Mark Foy's Ltd v Davies Coop & Co Ltd

Mark Foy's Ltd. (the appellant) appealed to the High Court of Australia from a decision of the Supreme Court of New South Wales, which had dismissed its suit seeking to restrain Davies Coop & Co. Ltd. and Davies Coop (New South Wales) Pty. Ltd. (the respondents) from infringing its registered trade mark "Tub Happy". The trade mark was registered in respect of articles of clothing. The appellant alleged that the respondents were infringing this mark by using the words "Tub Happy" in their advertising and sale of clothing.

The High Court was required to determine two primary legal issues. Firstly, whether the trade mark "Tub Happy" was validly registered under section 16(1)(d) of the *Trade Marks Act 1905-1948*, which requires a registrable trade mark to consist of words having no direct reference to the character or quality of the goods. Secondly, the court had to consider whether the respondents' use of the words "Tub Happy" constituted an infringement of the appellant's exclusive rights under section 50 of the Act, or if such use was protected by section 53A as a bona fide description of the character or quality of the goods.

A majority of the High Court, comprising Dixon C.J. and Williams J., held that the words "Tub Happy" were validly registered as a trade mark. They reasoned that the phrase was in the nature of a coined expression with only a remote and vague suggestion, rather than a direct reference, to the character or quality of clothing. The court further held that the exclusive right granted by section 50 of the Act is the exclusive right to use the mark *as a trade mark*, meaning to indicate the origin of the goods. Section 53 was considered an appendage to section 50, widening the definition of infringement to include substantially identical or deceptively similar marks, but the use must still be as a trade mark. The majority found that the respondents were using "Tub Happy" as a trade mark to indicate a connection in the course of trade between their goods and themselves, and therefore their use was not protected by section 53A, which only safeguards bona fide descriptions. Kitto J. dissented on the registrability issue, finding that the words did have a direct reference to the character or quality of the goods.

The High Court allowed the appeal, reversing the decision of the Supreme Court. The court ordered that the appellant was entitled to an injunction to restrain the respondents from infringing its trade mark.