mark falls for consideration. I consider that the appellant is not entitled to an injunction restraining infringement of its registered trade marks. Refusal of the injunction is, at least in this case, preferable to the course adopted in Parker-Knoll v. Knoll International (supra).
2. Passing off

The appellant's claim to relief on this ground can be disposed of briefly.

In my opinion, the appellant could not hope to establish that, in the circumstances, by the use of the business name "St. Agnes Liquor Store", the respondents were representing that some association existed between themselves and the appellant as the manufacturer of "St. Agnes" brandy.

I have stated that otherwise the appellant's business had no significant reputation in connexion with the name "St. Agnes". There was therefore no possible basis for a claim that the respondents by their use of their business name were representing that their business was connected with or was that of the appellant.

It would, of course, be impossible to conclude that the goods which the respondents sold under their various brand names were, apart from the appellant's "St. Agnes" brandy, sold as the goods of the appellant and not of the various manufacturers responsible for them.

In my opinion, the respondents' use of "St. Agnes" in its trading name could not realistically be taken to indicate an association with the appellant its business or its products; its denotation was purely and simply of its location.

I consider that there is no need to consider further the applicant's claim for any injunction to restrain the respondents from passing off.
3. Conclusion

In the circumstances there is no need to consider the matters raised by the respondents by way of defence.

The appeal ought be dismissed with costs.