Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd

Southern Cross Refrigerating Co. (applicant) sought to register the trade mark "Southern Cross" for refrigerators and parts thereof. Toowoomba Foundry Pty. Ltd. (opponent), the registered proprietor of the "Southern Cross" trade mark for machinery and engines, opposed the application. The opposition was based on sections 25 and 114 of the *Trade Marks Act 1905-1948* (Cth). The Registrar upheld the opposition on both grounds. The Law Officer allowed the application subject to a condition that the mark be applied only to domestic refrigerators. The opponent appealed to the High Court, where Kitto J. reversed the Law Officer's decision, refusing registration. The applicant then appealed to the Full Court of the High Court.

The legal issues before the Full Court were whether the applicant's goods (refrigerators) were of the "same description" as the opponent's goods (machinery and engines) for the purposes of section 25, and whether the use of the "Southern Cross" mark on refrigerators was "likely to deceive" within the meaning of section 114, thereby disentitling the applicant to registration.

The Full Court affirmed the decisions of the Law Officer and Kitto J. that section 25 was inapplicable, finding that refrigerators were not goods of the same description as the opponent's machinery and engines, despite some overlap in trade channels. The Court clarified that the inquiry under section 25 is limited and distinct from the inquiry under section 114. Regarding section 114, the Court held that the likelihood of deception is a separate consideration. Applying established principles, the Court found that the opponent had established a wide reputation for its "Southern Cross" branded goods, particularly in country districts. Evidence demonstrated that the use of "Southern Cross" on refrigerators was likely to cause confusion among a substantial portion of the public, leading them to believe the refrigerators originated from the opponent. The Court concluded that the probability of deception was real and could not be eliminated by the condition imposed by the Law Officer. Consequently, the appeal was dismissed, and the application for registration was refused.