Collitt v Borsalino Guiseppe E Fratello Societa Anonima

The High Court of Australia heard an appeal from the Supreme Court of Victoria concerning a passing off action. The respondents, Borsalino Guiseppe e Fratello Societa Anonima, an Italian company and manufacturer of felt hats, sought to restrain the appellants, Thomas Morton Collitt and Herbert Bayford Collitt, who were retail hatters in Melbourne, from passing off hats manufactured by another firm, G. B. Borsalino fu Lazzaro &Co., as the respondents' own. The respondents claimed that the name "Borsalino" had acquired a secondary meaning denoting their hats.

The central legal issue before the High Court was whether the word "Borsalino," when applied to hats, had acquired a secondary meaning in the minds of the purchasing public, signifying hats manufactured by the respondent company, and whether this meaning had been retained at the time of the alleged passing off. The appellants contended that the word had not acquired such a secondary meaning, or if it had, it had been diluted or obliterated by the introduction of hats from G. B. Borsalino fu Lazzaro &Co. into the market.

The Court affirmed the decision of the Supreme Court of Victoria, finding that the evidence overwhelmingly supported the conclusion that the word "Borsalino" had acquired and retained a secondary meaning denoting the hats manufactured by the respondent company. The Court applied the principle that a person's name can acquire a secondary meaning associated with specific goods, such that its use by another without qualification would deceive purchasers. The Court noted that the efforts of G. B. Borsalino fu Lazzaro &Co. to distinguish their hats by using their full name were consistent with the respondents' established reputation and did not negate the secondary meaning of "Borsalino" alone.

Consequently, the High Court dismissed the appeal, upholding the injunction granted by the Supreme Court of Victoria and ordering the appellants to pay the costs of the appeal.