Henry Clay & Bock & Co Ltd v Eddy - [1915] HCA 33

HENRY CLAY &BOCK &COMPANY EDDY

ON APPEAL FROM THE SUPREME COURT OF

NEW SOUTH WALES. Trade Mark-Infringement - Use of mark resembling registered trade mark-Prob-

ability of deception - Mode of user of marks-Passing off - Trade Marks Act 1865 (N.S.W.) (28 Vict. No. 9), secs. 2, 7-Trade Marks Act 1905-1912 (No. 20 of 1905-No. 19 of 1912), sec. 53.

In an action for infringement of a trade mark registered under the Trade Marks Act 1865 (N.S.W.), where the mark used by the defendant is not an exact or substantially exact copy of the plaintiff's registered mark, but is a colourable imitation of it, the Court must be further satisfied that the Gavan Duffy and use by the defendant of his mark is likely to lead to deception, and for that purpose the Court must take into consideration all the circumstances surrounding the use of both marks.

So held by Isaacs, Gavan Duffy and Rich JJ. (Griffith C.J. dissenting). Therefore, where in an action for infringement of a trade mark and for passing off it was proved that the defendant used a mark which was a colour- able imitation of the plaintiffs' registered trade mark and likely to be mistaken for it, but that the plaintiffe' goods were known in the market by the plaintiffs' name irrespective of their registered mark,

Held, by Isaacs, Gavan Duffy and Rich JJ. (Griffith C.J. dissenting), that the probability of deception had not been established, and, therefore, that the claim for infringement failed.

Held, also, by the Court, that on the evidence the claim for passing off Decision of the Supreme Court of New South Wales (Harvey J.) affirmed.

19 CLR 642

APPEAL from the Supreme Court of New South Wales.

Henry Clay &Bock &Co. Ltd. were the registered proprietors under the New South Wales Trade Marks Act 1865 of a trade mark for cigars consisting of a representation of a crowned eagle with outspread wings perched upon a riband bearing the words Bock y Ca. Habana," with the words "El Aguila de Oro" on its wings. They brought a suit in the Supreme Court against Stephen J. Eddy for infringement and for passing off.

The suit was heard by Harvey J., who dismissed it with costs. From that decision the plaintiffs now, by special leave, appealed to the High Court.

The material facts appear in the judgments hereunder. Knox K.C. (with him Maughan), for the appellants. Leverrier K.C. (with him Jordan), for the respondent. During argument reference was made to Finlay v. Shamrock Co. 1; Paine &Co. v. Daniell &Sons' Breweries Ltd. 2; Schweppes Ltd. v. E. Rowlands Proprietary Ltd. 3; Ore Concentration Co. (1905) Ltd. v. Sulphide Corporation Ltd. 4 Orr Ewing &Co. v. Johnston &Co. 5; Bourne v. Swan &Edgar Ltd. 6; Edwards v. Dennis 7; Upper Assam Tea Co. v. Herbert &Co. 8; Johnston v. Orr Ewing 9 Cochrane V. Macnish &Son 10; Orr Ewing v. Registrar of…

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.

Continue reading Henry Clay & Bock & Co Ltd v Eddy

Details

AGLC: Henry Clay & Bock & Co Ltd v Eddy [1915] HCA 33
Case: [1915] HCA 33
Decision Date: 29 April 1915

CaseChat Overview and Summary

Henry Clay & Bock & Co Ltd (the appellants) appealed to the High Court from a decision of the Supreme Court of New South Wales. The appellants, registered proprietors of a trade mark for cigars under the New South Wales Trade Marks Act 1865, sued the respondent, Stephen J. Eddy, for infringement of their trade mark and for passing off. The Supreme Court had dismissed the appellants' suit.

The legal issues before the High Court were whether the respondent's use of a mark constituted an infringement of the appellants' registered trade mark, and whether the respondent had engaged in passing off. Specifically, the Court was required to determine the test for infringement of a registered trade mark, particularly where the alleged infringing mark was a colourable imitation rather than an exact copy, and to consider the circumstances surrounding the use of both marks in assessing the likelihood of deception.

The majority of the High Court, comprising Isaacs, Gavan Duffy, and Rich JJ., held that for a colourable imitation of a registered trade mark to constitute infringement, the Court must be satisfied that the use of the mark is likely to lead to deception, taking into account all surrounding circumstances. They found that while the respondent's mark was a colourable imitation and likely to be mistaken for the appellants' mark, the appellants' goods were known in the market by their name rather than their registered mark. Consequently, the probability of deception was not established, and the claim for infringement failed. The Court also held that, on the evidence, the claim for passing off had not been established. Griffith C.J. dissented on the issue of infringement.

The High Court affirmed the decision of the Supreme Court of New South Wales.

Orders