Re Bali Brassiere Co Inc's Registered Trade Mark

[1968] HCA 72

HIGH COURT OF AUSTRALIA

Windeyer J.

RE BALI BRASSIERE CO. INC.'S REGISTERED TRADE MARK AND BERLEI LTD.'S APPLICATION

(1968) 118 CLR 128

6 November 1968

Trade Marks

Trade Marks—Mark registered seven years—Rectification of register by expunging mark—Claim that mark disentitled to protection in court of justice—"wrongly remaining" on register—Trade Marks Act 1955-1958 (Cth), ss. 22 (1) (b), 28, 61. Trade Marks—What registrable—Words likely to deceive—Geographical name—Mark similar to previously registered mark—Trade Marks Act 1955-1958 (Cth), ss. 6 (3), 24, 28 (a), 33 (1).

Decision

November 6.
WINDEYER J. delivered the following written judgment:-
This is an application by Berlei Limited, a company incorporated in New South Wales, which I shall call the Berlei company or the applicant. It makes brassieres and other articles of apparel for women. It is the proprietor of a trade mark, the word BERLEI written in ordinary Roman capital letters. This mark is registered in Part A of the Register of Trade Marks in respect of articles of clothing. It was originally registered in 1917. The registration has been renewed and is now for a period of fourteen years from 28th August 1959. (at p129)

2. The applicant moves to have the Register rectified by expunging therefrom the entry BALI-BRA, written in Roman capitals, as a trade mark of the respondent, Bali Brassiere Co. Inc., a company incorporated in the State of New York in the United States of America. I shall refer to it as the Bali company. Its mark is registered in Part A of the Register in respect of brassieres. It was originally registered in 1947. The registration has been renewed and is now for fourteen years from 29th January 1961. (at p129)

3. The Registrar of Trade Marks was duly notified of the application now before me. An officer of the Commonwealth Crown Solicitor's office watched the proceedings for him. But he did not wish to be heard and did not formally appear; and I did not think it necessary to direct, pursuant to s. 22 (5), that he should do so. (at p129)

4. The word Berlei has for many years been used by the applicant in Australia to denote goods of its manufacture. Its brassieres are ordinarily sold by retail shops, with small cloth labels attached to them on which the word appears. These brassieres have been sold in very large numbers. They have been extensively advertised under the name Berlei. The word is not ordinarily printed in the block capital letters of the trade mark as registered, but in a characteristic form of italic cursive script; however nothing, I think, turns on that. The important fact is that the name has for many years been well known in Australia. (at p130)

5. The brassieres of the Bali company are not as widely known in Australia as are those of the Berlei company. They have long been well known and sold in large numbers in America and other parts of the world. But it seems that there were no importations of them for sale here until 1960. Before then any knowledge of them in Australia would it seems be only as the result of any purchased in America or of the reading by Australian women of American magazines or fashion journals in which the name Bali or Bali-Bra has often appeared in advertisements. Bra, it should be said, has become a commonly used colloquial name for brassiere, itself a word of French derivation which, according to the Oxford Dictionary, first appeared in English in 1912. From 1961 onwards some Bali brassieres were imported into Australia. Since 1966 or 1967 they have been sold in Sydney, Melbourne and possibly elsewhere in the shops known as David Jones', Farmer's and Myer's. Sales in Australia of Bali brassieres have not approached in number the sales of Berlei brassieres. The Berlei brassieres are made in a greater range of sizes and styles. They are cheaper, and more widely sold. The Bali articles are, it seems, a specialty line. (at p130)

6. The Berlei company did not oppose the registration of the Bali trade mark in 1947. Whether or not it then knew of the application for registration does not appear from the evidence. It seems to me unlikely that it would have remained unaware for years that the Bali company had registered its mark in Australia. But the evidence does not shew that it knew of this before 1959. In that year there were negotiations between the two companies. Berlei was seeking a licence to use the name Bali and to sell products under that name. Nothing came of these negotiations, mainly because a third company, which made brassieres bearing a different name which it marketed through the Berlei company, disapproved of the proposed association of the Berlei company with the Bali company. In the course of the negotiations some reference was made to the similarity of the words Berlei and Bali, with a suggestion, by an adviser of the Berlei company, that the Bali mark was for that reason vulnerable. The Berlei company did not then pursue this suggestion. After it had failed to make a treaty with the Bali company it declared war. It opened its attack in 1962 by an application to the Registrar to have the Bali mark removed from the Register, on the ground that it had been abandoned by non-user: Trade Marks Act 1955-1958 (Cth), s. 23. The Registrar dismissed the application. The company then instituted an appeal to this Court - matter No. 4 of 1965. It did not press on with this appeal; but it remained on foot until it was brought to an end immediately before the hearing of the present case began. The Berlei company then asked that its application be dismissed by consent. I thereupon dismissed it with costs. With the assent of the parties, I have allowed certain affidavits which had been filed in that matter to be read in the present matter so far as relevant. (at p131)

7. The present matter was commenced by notice of motion on 18th November 1966. In the meantime, hostilities against the Bali company had begun in England. There Berlei (U.K.) Limited - which I am told is an offshoot or related company of the present applicant - had commenced proceedings against the Bali company in or before 1960. It sought to have a longstanding pictorial mark, which included the word Bali, removed from the Register; and it also opposed an application by the Bali company to register the word Bali as a trade mark. The ultimate question in the English proceedings and in those now before me is the same. Can the word Bali now validly be, or form part of, a registered trade mark? But all surrounding facts are not the same in the two countries. (at p131)

8. In England the case, after some delays, came on before Ungoed-Thomas J. His Lordship's decision, reported in (1966) RPC 387 , was in favour of the Berlei company. However, it was reversed by the Court of Appeal in December last year, by a majority (Lord Denning M.R. and Salmon L.J., Diplock L.J. dissenting). I was furnished with a copy of the judgments in the Court of Appeal which I think are not yet reported. An appeal to the House of Lords is pending. The parties were not agreed that my hearing of this case should await the decision of their Lordships' House. Therefore I have prepared my judgment as promptly as other engagements have permitted. My decision is, of course, given on the basis of the evidence as to conditions in Australia. But I have been aided, although not governed, by the judgments in the Court of Appeal; and I am glad to know that on any appeal from my decision the Court will know what the House of Lords has said in the English case.

The issues for trial. (at p131)

9. With preliminaries out of the way, I turn to the issues in the case. These arise from the provisions of the Trade Marks Act 1955-1958, and in particular ss. 22, 24, 28, 33, 60 and 61. The notice of motion is based upon s. 22 (1) (b) of the Act. It is for an order for rectification of the Register by expunging the entry of the Bali mark as "wrongly made in or remaining in the Register". The grounds are stated as that the mark offended and offends against s. 28 of the Act, in particular as being at all material times (a) a mark the use of which would be likely to deceive or cause confusion; (b) a mark which would not be entitled to protection in a court of justice. (at p132)

10. After the case was opened counsel for the applicant sought leave to add as a further allegation that the mark offended against s. 33 of the Act. Whether or not an amendment was strictly necessary, I approved the following as an addition to the grounds set out in the notice of motion: "That the mark is a mark which is or was at the date of registration deceptively similar, within the meaning of s. 33 of the Act, to trade mark A 21931 (the applicant's mark BERLEI)."

Section 61. (at p132)

11. As the mark BALI-BRA has stood in the Register since 1947, the applicant at the beginning of its case had to meet s. 61 (1) of the Act. It is in the following terms:

"61. (1) In legal proceedings relating to a trade mark registered in Part A of the Register (including applications under section twenty-two of this Act), the original registration of the trade mark under this Act shall, after the expiration of seven years from the date of the original registration, be taken to be valid in all respects, unless it is shown - (a) that the original registration was obtained by fraud; (b) that the trade mark offends against the provisions of section twenty-eight of this Act; or

(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor."

Section 28 is as follows:

"28. A mark - (a) the use of which would be likely to deceive or cause confusion; (b) the use of which would be contrary to law; (c) which comprises or contains scandalous matter; or (d) which would otherwise be not entitled to protection in a court of justice, shall not be registered as a trade mark."

The Berlei company relies on the second and third of the exceptions to the presumption of validity arising from seven years' registration. That is to say it seeks to escape either by way of s. 28 or by asserting that the mark was not at the commencement of these proceedings, namely on 18th November 1966, distinctive of the goods of the Bali company. (at p133)

12. Dealing first with the reference in s. 61 to s. 28, it becomes necessary to consider what is the effect of the words "that a trade mark offends against the provisions of section twenty-eight". Two views have been taken of the corresponding section in the English Trade Marks Act, 1938. They may be broadly stated as follows. One is that a mark offends if at the time when proceedings to expunge it are commenced it answers to one of the descriptions in s. 28 of a mark which "shall not be registered". That is to say the question is, would it be registrable if registration were applied for at the time when expungement is sought? The other view is that, the mark being in fact registered, the inquiry is whether at the date when it was so registered it was of such a description that it ought not then to have been registered. The latter view has been generally accepted in England. But recently Diplock L.J., as he then was, firmly adopted the other position in his dissenting judgment in the Berlei v. Bali Case Unreported. in the Court of Appeal. In the ninth edition (1966) of Kerly on Trade Marks the learned editor has said at p. 270: "One of the most difficult problems of trade mark law is whether and to what extent it is a basic principle of the law that a properly registered mark which becomes deceptive may then be removed from the Register." The structure of some sections of our Act differs from that of the English provisions whence they were derived. English cases must be read with that in mind. But the same problem, and with it the same difficulties, arises under our Act. Considerations of policy can be invoked for either solution of it. Is a mark which was valid when registered to be removed because later events, perhaps the assiduous efforts of an infringer, have created a likelihood of confusion? On the other hand is a mark which ought not to have been registered, because deceptive or likely to be confused with another mark, to be later struck off the Register if any serious risk of confusion or deception has disappeared? The answer to these questions may lie in the discretion which it is said the Court has on an application for rectification under s. 22 if the mark be not on the face of it incapable of registration: see cases referred to in Kerly, op. cit. pp. 198-206. But the question I am at present considering is not whether s. 22 gives a discretion, but in what circumstances the protection given by seven years' registration is not available to the registered proprietor. If it were not for doubts engendered by the decisions to the contrary, I would have thought, from simply reading s. 61, that whether or not a mark is protected by its having stood for seven years depends upon whether it "offends" against the provisions of s. 28 at the date when its validity has to be determined. In the case of an application to rectify the Register, that time it seems to me must be when the Court comes to make or refuse the order for rectification which is sought. Whether or not such an order could be made depends, I think, upon circumstances then existing, including any happenings pendente lite. I do not think it depends upon a different state of things having existed at any earlier time. The present tense of the word "offends" is I think significant. But it does not really dispose of the difficulty. (at p134)

13. In the end the question comes I think to this: does a mark offend against the provisions of s. 28 because, contrary to the prohibition in that section, it was in fact registered; or, does it offend against those provisions because it now answers to one or other of the descriptions therein? The latter meaning is that which I would give to the words of s. 61; and I then ask myself whether now, when I have to determine the question, the Bali mark offends in that sense. In saying that I am merely stating what, as I read s. 61, I take to be the qualification of the immunity which the lapse of time, seven years, gives. Section 61 does no more than make registration conclusive of validity after seven years, subject to the exceptions specified. It does not itself provide grounds on which validity may be challenged and rectification had. That, for present purposes, depends upon s. 22 (1) (b).

Section 22 (1) (b). (at p134)

14. The question then is, is the mark BALI-BRA "an entry wrongly made in or remaining in the Register"? Is this an entry wrongly made? Is it an entry wrongly remaining? The first question, although it is to be presently answered, does relate to the year 1947, the time of registration. But in relation to it alone s. 61 would, I think, be effective. If no more can be said for the Berlei company than that the registration of BALI-BRA as a mark might have been successfully opposed by it in 1947, lapse of time has I think cured that. The second question therefore seems to me to be the critical one. Is the mark now wrongly remaining in the Register? It has been held that "an entry wrongly remains on the Register only when it can be shown that its continuance thereon offends against the provisions of some other section": Pan Press Publications' Applications (1948) 65 RPC 193, at p 200 ; see Kerly, op. cit. p. 271. Making the best sense I can of the provisions which have been justly said to raise a difficult question, I take their result to be that a mark can be said to be wrongly remaining in the Register if (a) it was at the date of registration not registrable by reason of s. 28, and (b) the character or quality which made it not registrable still exists at the date when an application that it be expunged has to be decided.

Section 28. Is the Bali mark a mark the use of which would be likely to deceive or cause confusion? (at p135)

15. The onus is on the applicant to shew that the mark should be expunged: s. 59 of the Act; Kerly, op. cit. p. 207. (at p135)

16. The words Berlei and Bali can each be pronounced in several ways. In some pronunciations, probably the most common forms, they are phonetically alike. But, to establish that the use of one of them, Bali, would be likely to deceive or cause confusion, more than that is required. The whole circumstances of the trade, as ordinarily conducted in goods of the kind to which the mark is applied, must be considered. BALI-BRA is registered as a mark in respect of brassieres only. BERLEI is registered in respect of clothing generally. But in fact corsets and brassieres are the main Berlei products; and it is in relation to goods of that sort that the name Berlei has been mainly used and has become known in Australia. From this springs the allegation that the continuance of the use of the word Bali for brassieres, which has been going on in Australia since 1960, is likely to cause confusion. (at p135)

17. The evidence before me consists of a large number of affidavits on each side - seventy-two in all - and of brassieres, advertising matter and other documents tendered as exhibits. Some paragraphs of some of the affidavits filed were objected to and I rejected them. Some other parts seemed to me only remotely relevant; but I allowed them to be read as they were not objected to. Some of the deponents of affidavits attended for cross-examination, and before being cross-examined gave oral evidence supplementing statements in their affidavits. I do not propose to discuss this great mass of evidentiary material in detail. I shall merely state certain conclusions which I think emerge from it in addition to the facts I have already stated. (at p135)

18. Some evidence of actual confusion was relied upon. It consisted of "trap orders" as they are called. A Bali brassiere was asked for in shops which did not stock them, and in response to this request a Berlei brassiere was tendered. There was no evidence, so far as I recall it, of any case in which a Bali article was tendered in response to a request for a Berlei. Trap orders by a person wishing to obtain evidence that an opponent's goods are being passed off as his goods are a common and entirely legitimate procedure, although they are sometimes looked at askance. But a trap order designed to establish that in response to a request for an opponent's goods a party is given his own is in my experience a less usual procedure. It tends to shew only that any confusion has operated to the advantage, not to the detriment, of the party who asks for his opponent's goods. To that extent it can be said that in this case it tends to shew that the Berlei company is not a "person aggrieved" (within the meaning of s. 22) by the presence of the Bali mark in the Register. The Berlei company cannot, founding on this evidence, bring itself within Lord Herschell's description of a person aggrieved in Powell's Trade Mark Case (Powell v. Birmingham Vinegar Brewery Co.) (1894) AC 8, at p 10 . But the power to rectify the Register so as to eliminate from it marks the use of which could cause confusion is a power to be exercised in the public interest. I think that the Berlei company had in this case a sufficient interest to enable it to bring this application, although I remained sceptical about counsel's suggestion that his client was seeking to expunge the Bali mark simply for the public benefit and to preserve the purity of the Register. What exactly the Berlei company would gain by the removal of the Bali mark from the Register was not clear to me. It could not, it seems, itself use the name Bali for any brassieres not those of the Bali company without the risk of becoming a defendant in a passing off action. And, on the evidence before me, it could not prevent the sale of the Bali company's brassieres as Bali brassieres, for if the Bali mark were removed from the Register as offending against s. 28, it would not, in my opinion, necessarily follow that the Berlei company could restrain its use as an infringement of the Berlei mark. However, I need not speculate as to the advantages which the Berlei company expects to gain if this application succeeds. (at p136)

19. In Re Rysta Ltd.'s Application in the Court of Appeal (1943) 60 RPC 87 , Luxmoore L.J. in his dissenting judgment said (1943) 60 RPC, at p 108 :

"The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of s. 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants." (at p137)

20. When the case reached the House of Lords, as Aristoc Ltd. v. Rysta Ltd. (1945) AC 68 , the judgment of Luxmoore L.J. on this point was approved. Lord Simonds said (1945) AC, at p 104 that the test should be

"to take the hypothetical case of a saleswoman, who has heard of 'Rysta' stockings but not of 'Aristoc' stockings, being asked by a customer whether she has any 'Aristoc' stockings. Is there in such a case a reasonable possibility that she will think that it is 'Rysta' stockings for which the customer is asking? The answer is necessarily one of first impression, but no doubt is left in my mind that there is a real danger of confusion." (at p137)

21. I do not think that those observations, pertinent though they are, can be taken as concluding this case. The facts of that case were peculiar. It was an application to register a mark opposed by the proprietor of a registered mark. This case is not an application to have a new mark entered in the Register, but an application to have a long-standing entry expunged. (at p137)

22. Ever since Eno v. Dunn (1890) 15 App Cas 252 it has been established that on an application for registration the onus is on the applicant to shew that there is no reasonable likelihood of deception. If the question is then left in dubio the application must be refused: see e.g. Jafferjee v. Scarlett (1937) 57 CLR 115, esp at p 122 . But, as I have said, in an application to expunge an entry in the Register the onus is on the applicant to shew that it ought not to remain. If and so far as that now involves considering whether or not when the mark in question was registered it ought not to have been registered, because likely to deceive or cause confusion, that is not to be decided by trying to put oneself back to the time of registration and trying to look at the matter as one would then have looked at it. Taking the present case - whether it should now be said that in 1947 the Bali mark was likely to deceive or cause confusion does not depend upon what answer would have been then given on the facts as then known. It depends on what, in the light of all the facts as now known, would have then been the correct answer. The likelihood of deception or confusion would then have to be judged by first impressions and prophecy as to probabilities. Today it is to be determined in the light of what actually happened. (at p138)

23. There is no suggestion that the similarity of the words Bali and Berlei is the result of deliberate imitation or of any attempt by either company to deceive or to pass off its goods as those of the other or to enable anyone else to do so. Each company apparently chose its mark in good faith - the Berlei company in Australia, the Bali company in the United States - without any thought at all of the other. The two marks have been honestly used concurrently for years, in Australia and in other countries. Thousands of Bali brassieres and tens of thousands of Berlei brassieres have been sold to the public in Australia through the same outlets, in the ordinary course of trade, without any deception or confusion being brought to notice. Those are facts of weight when it is said that one mark ought not now to remain in the Register: see Halsbury's Laws of England, 3rd ed., vol. 38, p. 592, and cases there cited. Against this was put the evidence of the trap orders. In some cases saleswomen in shops which did not stock Bali brassieres and who did not know of them had offered a Berlei brassiere when a Bali was asked for. In some other cases saleswomen in shops which did not stock Balis, or had none of the size required, had tendered a Berlei, and, when told that it was not what was wanted had said, not that they did not know of Balis, but that they had misunderstood what was asked for. In the affidavits there are accounts of conversations with the saleswomen - questions asked of, and answers given by them, either to the woman ordering the brassiere as a trap order or to someone accompanying her for the purpose of collecting evidence. This was not objected to. Nevertheless that a saleswoman, not called to give evidence, had said, by way of explanation or excuse, that she was mistaken or misheard what the customer asked for seems to me carrying hearsay rather far - especially if what she said was in a conversation not with the customer but with the man accompanying her. I have, however, given this hearsay due weight; and I have noticed, of course, what were the goods actually produced in response to the trap orders. Certainly many of the traps were set in good trapping country, in suburban shops which did not stock Bali brassieres. That does not mean that the evidence of them is to be discounted. It means only that it has to be considered as part of the evidence as a whole. (at p139)

24. The question is whether the use of the name Bali for brassieres is, or at any relevant time was, likely to cause confusion among any substantial number of persons buying brassieres in the normal course of business. The evidence is that many women buy brassieres after a fitting in a fitting room. Others buy them over the counter, sometimes asking for a particular brand and for a particular fitting, size, style and measurement. Some who buy over the counter, knowing the size, style and measurement they want, ask only for a brassiere of that kind and do not specify the brand or make. There is a standard form of notation descriptive of style, size and measurement generally used for all brands of brassieres. In the ordinary way of sale the article is shewn to the customer either in the fitting room or by displaying it on the counter. She sees it for herself and can if she wishes check the notation of size, etc., as shewn on the attached label. Many customers ordinarily do this. And any customer who wishes to have not only a particular size, style and fitting, but a particular brand or make, such as Berlei or Bali, can by looking at the label see if she is getting what she wants. (at p139)

25. Cases were cited to me from passages in judgments dealing with marks held to be, or held not to be, by reason of similarities, deceptive or confusing. I have read these cases, and others. I do not think I need discuss them. The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand. There are, however, a few observations I would make about item (a) in s. 28. It refers to an objective quality of the mark, "likely to deceive or cause confusion". A mark is "likely to deceive" - or in the words of s. 62 is "deceptively similar", which by s. 6 (3) means the same thing - because of its inherent tendency in use, independently of the purpose or intent of the user. That is to say a mark can be deceptive without being used deceitfully. The word "deceive", I take it, here has one of the meanings in the Oxford Dictionary, "to cause to believe what is false, to lead into error". This accords with Dr. Johnson's statement of its primary sense, which was given as "to cause to mistake, to bring into error". Lord Diplock, then Diplock L.J., said in the recent Berlei v. Bali Case Unreported. in the Court of Appeal that: "Unlike 'to deceive', 'to cause confusion' does not necessarily connote any intentional misrepresentation on the part of the user." With great respect for his Lordship's opinion, I doubt whether, in their context in relation to deceptive trade marks, the words "to deceive" necessarily predicate intentional misrepresentation. However, it is unnecessary to pursue this question, because the words "or to cause confusion" appear in s. 28 and in s. 6 (1952) 86 CLR 536, at p 538 . They apparently denote an alternative, differing from "to deceive". Under the earlier Act confusion was not expressly mentioned. It was then considered that a probability of confusion would establish that a mark was likely to deceive. The question of deceptiveness could, it was then said, be judged by asking whether "there will be a confusion in the mind of the public which will lead to confusion in the goods": per Lord Parker (then Parker J.) in Re Pianotist Co.'s Application (1906) 23 RPC 774, at p 777 , a passage quoted in this Court in Cooper Engineering Co. Pty. Ltd. v. Sigmund Pumps Ltd. (1952) 86 CLR 536, at p 538 . (at p140)

26. I need say no more of s. 28 (a) than that I am not satisfied that the use of the Bali mark is likely to deceive or cause confusion; and that the better it becomes known, the more Bali goods are sold, in the more shops, the less risk I think there will be of any confusion.

Section 28, item (d). (at p140)

27. In addition to saying that the Bali mark was likely to be confusing, the Berlei company claimed that it was "otherwise not entitled to protection in a court of justice", within the meaning of s. 28 (d). I had occasion last year in the case of Kimberly-Clark Corporation v. Vereinigte Papierwerke Schikedanz &Co. (1967) 118 CLR 79 to refer to this provision of s. 28. I do no more here than remind myself that, although the words of s. 11 of the English Act of 1938 are much the same as those of s. 28 of our Act, the arrangements of their words and their structures differ. The contention that the mark BALI-BRA was not entitled to protection in a court of justice was, as I understood the argument, put in two ways. Each depended on the fact that Bali is the name of a country. (at p140)

28. Section 24 (1) was referred to. So far as relevant, it reads:

"24 (1). A trade mark is registrable in Part A of the Register if it contains or consists of - . . . (d) a word not having direct reference to the character or quality of the goods in respect of which registration is sought and not being, according to its ordinary meaning, a geographical name or a surname." (at p141)

29. The term Bali-Bra is not a geographical name. It may be that the word Bali alone would not be registrable as a trade mark: see In re Boots Pure Drug Co.'s Trade Mark (the Livron Case) (1938) Ch 54 . But if that be so, and if the use of the word Bali as part of the mark disqualified it for registration, the mark as registered cannot now be removed from the Register, or held invalid on that ground, unless when these proceedings were commenced it was not distinctive of the goods of the Bali company: s. 60. The same expression, "not distinctive", is used in the third exception in s. 61, "that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor". This expression casts back to the meaning of distinctiveness in s. 26. (at p141)

30. It was conceded by the applicant that the name Bali, or Bali-Bra, had never been used in Australia at any time as a trade mark, or as any part of a trade mark, by anyone other than the Bali company. The allegation that it was not in November 1966 distinctive of the Bali company's goods amounted only to saying that the similarity of the words Berlei and Bali might blur the distinctiveness of either, and that Berlei was already in the field in Australia in 1947. This seemed to me to be not so much an allegation of a lack of distinctiveness of the word Bali as of the likelihood of confusion between it and Berlei; and with that I have already dealt. Therefore, as the mark has stood in the Register for three years, it gets the protection which s. 60 gives. (at p141)

31. It is said, however, that the presence of the word Bali makes the mark objectionable in another way. It was said that it would be taken as meaning that the goods were made in Bali: that, if in fact they were made there, the mark would not have qualified for registration because it would be "a direct reference to the character or quality of the goods" (s. 24): that, if in fact the goods were not made there, the mark would be a false representation that they were, and disqualified for registration by s. 28 (d). (at p141)

32. In reference to these alternative suggestions for the condemnation of the mark, I need say only of the first that the goods are not in fact made in Bali. Therefore, quite apart from s. 60, the mark cannot be attacked as a reference to their character or quality. As to the second, and alternative, proposition, there is no doubt that a mark which amounts to a false representation as to the nature and quality of goods is disentitled to protection in a court of justice: see per Lord Warrington of Clyffe in Bass, Ratcliff and Gretton Ltd. v. Nicholson &Sons Ltd. (1). But there is no evidence that anyone has thought that Bali bras are made in Bali. It seems to me most unlikely that members of the public who buy brassieres in Australia would think so. Bali is not famed or known as a country where such goods are made. Balinese women are not notable for wearing brassieres.

Section 33. (at p142)

33. Section 33 (1) disqualifies for registration a trade mark which is "substantially identical with or deceptively similar to" a trade mark already registered by another person "in respect of the same goods or of goods of the same description. I think this provision cannot avail the Berlei company. I do not think that BERLEI is substantially identical with BALI-BRA. Whether or not it is "deceptively similar" depends upon the definition in s. 6 (3) which is as follows:

"For the purposes of this Act, a trade mark shall be deemed to be deceptively similar to another trade mark if it so nearly resembles that other trade mark as to be likely to deceive or cause confusion."

I have already said that, in my opinion, the Bali mark does not answer that description. Moreover s. 33 cannot now be relied upon, because of the protection which, under s. 61, lapse of time has created. (at p142)

34. In the view I take it therefore becomes unnecessary to decide whether registrations for "articles of clothing" and for "brassieres" are, for the purposes of s. 33, "in respect of the same goods or of goods of the same description". I can leave that question aside.

Conclusion.

I think I have now dealt with all matters raised by counsel on each side in the comprehensive arguments they addressed to me. Something was said as to whether the Court has a discretion in an application for rectification pursuant to s. 22. The respondent referred indirectly to s. 34, relating to honest concurrent user. I do not think I need decide whether this application is for a discretionary remedy, as I do not think that the applicant established the grounds on which it relied. It did not satisfy me of facts which would justify an order that the entry of the mark BALI-BRA should now be expunged from the Register. (at p143)

35. I dismiss the application with costs. (at p143)

Orders

Application dismissed with costs.

Solicitors for the applicant, Stephen, Jacques &Stephen.

Solicitors for the respondent, Allen, Allen &Hemsley.

R. A. H.