Federal Coke Co Pty Ltd v Federal Commissioner of Taxation

[1977] FCA 3

No. 0.30 of 1977

-	CORAM: BOWEN C.J.
Friday, 6th May, 1977

COLGATE PALMOLFJE PROPRIETARY LIMITED v.

7-c . : d X (LABORATOXCES) P F O F X E T m

Sam; PATTI

m D and :;ASiI;:STO;T H. SOUL 2ATTIKSON

Ct C0:4PAI\Y LE?ITED

i

'.i

i	I
!

p i This is a motion by Colgate Palmolive Proprietary Limited,

i	!	!	the applicant, against Soul Pattinson (Laboratories) Proprietnry
:	Limited and Washington H. Soul Pattinson 81 Company Limited,
I	l
respondents, seeking an interlocutory injunction restraining

A

the respondents from manufacturing, distributing, promoting,

e	advertising for sale o r selling toothpaste not of the
applicant's manufacture, which is so got up and packaged a8 to
be in appearance substantially identical with or deceptively
similar to the appearance of the get-up and packaging of the
toothpaste of the applicant's manufacture.

The applicant has manufactured and marketed in Australia

toothpaste by the name of Fluorigard continuously since 1967.

During the period from January 1971 to 31 March 1977 the

applicant's sales of Fluorigard in New South Waleo exceeded

$5,600,000. During the period from January 1971 to 31 March

i 1977 advertising expenditure by the applicant in respect of

4 1

, 1.

Fluorigard toothpaate in Nev South Wales	was approximately
8493,000.

In 1971 the applicant produced a design of the Fluorigard

toothpaste tube and a cardboard package in which it is

marketed, which is in use end in an exhibit in the present

cam. The tube 16 coloured red, wkite and blue. It has upon

it a red flash on which is printed in distinctive white lettering

the word Wolgate" and a white flash on which i s printed in

distinctive blue lettering the word nFluorigardn. The red and

white flashes are enclosed in a red rectangle. The tube

has a red cap. This tube is b. evidence as exhibit rrDrr.

The package presents a similar appearance to the tube.

Since 1971 when it introduced this form of tube ar,d

package, the applicant's toothpaste has been continuously

promoted, distributed and sold in that tube and package. The

evidence shows that it s well known to those who are consumers

and purchasers of toothpaste.

In conJunction with its selling of the Fluorigard toothpaste

the applicant from 1974 onwards used a character which it

called "Happy Tooth", being a drawn representation of a face

with a laughing mouth. It used t h i s extensively in connection

with its sdle of the Fluorigard toothpaste.

The second respondent has marketed its o m brand of

toothpaste or tooth cleaning powder since about 1900. It

began marketing toothpaste in the 1920s when that product began

to take over from t o o t h powder. It marketed its toothpaste t

2.

. e

in variou io- of tub. and package, two of which er0

I

exhibits and -0 doscribed M .Soula Toothpasto Mint Flavour"

I

whlch it uaed from 1971 to approximately 1973 and "Souls

Stannous Fluoride Toothpaate" which it marketed from the middle

of 1972 and is e t i l l continuing to market. The firat respondent

i 8 the mnnufacturer and the	lrecond respondent l6 the marketing
company.

PU tubes of toothpaste used by the appllcaut and

respondents up to this timo were made of collapeible

aluminium and were packed in these cardboard packages, the

packages being necessary to protect the	tubes from dents
and

In April 1977 t h e respondent8 comerrced to sell and market

as a trial run through two outlets a toothpaste in a plastic

tube without any containing box or package. This tube v a ~

different in design from those which previously it had used.

It carried the word "Toothpasten la white lettering, large in

size and distinctive in c&-acter, on a white flash. Under

that it had the words "Fluoride plusR in r'airly large blue

characters on a white background, the whole being contained

in a rectangie. The relative size of the lettering bore a

degree of correspondence ta that on the applicant's tube

which is exhibit "Dn. Above and to the left in mailer type

was the word "Soulsn and above and to the right in emall type

ml10 g. net".	The respondents' tube is in	evidence aa
exhibit "An.

3.

. r

The respondents in connection with the sale of

this product used a dlsplay card bearing a drawn face

vith a laughing mouth similar to the applicant's "Happy

Tooth"

The applicant complained to the respondents both as

to the get-up of the tube of toothpaste which they claimed

was likely to lead to confusion with their Fluorigard tube

of toothpaste and also in respect of the ude of the

representation of "Happy Tooth". The respondents then

discontinued the use of the representation of a laughing face and in fact have now given an undertaking that they

will not, by themselves, their servants or agents or any

of them, promote, advertise f o r sale or sell any product

for dental care not of the applicant's manufacture under or

by association with representation of the fanciful character

Wappy Tooth" described in paragraph 4 of the amended

statement of claim filed in proceedings No. 0.30 of 1977,

or with representations of any substantially identical

or deceptively similar character.

Regarding the tube of which they had sold a few

the respondents altered their get-up to some degree. They

altered their tube to a form which is now in evidence as

exhibit "B2". Thia is a tube with a white background having

large red letters of dlsanctive type forming tine word

"Toothpaste". It also has distinctive white letters on a blue

flash forming the words "Fluoride plus". At the top to the left

4.

* JL-kf 64- L& &, l?% & Di-,

/c '3,

w r rl +?l, , .+

-a. J p a L A e t & - & - s L < c

- - L /L?L.&/+&'

in smell blue type is the word wSoulsn and at the top

to the right in mall	type, "l10 g net".	The tube has a
red cap.

The applicant objected also to t h i s form. A further

modification was then made by the respondents by substituting

a blue cap for the red cap, This tube is in evidence as

exhibit "Bin. Other tubes of toothpaste by various

manufacturers tendered in evidence show that he common

practice le to use a white cap.

The question which now arises for the Court to decide is

whether the respondents should be restrained, pending the

hearing of these proceedings, from marketing toothpaste In

the form of tube whlch appears a8 exhibit "Bin.

In arriving at a view on t h i s metter, the task of the

Court at t h i s interlocutory stage is not to decide the issue

in the proceedings, whether the tube exhibit "B?" is so sinilar

to the tube exhibit "D" marketed by the applicant a8 to be

likely to mislead or deceive consumer8 or purchasers; my task

is to decide whether there is a serious question to be tried

about this issue if I turn to American Cvanamid Co. v. Ethicon

Limited (1975) A.C. 396 decided by the House of Lords, or,

whether the applicant has made out a prima facie case, if 1 3 %

turn to Beecham Group Limited v. Bristol Laboratories Pty. Limited

/l18 C.L.R. 618 decided by the High Court. In the latter case

> hhf the reference to a prima facie case is to be taken as requiring

&L. that the Court, before granting an interlocutory injunction,

&6/qshould be satisfied there is a probability of success for the

I 4

applicant in the proceedings. This does not mean that it s

more probable than not that the applicant will succeed.

5.

i

.J

Applying these tests m best I can to the material

before me, I have come to the conclusion that there is a

serious question to be tried or, if one uses the other

test, there is a probability of the applicant succeeding

in the proceedings. I think it would be undesirable for me

to canvass all the matters of similarity and difference to

which my attention has been drawn in detail in the able

arguments of c o w e l for the parties. These are matters

which will have to be determined at the hearing. I think

I Bhould not at t h i s stage canvass them in detail. Having

arrived at the conclusion which I ave, it becomes a matter

of detersining whether interlocutory relief should be

granted o r not. This turns upon where I consider the

balance of convenience lies, whether it lies in favour of

allowing the respondents to manufacture and market the

tubes of toothpaste in the form of exhibit "B1" pending the

hearing or whether I should grant an injunction and prevent

them from doing so. The evidence is that about 40,000 tubes

of toothpaste have been produced in thlis form and that it would

be for various reasons impractical to transfer t h i s toothpaste

- from a plastic tube bearing the indicia I have mentioned

to sone other form of tube.

However, the respondents have not yet begun to market

the toothpaste in this particular form. Furthermore, they have

access to the market in selling toothpaste as they have done

for many yeara in accordance with their former design of tube.

6.

I

. W

. I

l l

All parties are companies of substance. The applicant,

l	of course, offers an undertaking to be responsible for any
I
damages whlah the respondents may be shown to have suffered
l
i	if, in the result, it turns out that the applicant does not

I

1 I

! succeed in proving its cane at the trial.

In the circumstances I think the balance of convenience

' I

i comes down on the side of keeping matters as they are, In

l I

the sense that the respondents should be prevented pending

'.i the hearing from commencing the marketing of goods in

l ' the form of exhibit nBln.

h i The form of order which I make is an injunction to

!	l
l retrain each respondent by itself, its aervants, agents or
I

any of them from manufacturing, promoting, distributing,

1

I i advertising for sale or selling toothpaste not of the

-	applicantts manufacture in t h e form of tube which	appears
88 exhibit "B1" in t h i s application, or any tube	so got up
b

I	or packaged as to be in appearance	substantially	identical
I

l with or deceptively similar to the appearance and get-up

pi of packaging of toothpaste of the applicant's manufacture.

I The costs of this application will be costs in the

1	1
1	1 I proceedings. This appears to me to be a matter which should
;	I
i	! be heard as promptly as practicable. I reserve liberty to
i '	!	! either party to apply to the Court on seven days notice.
4	1
1	1 returned. Exhibits be may
,*	I
,	I
l

I cerrlfy that this and thc

l Delivered at Sydney 6/5/77. prcceding pages arc a true copy of the

reasons for Judgment herem of HIS Hocor

l

i Mr. Jusrlce Bowen.

7.

: l Assoclate

Dated [i//;!77

l