Hunters Products Pty Ltd v R. & C. Products Pty Ltd

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I ..

CATCHWORDS

Trade Practices - Consumer protection - Misleading or deceptive conduct - Names of products having same functions and characteristics - "blue & fresh" - "Fresh & Blue".

Trade Practices Act 1974 - s.52(1)

HUNTERS PRODUCTS PTY. LIMITED v. R. 6. L'. PRODUCTS PTY. LIMITED

No. VG410 of 1986

Jenkinson S.

Melbourne

27 April, 1987

' ,

IN THE FEDERAL COURT OF AUSTRALIA	)
VICTORIA DISTRICT REGISTRY	1 No. VG410 of 1986
GENERAL DIVISION	)

BFIWEEN:	HUNTERS	PRODUCTS PTY,
LIMITED

Applicant

PRODUCTS

PTY.

LIMITED

Respondent

CORAM:

Jenkinson

PLACE

Melbourne

DATE

27 April, 1987

REASONS FOR JUDGMENT

Hearing of questions, within the meaning

of that word in

Order 29 of the Court's Rules,

in a proceeding.

Each party is and at all material times has been a

company incorporated and trading in this country. Each has

for

many

years

sold

Australia

wholesale,

inter

alia,

substantial number of products for use in domestic cleaning

detergents of the surfaces

human bodies, interior walls,

domestic fittings and furniture and other chattels of common

household use.

In June 1981

the

applicant began to sell an article

which was new in this country both in name and characteristics.

It is a solid block of a detergent substance, housed in

a small

2 .

< -

plastic cage which is positioned under the

rim of a lavatory bowl

by fitting over that

rim a moulded strip of plastic to which the

cage

attached.

When

the

lavatory

flushed,

the

water

discharged from the cistern flows over the detergent block,

carrying some of the detergent substance over the inner surface of

the bowl and into the reservoir of water

at the base of

the bowl.

The substance

stains

the

water

the

reservoir

blue,

and

discharges a perfume into the circumambient air, as well as

cleansing the inner surface

of the lavatory bowl. This article is

called "blue

& fresh".

For about 15

years the applicant has sold a detergent

substance which, being suspended in the cistern

of a lavatory,

stains the reservoir

of water in the bowl

a blue colour.

This

article

called

"Just

Flush".

Since

September

1979 the

applicant has sold under the name "bowl care" an article the

essential functions and characteristics of which are similar to

those of the article called "blue

fresh", except that the

detergent substance in the cage does

not, in

the case of

"bowl

care", stain the water.

The article called "blue

& fresh" was

said to achieve in epuration all that the other two articles, Just

Flush and bowl care, would together achieve

- cleansing, staining

the water blue and perfuming the air.

Each

of those other two

articles was sold in competition with other similar articles,

including in each case an article

sold by the respondent.

Since 1981 the marketing of "blue

& fresh" has continued

successfully throughout Australia, both

wholesale

and

retail.

The

annual value of sales by wholesale has exceeded

.B-

. -

3 .

1 -

million.

The

article

has

been

extensively

dvertised,

television and in print. Until recently no other article having

the same characteristics

as "blue

& fresh" was offered for sale in

Australia.

In the last months of 1986 the respondent commenced to

offer for sale by wholesale an article of similar appearance,

characteristics and functions. The name given the article by the

respondent is "Fresh

Blue". It is being offered throughout

Australia for sale by retail, often cheek

by jowl with the article

called "blue

fresh". The proceeding in this Court is for

damages and other relief claimed by the applicant against the

respondent in respect of the use in trade and commerce of the name

"Fresh & Blue", as

the name of the respondent's product, which use

is alleged to have constituted conduct done in contravention of

s.52(1) of the Trade Practices Act	1974, as well as affording the
appllcant other causes of action.	It was not submitted, however,

that if there has been no contravention of

s.52(1) any other cause

of action could be proved.

The proceeding coming on for trial

before me, the parties requested that the issue

~oined

upon the

respondent's denial of the applicant's allegation, in paragraph

of the statement of claim, that

the applicant had sustained damage

by reason of the contravention and the other wrongs alleged, be

not tried until after the decision of the other questions and

issues raised in the proceedmg.

It is those other questions and

issues which

I have heard, after acceding to the parties' request.

There was uncontradictea evidence which

I accept that

the word "blue" has been for years and still is in extensive use

in this country

those engaged in the packaging and the

advertislng of substances for

use

in the cleaning of domestic

rittulys and interior surfaces, household chattels and

clothing.

As an adjective, as

a noun and as a verb, the word has been and is

used to signify the cleansing effect or operation of such a

substance, or to signify the clean condition of something upon

which the substance has been used.

The word is used as

a part of

the name of several articles offered for sale

as a means of

cleaning lavatories.

A n

article of the same characteristics -

detergent substance within

a plastic cage positioned by means of

plastic strip under the lavatory bowl rim - as the articles named "blue & fresh" and "Fresh & Blue", and having the same functions

as those two articles, is labelled "Parry's Blue Toilet Cleaner

Deodoriser". (The words "Toilet Cleaner

& Deodoriser" are printed

under

the

words

"Fresh

Blue"

the

packaging

the

respondent's product, but the words on that packaging, unlike the

same words on the packaging of the article called "Parry's Blue

Toilet Cleaner

& Deodoriser", are not at all noticeable,

think.)

The use of the word is not, however confined to product

names

: it is extensively used also in assertions in praise of

substances for use in domestic cleaning, both on packaging and	in
other forms of advertising.

There was uncontradicted evidence, which

I accept, to

similar effect about the use

of the word "fresh" and the verb

"freshen". These words are extensively used as signifying the

deodorizing effect

operation of perfumes sold for use

domestic interiors, or

as signifying the pleasing smell in places

where those perfumes have been released. The words are also used

in relation to substances which both clean and diffuse

a perfume.

From the evldence that each

the words "blue" and

"fresh" was extensively used in description, sometimes

function of articles of the kind the applicant and the respondent

have named by collocating the words, and sometimes

of a

result

which use of such articles produces, the respondent sought support

for its submission that

I should not conclude that members of the

public had conceived the expresslon "blue & fresh" as the name of the applicant's article. Rather, it was submitted, the expression

would be taken by members of the publlc

as a description of the

functions the article achieved in

use,

and the attention of

members of the public would be directed to the name of the

applicant, in the abbreviated form used in trade, "Hunters", which

is printed on the packaging above the words "blue

& fresh". Thus,

according

the

submission,

consumers

would

think

the

applicant's article not in the terms "blue

& fresh", but in the

terms "Hunters blue

& fresh".

The submission that members of the public would think of

the applicant's article

as "Hunters blue & fresh"

is worthy of

careful consideration, which

I defer for the present. But

not think that it gains much strength from the circumstance that

the words "blue" and "fresh" are extensively used in description

of what is done by articles having some or all of the same or

similar functions. Nor do I think that the difficulty, which has

been judicially observed, of finding that a descriptive word has

become distinctive of

one trader's product exists in this case.

The

collocation

the

two

adjectives

has

effected

thelr

transformation, on the packaging of the applicant's article, and

in other advertising contexts, to a single name, of the article

I	.	z -
I

5 -

which the applicant markets. In those contexts nobody reading or

hearing the expression "blue & fresh" would conceive either word

as qualifying any noun. The same may be said of the reversed

collocation of the two words on the packaging

of the respondent's

I	-
I

article, except that those who read the words "Toilet Cleaner & Deodoriser", which are printed below the words "Fresh & Blue" on

that packaging might understand the latter

two words as adjectival

to the nouns below. But in the case of the applicant's product, the words "blue & fresh" are used, and I do not doubt that they

would be understood by contiumers reading or hearing them,

name of the product. The words constituting the name may excite

in the consumer's mind thoughts which associate with the product

;

effects or results of a

kind which usage

of the words separately

has come to suggest. But those would

be subliminal impressions.

The meaning communicated is

of a proper name.

The respondent's product - cage containing the block of

detergent - is

packaged between a flat, rectangular card and

l	moulded container of transparent colourless plastic which	is stuck
I	I

to the lower part

of the card.

The card has printing

on both

sides.

It is about 18.5 centimetres long and about

13 centimetres

wide. On the side to

which the container is stuck the word

I	"Harpic" is printed in red against	a white background at the top
I I

of the card.

The letters of that word, other than

the

slightly

taller initial capital letter, are about

3 centimetres high.

The

;	background colour of the rest of that side of the card	is	blue.
l	l

Against that background are printed in white the words "Fresh

Blue", in letters (other than the initial capitals and

the letters

"h" and "l", all of which are about

1.5 centimetres high) about 1

1 .

centimetre high; and immediately below those words the words, in

white,

"Tollet

Cleaner

Deodoriser",

letters

about

0 . 2 5

Centimetres high. Below those words are printed, in letters about

0.5

centmetres

high, the words "Freshens And Blues With Every

Flush", in yellow. The cage is grey in colour.

In South Australia and New South Wales the applicant's

product is packaged in a cardboard box, 7 X 5.5 X 10 centimetres. Elsewhere In Australia the applicant's product - cage containing

the block

of detergent

- is packaged between a card about

centimetres long and about 11.75 centimetres wide, and a moulded

container of transparent, colourless plastic which is stuck to the

card. Because the strip of plastic by which the cage is held in

posltion is not folded so close to the cage as in the case of the

respondents'

packaging,

the

clear

plastic

container

the

applicant's product covers about three quarters

the card,

whereas the respondent's clear plastic container covers less than half the card. The top of the applicant's card, like the top of

the respondent's card, has a

white background. In the top right

hand corner is printed in red

the word "Hunters", the letters

(other than the initial capital) about

0.5

centimetres high.

Relow that word are printed the words "blue

& fresh". The letters

I, ,

I, , I, I,

and "h" are just under

2 centimetres high.

The

other letters are just over

1 centimetre high. The word "blue" is

printed in blue on a paler blue background which is superimposed

on the white background.

The

ampersand (which

about

1.5

centimetres

high)

and

the

word

"fresh"

are

the

white

background, the ampersand blue and the word

red.

Beneath those

words are two photographs, side

by side, of a lavatory bowl fitted

with

the

product, and to the

right of the

photographs

the

following words:-

"Blues Water

Instantly

Cleans

Freshens"

The colour of the cage is aqua blue. Although the

cage is not

dissimilar to the respondent's cage in size	or shape, Its sides
are ridged and perforated, whereas the sides	of the respondent's

cage are smooth and not perforated. The blue colour of the card

used by the applicant is somewhat, but not greatly, different	from
the blue colour of the card used by the respondent.

In those parts of

Australia where the packaging of the

applicant's

product

similar

the

packaging

the

respondent's product it is, as I find, likely that some consumers

who had used the applicant's product and desired to purchase the

product would be led

by the similarity of the two expressions

"blue &

fresh" and "Fresh

Blue"

the

belief

that

the

respondent's

product

was

the

product

which

she

had

previously used and desired to purchase; and would purchase the respondent's product in that belief. Two questions which then

arise, as I

think, are how often it is likely that that would

happen, and whether the marketing of its product by the respandent

in that packaging is to "engage in conduct that ...... is likely

to mislead or

deceive", within the meaning of those words in

s.52(1) of the Trade Practices

Act 1974.

Such slmilarity as there

is, otherwise than in the use

of the two words, between the

get-up of the two products could not

induce in the consumer's mind the mistaken belief to which

I have

referred, except in

a case where the memory of the desired product

includes a memory, but an imperfect memory, of the name of the

applicant's product. Only if slght of the name "Fresh & Blue" on

the respondent's package had first suggested to the mind of the

consumer that that was the name of the product previously used and

presently desired might the other similarities

of get-up possibly

contribute

inducing,

maintaining

undisturbed,

the

mistaken belief.

No such a mlstaken belief could persist in the mind of

reasonable

consumer

who

had, immediately

after

sighting

the

respondent's product, seen the applicant's product nearby. There

was evidence, and

think it of sufficient notoriety to take

judicial notice, that a great proportion of the retail sales of

products of the kind here in question are made in large shops,

commonly called supermarkets, where goods of similar function are

displayed in close proximity one to the other, and in such	a way
that the goods may be closely inspected and handled by the

consumer before purchase. Only the consumer who

(a) has an imperfect memory of the name of

the applicant's product;

(b) sees the respondent's product but does

not see, before purchase, the applicant's

product;

(c)

is misled by the words "Fresh

& Blue" on

the card into the belief that the article

so labelled is the article previously

used and presently desired; and

10.

(d)

is not freed of that mistaken belief by

anything else about the get-up of

the

respondent's product;

will labour under the mistaken belief for more than

a very short

time, unless he or she is quite unreasonably careless of his

her own interests.

Once

the

two

articles

present

themselves

together to examination and comparison by the consumer, the

contrast

between

the

prominent,

red

"Harpic"

and

the

word

"Hunters", in addition to the other differences which

have

specified, would induce

a serious doubt in any reasonable mind

that

the

two

products

were

from

the

same

source.

after

comparison of the faces of

the

cards to which the cages are

attached any suspicion remained that the two products might be

from the same commercial source, any reasonable consumer would

examine the other side of each card. Near the bottom of that side

of the respondent's card is printed:

"Samuel Taylor,

33 Hope Street, Ermington

NSW 2115."

Near the bottom of that side of the applicant's card is printed:

"Hunters Products

Pty. Ltd.

13-21 Thomas St., Yarraville, Vic."

Counsel for the respondent relied not only

the

presence

top

the applicant's card of its trade name.

"Hunters", which has been used over many years in the field of

commerce in which these products lie, but also upon the presence

on top of the respondent's card of the very prominent, and

. -

strorlyly coloured, Lrade name "Harpic".

The latter name is

very

well known as a trade name assoclated with products for use

in the

cleaning of lavatories and other domestic surfaces, fittings and

chattels.

The consumer in whom the mistaken belief was induced by

the words "Fresh

Blue" would have not only an imperfect

recollection of the name of the applicant's product, but also, it

was submitted, no recollection

the circumstance that the

I	previously	used	product	was	not	a "Harpic"	product.
I

l	Counsel	for	the	applicant	sought	meet	to	this	submission
i

by suggesting that the consumer

who failed to detect the inversion

of the order of the words

"fresh" and

"blue", and was therefore

I	disposed to think that the respondent's product was that which	he
I

had

previously

used

and

presently

desired

buy,

but

who

remembered that what

he had previously used did not have the word

"Harpic" on the packaging, would probably suppose that the product

he desired had been recently acquired by whatever entity	was
entitled to use the word "Harpic".

There was some evidence that acquisitions of the right to market products in this field of commerce did occur, but

I am

not persuaded that any significant number of consumers would	draw,
from the circumstance that the word "Harpic" had appeared on

packaging previously free of	theword, the inference suggested by
counsel for the applicant.

The word "Hunters" would not,

as I think, be retained in

the memory of a very large proportion of those consumers who had

come to identify the applicant's product by the name "blue

12.

; -

fresh". The word "Hunters" is not

In relatively large print and

does not seem to me to catch the eye, notwithstanding its position

at the top of the card.

These are articles of small price, commonly gathered

into

shopping trolley for

purchase

after a

few

second's

examination and consideration by

a person unwilling to accord more

than that short time to making the decision whether to buy the

article. The extensive use,

on packages and in other advertising,

of each of the words

"blue" and "fresh", as adjective, verb and

noun, enhances rather than diminishes the risk that a consumer's

memory of the name of the applicant's product

will be imperfectly

retentive of the order

in which the two words are placed in the

name. Although the two competing products will commonly be so placed on display for retail sale that very many consumers will see both before choosing either, there will be consumers who,

having

seen

the

respondent's

product,

will

not

notice

the

applicant's product nearby, and there will be occasions when only

the respondent's product will be visible. I think that, although

the prominent, eye-catching word "Harpic"

on the respondent's card

will in the case of many consumers set in train mental processes

leading to the conclusion that the article	so labelled is not the
same as that which they remembered by a	name consisting of the

words "fresh" and "blue"

in conjunction, there will be many others

whom the word

"Harpic" will not alert to the mistake which the

name "Fresh

& Blue" has induced. The class of consumers likely to

be affected by the similarity of the names of these two products

will comprehend a

very wide variety of mental alertness and

competence of memory. My finding is that a substantial number

13.

consumers would be induced to form and to act upon the mistaken

belief that the respondent's product was the product called "blue

& fresh" by reading the words "Fresh	& Blue" on the packaging of
the respondent's product.

The question remains whether the use of those words on the packaging of the respondent's product constitutes "conduct

that ...... is likely to mislead or

deceive", within s.52(1)

the Trade Practices Act

1974.

'The	relatively low price of these products makes it

difficult to characterise as a failure

to take reasonable care of

their own interests consumers' failure to recall accurately

a name

of such a product. Yet the question remains whether it is right

to say that it

was the use

of the name "Fresh

& Blue" which caused

the mistaken belief; or whether all that can be said is that

defective mental processes usually described as memory resulted in

a mistaken belief,

the formation of which the consumer's

perception of

the words "Fresh

Blue" contributed, but that

neither those words nor anything else about the packaging

of the

respondent's article communicated anything likely to induce

mistaken belief in a mind the processes

which were not

defective.

The

name by which for more than five years the

applicant's product has been known may,

think, fairly be

described in a phrase

of Fletcher Moulton

L.J.

in Re Joseph

Crosfield & Sons Ltd. (1909) 26 R.P.C.

837 at 858 as "a peculiar

collocation of words", and yet a collocation for which the same words in inverted order may be easily mistaken by persons whose memories and attentiveness are within the range of what may be

14.

regarded as normal. In my opinion

the

use by the respondent of

the name "Fresh	& Blue" does constitute misleading conduct within
s.52(1).

In South Australia and New South Wales the packagiGg of

the applicant's product has been a cardboard box for the last

three years. On the two long sides the name "blue

fresh" is

printed in colours and style similar to those of the card already

described. The lay-out is a

Many consumers in those two States would be influenced by the

quite different packaging of the resondent's product to distrust

copy of the upper half of the card.

any suggestion

identity with the boxed article which the

similar name had presented

their minds. But there would be

some in whom the words "Fresh

& Blue" would, as I think, evoke a

mistaken belief that the article they desired to buy was being

offered, albeit in a different package. In those States also the

respondent's conduct contravenes

s.52(1), in my opinion.

It may be that this

is a case of the kind which Lockhart

J. was discussing in Bridse Stockbrokers Ltd. and Moore

v. Bridqes

(1984) 4 F.C.R. 460 at 474, in which some consumers, who on seeing

the respondent's product are thrown into a state which may be described as "merely confused or uncertain", then "simply decide in their state of confusion to buy the product which they think

may be from the same source

as the roduct with which they are

familiar; but they are not sure" 4 Bu I have not rested any of my	conclusions on a finding that there will be induced that state of
dubiety.

15.

I wlll

hear counsel as to what orders

should now

made.

I certify that this and the fourteen preceding pages are

a true

copy of the Reasons for Judgment herein	of	the Honourable Mr.
Justice Jenkinson.
Associate
Dated: 27 April, 1987

Counsel

for the Applicant

: Mr. J.G. Larkins

and

Mr.

J.A. Magee

Solicitors for the Applicant

Dawson, Kennedy and McDonald

Counsel

for

the

Respondent

: Mr. S.K. Wilson

Solicitors for the Respondent :

Tress, Cox and Maddox

Dates

Hearing

2 and 3 March, 1987

[1987] FCA 196

27 Apr 1987