Henry Clay & Bock & Co Ltd v Eddy

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.