Remington v Welsbach Light Company of Australasia

[1914] HCA 54

19 CLR 237

REMINGTON AND ANOTHER

WELSBACH LIGHT COMPANY OF AUS-

RESPONDENTS. TRALASIA

ON APPEAL FROM THE SUPREME COURT OF Trade Mark-Passing - off - Mark likely to deceive-Injunction-Damages

The plaintiffs, who were the registered proprietors of a trade mark, had the mark stamped on electric lamps and also on gas burners sold by them, and they had advertised and sold the gas burners so marked under the name of " Australite burners, so that these had come to be known by that name to the public and the trade as being goods of the plaintiffs. The defendants had stamped on electric lamps sold by them the word Australite " in con- junction with a device similar in part to the trade mark of the plaintiffs. In an action for infringement the plaintiffs obtained an injunction restraining the defendants from selling or passing off their electric lamps as and for the lamps of the plaintiffs, and also damages. On appeal to the High Court,

Held, on the evidence, that the plaintiffs were entitled to retain the injunc- tion, but not the damages.

Decision of the Supreme Court of Victoria (Hood J.) affirmed with a

APPEAL from the Supreme Court of Victoria.

An action was brought in the Supreme Court by the Welsbach Light Co. of Australasia against Odin Leigh Remington and Joseph Allison Remington, carrying on business under the style

19 CLR 238

of Newton's Electrical Stores, for infringement of trade mark and for passing off. The plaintiffs, who carried on business in Mel- bourne as manufacturers and vendors of gas and electric appli- ances, including electric lamps, were the proprietors of a trade mark for lamps and burners of which the following is a representation :- This trade mark and also the word Welsbach" were stamped on electric metallic filament lamps sold by the plaintiffs. The plaintiffs also sold gas burners inclosed in glass bulbs, similar to those of electric metallic filament lamps, upon which their trade mark and the words Welsbach Light. Made in Germany" were stamped. The plaintiffs for some years advertised and sold the gas burners SO marked as "Australite" burners, and they alleged that such burners had become known by that name to the public and the trade as being made by them. The defen- dants, who dealt only in electrical appliances, sold an electric lamp upon which was stamped a device of which the following is a representation:-

The action was heard by Hood J., who found that the plaintiffs' gas burners marked as above described had become known as

Australite" burners to the public and in the trade as their pro- duction, and that the defendants had placed a mark on their

19 CLR 239

goods which was calculated to induce intending purchasers of the plaintiffs' goods to believe that the defendants' goods were those of the plaintiffs, but he found that there was no infringe- ment. He therefore ordered that the defendants should be restrained from advertising or offering for sale or selling or attempting to sell or in any way passing off or attempting to pass off their metallic filament lamps bearing the device of a circle with lines projecting therefrom at equal intervals together with the word 'Australite" as and for the plaintiffs' metallic filament lamps, save and except 218 of such lamps which were still in the possession of the defendants. He also ordered the defen- dants to pay £77 3s. 9d. as and by way of damages.

From this decision the defendants appealed to the High Court. Schutt (with him Owen Dixon), for the appellants. Mann (with him Lowe), for the respondents. Reference was made during argument to Bowden Wire Ltd. V. Bowden Brake Co. Ltd. 1; Burberrys v. J. C. Cording &Co. Ltd. 2; Dunlop Pneumatic Tyre Co. Ltd. v. Dunlop Motor Co. Ltd. 3; W. H. Burford &Sons Ltd. v. G. Mowling &Son 4 Bendigo and Country Districts Trustees and Executors Co. Ltd. v. Sandhurst and Northern District Trustees, Executors and Agency Co. Ltd. 5; Williams v. Osborne 6; Slazenger &Sons v. Spalding &Brothers 7; "Singer" Machine Manufac- turers v. Wilson 8; Schweppes Ltd. v. E. Rowlands Proprietary Ltd. 9; Proctor v. Bayley 10 Schweppes Ltd. v. Gibbens 11 Hennessy &Co. v. Keating 12 Payton &Co. Ltd. v. Snelling, Lampard &Co. Ltd. 13; Warwick Tyre Co. Ltd. v. New Motor and General Rubber Co. Ltd. 14; In re Guttapercha and India Rubber Co. of Toronto's Applications 15; Weingarten Bros.

130 R.P.C., 609. 226 R.P.C., 693. 323 R.P.C., 761 ; 24 R.P.C., 572. 48 C.L.R., 212. 59 C.L.R., 474. 613 LT. (N.S.), 498. 7(1910) 1 Ch., 257. 83 App. Cas., 376. 911 C.L.R., 347. 1042 Ch. D., 390, at p. 400. 1122 R.P.C., 113; 601. 1225 R.P.C., 125. 1317 R.P.C., 48 ; 628. 14(1910) 1 Ch., 248, at p. 254. 15(1909) 2 Ch., 10, at p. 15. 19 CLR 240

v. Charles Bayer &Co. 1; Edelsten v. Edelsten 2; Sebastian

on Trade Marks, 5th ed., p. 272; Kerly on Trade Marks, 3rd ed.,

REMINGTON p. 453.

Cur. adv. vult. The judgment of the COURT was delivered by

GRIFFITH C.J. There is no question of law in this case, but the questions for decision are mere questions of fact, as to which the functions of the Court are analogous to those of a jury. Having considered the evidence, the Court is of opinion that the respondents are entitled to retain the injunction, but that they are not entitled to the damages awarded to them.

Appeal dismissed. Judgment appealed

from varied by omitting award of damages. Appellants to pay costs of appeal. Solicitors, for the appellants, Woolcott &Drysdale. Solicitors, for the respondents, Hodgson &Finlayson.

122 R.P.C., 341, at p. 350. 2