Southern Cross Refrigerating Co v Toowoomba Foundry Pty
HIGH COURT OF AUSTRALIA
DIXON CJ, MCTIERNAN, WEBB,
FULLAGAR AND TAYLOR JJ
This is an appeal
under s. 44 of the Trade Marks Act 1905-1948 against a
decision of the Law Officer allowing an appeal from the Registrar of Trade
Marks. The Registrar had before him an application, made by one R. A. Houghton
under his trade name of Southern Cross Refrigerating Co., for the registration
of a trade mark consisting of the words “Southern Cross” in respect of gas
absorption refrigerators and electric refrigerators and parts thereof. The
application was opposed by the present appellant, Toowoomba Foundry Pty. Ltd.,
upon the ground, in effect, that the registration applied for was precluded by
the provisions of s. 25, or alternatively of s. 114, of the Act. The Registrar
upheld the objection, being of opinion that both the sections mentioned stood
in the way of the application. The Law Officer, on the other hand, considered
that s. 25 did not apply, and he was satisfied that s. 114 did not prevent
registration of the mark if it were made subject to the condition that the mark
should be applied to domestic refrigerators only. He accordingly granted the
application upon this condition.
for registration was lodged on 23rd April 1947, and it is in relation to that
date that I must consider the evidence which has been adduced on this appeal.
It differs considerably from the material which was before the Registrar and
the Law Officer, for the parties have taken full advantage of the fact that an
appeal under s. 44, notwithstanding its name, is a proceeding in the original
jurisdiction of the Court: Jafferjee v. Scarlett.
I shall put s. 25
out of the way at once, because I agree with the Law Officer in thinking that it is quite inapplicable to this case. It was relied upon
for its provision that, subject to the Act, the Registrar shall not register in
respect of goods a trade mark so nearly resembling one belonging to a different
proprietor which is already on the register in respect of the same description
of goods as to be likely to deceive. The appellant has trade marks on the
register consisting of the words “Southern Cross” in respect only of (i) well-drilling and boring machinery hand or power; (ii)
milking machines; (iii) engines and windmills. It has trade marks on the
register consisting of the device “S” over a cross in respect only of (iv)
windmills, engines, well-drilling machinery, pumps, pumping machinery, pump
rods, pump rod joints, crab winches, saw benches, motor pull-out winches,
belt-driven or gear-driven pumpheads; (v) all kinds of
tubing and valve cocks and fittings for same (of metan( � and (vi) milking
machines. None of these goods can be said to be of the same description as
I am concerned,
therefore, to consider only s. 114, the material provision of which is that no
mark, the use of which would by reason of its being likely to deceive or
otherwise be deemed disentitled to protection in a court of justice shall be
registered as a trade mark. The corresponding section of the English Act (s. 11
of the Trade Marks Act 1938 (Imp.)) is in the same terms with the
addition of the words “or cause confusion” after “likely to deceive”;
but, while these words make the section more specific, they add nothing to its
effect. In relation both to the English and to the Australian section there are
certain propositions which I think may be accepted as established by the cases.
I take them, substantially, from the judgment of Romer J.,
(as he then was), in In re Jellinek's Application: (i) In all applications for
registration of a trade mark, the onus is on the applicant to satisfy the
Registrar (or the court) that there is no reasonable probability of confusion.
(ii) It is not necessary, in order to find that a trade mark offends against
the section, to prove that there is an actual probability of deception leading
to a passing-off. While a mere possibility of confusion is not enough—for there
must be a real, tangible danger of its occurring (Reckitt & Colman
(Australia) Ltd. v. Boden; Sym Choon & Co.
Ltd. v. Gordon Choons Nuts Ltd.)—it is sufficient
if the result of the user of the mark will be that a number of persons will be
caused to wonder whether it might not be the case that the two products come
from the same source. It is enough if the ordinary person entertains a reasonable
doubt. (iii) In considering the probability of deception, all the surrounding
circumstances have to be taken into consideration. (This includes the
circumstances in which the marks will be used, the circumstances in which the
goods will be bought and sold, and the character of the probable purchasers of
the goods: Jafferjee v. Scarlett). (iv) In applications for registration, the rights of the
parties are to be determined as at the date of the application. (v) The onus
must be discharged by the applicant in respect of all goods coming within the
specification in the application (pursuant to s. 32 (2)) of the goods or class
of goods in respect of which the registration is desired, and not only in
respect of those goods on which he is proposing to use the mark immediately.
And the onus is not discharged by proof only that a particular method of user
will not give rise to confusion. The test is, what can the applicant do if he
The second of
these propositions was said by Mr. Thomas to be inconsistent
with some of the language used in the judgments in Reckitt & Colman
(Australia) Ltd. v. Boden. The proposition
means that a probability of confusion, if it is real, is sufficient under s.
114 even though the confusion may be unlikely to persist up to the point of,
and be a factor in, inducing actual sales. I find nothing to suggest the
contrary in the Reckitt & Colman
Case. Of course, it is
in relation to commercial dealings with goods that the question of confusion
has to be considered, and the persons whose state of mind is material are the
prospective or potential purchasers of goods of the kind to which the applicant
may apply his mark. References to these persons as purchasers or customers, and
to buying and selling, in the Reckitt & Colman Case as in many
others, indicate nothing more than a recognition of this fact. Latham C.J.  gave as the
ground for denying the probability of deception that ordinary purchasers “purchasing
with ordinary caution” were not likely to be misled. Upon these words Mr. Thomas founded
a submission which, as I understood it, amounted to this, that there cannot be
a likelihood of deception sufficient to prevent registration under s. 114, if
ordinary caution would lead an ordinary purchaser, in whose mind confusion had
been engendered by the mark, to inquire into the origin of the goods, and if a
competent seller of the goods, acting competently and honestly, would be likely
to answer the inquiry in such a way as to dispel the confusion before a sale
took place. I do not find any support for this proposition in the words of the
Chief Justice, and I do not accept it as correct. His Honour had no occasion to
advert in that case, and in using the word “misled” he was not in fact
adverting, to the distinction between an initial confusion which may or may not
be quickly dispelled and one which continues up to and enters into an actual
sale. The second of the propositions I have set out has the authority, not only
of Romer L.J., but also of
Lord Morton, who, as Morton J., said in Re
Hack's Application: “The
question whether a particular mark is calculated to deceive or cause confusion
is not the same as the question whether the use of the mark will lead to
passing-off. The mark must be held to offend against the provisions of s. 11 if
it is likely to cause confusion or deception in the minds of persons to whom
the mark is addressed, even if actual purchasers will not ultimately be
undisputed evidence is that over the past fifty years the appellant company has
built up throughout Australia a wide reputation for its goods, and especially
for its windmills and other water-supply equipment, milking machines,
internal-combustion engines and electric generators and motors, under the
name “Southern Cross”. The device of an “S” superimposed on a cross
has also been widely used on goods produced by the appellant. The name “Southern
Cross” is particularly well-known in country districts. The appellant has
caused subsidiary companies to be incorporated in order to take over the
selling and servicing of its products in New South Wales (two companies),
Victoria, Queensland (two companies), South Australia and Western Australia,
and in each instance the words “Southern Cross” are the leading words of
the subsidiary company's name. These companies amongst them are represented
throughout the continent by more than 600 distributors, many of whom sell, in
addition to the appellant's products, goods of other kinds including
refrigerators. By means of the organization thus established, the appellant's
products, practically all under either the name “Southern Cross” or the device
of “S” superimposed on a cross, have supplied for half a century an
important part of the needs of this country for pastoral and homestead
equipment. It has advertised its goods by the name “Southern Cross”
continuously and widely, and retailers also have advertised them by that name.
I am satisfied that amongst a large section of country people, and amongst many
city dwellers also, “Southern Cross” in relation to equipment of the
general description I have mentioned means goods produced by the appellant.
This being so, I
should think it prima facie probable that, if a refrigerator, even a domestic
refrigerator, were to come onto the market under the name “Southern
Cross”, many people, and especially country people, would infer from the name
that this represented an addition, and by no means an incongruous addition, to
the items comprising the appellant's catalogue of products. It is apparent from
the evidence that to commence supplying refrigerators would be not at all an
unnatural extension of a business such as the appellant's. In fact during 1937
and 1938 the appellant itself distributed some electric refrigerators of both
domestic and station types under the “Southern Cross” trade mark; and not
only do a number of the appellant's active competitors in the market for the
products it now distributes include refrigerators amongst their wares, but
country retailers who deal in the appellant's products or competing products
commonly display and sell refrigerators in the same stores and showrooms.
But the matter
does not by any means rest there. Fourteen persons from various parts of the
Commonwealth have made affidavits testifying that they themselves, having seen
either refrigerators bearing the brand “Southern Cross” or advertisements
for “Southern Cross” refrigerators, associated them at once with the
business which produced “Southern Cross” windmills, lighting plants,
milking machines and engines. Of these persons, all but three gave oral
evidence and were cross-examined, and I found their evidence entirely
convincing. Three of them actually completed purchases of refrigerators under a
wrong impression created by the name “Southern Cross”. Another six, who
were not cross-examined, deposed on affidavit to having received inquiries from
members of the public in contexts which showed that the inquirers had
understood the “Southern Cross” name to indicate a connection with the
appellant's business. Those who gained a wrong impression from the use of “Southern
Cross” on the respondent's refrigerators included people in the trade, a
refrigerator mechanic, a refrigerator salesman, several men on the land, and a
wharf-checker. In the main, this class of evidence related to the period
1948-1949, but the inference as to the probability of confusion in April 1947
A number of
persons made affidavits which were read on behalf of the respondent. I do not
propose to go through them in detail here, because, giving their contents the
utmost attention, I fail to find in them any reason to doubt the correctness of
the strong impression which the appellant's evidence creates on my mind, that
in 1947 the use of the words “Southern Cross” on refrigerators produced by
the respondent, whether station or domestic, would be very likely indeed to
cause confusion amongst a substantial portion of the public.
Some reliance was
placed by counsel for the respondent upon the fact that “Southern Cross” trade marks are found on the register in respect of quite a
wide variety of goods, such as sheet iron, paper, wines and spirits, preserved
ginger and preserved fruits, golf balls, binder twine, pickles, tobacco,
hosiery, chemicals and matches. Subject to one exception, there is no evidence
before me that such marks have been used upon any of these goods, but, in any case,
the nature of the goods to which they are applicable provides a sufficient
reason for ignoring them. The exception is the case of John Lysaghts
Ltd., which is the proprietor of a “Southern Cross” mark in respect of
galvanized iron and wire, fencing wire, sheet iron, plate iron, bar iron and
boiler plates. This company has used its mark for galvanized and black iron
sheets produced for manufacturing purposes. It supplies just such sheets to the
appellant company for the manufacture of some of its goods. But I put aside
altogether these “Southern Cross” marks owned by others than the
appellant, because there is nothing in the evidence concerning them to lead me
to discount the powerful case made by the appellant, to the effect that,
because of the reputation its goods had acquired under its registered marks at
the relevant date in 1947, there was then a serious likelihood that confusion
would arise if a “Southern Cross” mark were to be used by anyone else upon
In the result I do
not find it necessary to rest my decision on the onus of proof. Even if the
onus were upon the appellant, I should regard it as satisfactorily discharged.
The probability of deception which I have found to exist could not be removed
by imposing the condition which the Law Officer, on the material that was
before him, thought would provide a sufficient safeguard. For the reasons I
have given, the determination of the Law Officer and his award as to costs
should be set aside, and it should be determined that the respondent's
application for registration ought to be refused. The respondent must pay the
appellant's costs of this appeal and the costs of the proceedings before the
Law Officer (the latter costs being fixed, as the Law Officer fixed them, at
seventy guineas). The award originally made by the Registrar as to the costs of
the proceedings before him will be restored.
This is an appeal from an order made by Kitto J. in an appeal, pursuant to s. 44 of
the Trade Marks Act 1905-1948, from a determination of the Law Officer
made under s. 43 of that Act. The order appealed from set aside that
determination and, in effect, upheld the initial refusal by the Registrar of an
application by the appellant for registration of the words “Southern
Cross” as a trade mark in respect of “Gas absorption
refrigerators and electric refrigerators and parts thereof”. Subsequently to
the lodging of the application an amendment was sought to limit the application
to “Domestic refrigerators”, but this amendment was
not granted before the hearing of the application for registration. In
determining that the application should be granted the Law Officer, however,
specified, as a condition of the granting of the application, that the mark
should be applied only to domestic refrigerators, and the appellant did not
either before Kitto J. or before the Full
Court claim that the application should be granted in respect of any wider
specification of goods.
The respondent company was incorporated in
the State of Queensland in the year 1884 under the name of Toowoomba Foundry
& Railway Rolling Stock Manufacturing Co. Ltd. In 1922 its name was changed
to Toowoomba Foundry Co. Ltd. and in 1932 it assumed its present name. The
principal objects for which the appellant company was formed were the carrying
on of the business of hydraulic engineers, sawmillers,
iron and brass founders, smiths, boilermakers and railway rolling stock
manufacturers and for many years now it has manufactured and sold windmills and
water supply equipment, internal combustion engines, milking machines, electric
generating plants and electric motors. For the purpose of undertaking the sale
and service of the company's products throughout New South Wales a company
known as the Southern Cross Windmill Co. Ltd.—now the Southern Cross Engine and
Windmill Co. Pty. Ltd.—was formed in 1918. This company has counterparts
bearing similar names in the States of Western Australia, Victoria and South
Australia, whilst two other companies—Southern Cross Equipment Pty. Ltd. and
Southern Cross Machinery Co. Pty. Ltd.—have been formed in recent years to take
over from the appellant company the sale and service of the latter's products
in Central and Western Queensland and Northern Queensland respectively. The
shares in each of these selling and servicing companies are held by or on
behalf of a company known as Industrial Investments Pty. Ltd., a company which
was formed in Queensland in 1949. The shares in the latter company are held by
or on behalf of those shareholders who hold the issued capital of the
respondent company. In the year 1947 there were throughout Australia more than
six hundred distributors of the respondent's products, each of whom was in
close touch with one of the selling companies in the various States.
At the time of the
appellant's application the respondent was the registered proprietor of the
trade mark “Southern Cross” in respect of the following goods: (1) manual
and power well-drilling and boring machinery; (2) milking machines; (3) engines
and windmills. Additionally it had trade marks on the register consisting of
the device “S” over a cross in respect of (1) windmills, engines,
well-drilling machinery, pumps, pumping machinery, pump rods, pump rod joints,
crab winches, saw benches, motor pull-out winches, belt-driven or motor-driven pumpheads; (2) all kinds of tubing and valve cocks and
fittings for same (of metan( � and (3) milking machines.
opposition to the appellant's application for registration was based upon the
provisions of s. 25 of the Act and, alternatively, upon the provisions of s.
114. Both the Law Officer and Kitto J.
were of opinion that s. 25 had no bearing on the case because the application
for registration was not made in respect of “the same goods or description
of goods” as those in respect of which the respondent's mark “Southern
Cross” had been registered. Little discussion took place on this appeal with
respect to the applicability of s. 25 and, although counsel for the respondent
did not abandon the objection based on this section, it is sufficient to say
that we agree that this issue should be decided against the respondent. But in
view of the primary argument which was addressed to us on the appeal it is not
out of place to refer briefly to the matters which require consideration in
cases where it is material to consider whether an applicant's goods are the
same as or of the same description as those of an opponent.
The fact that
examination of the nature of the applicant's goods may, by itself, induce an
observer to conclude that they are different in character from those of an
opponent, and designed to serve different purposes, is by no means conclusive.
Nor is the fact that the applicant's goods are not specified by the regulations
as being within the same class of goods: see In re The Australian Wine
Importers Ltd. and Reckitt
& Colman (Australia) Ltd. v. Boden per Latham C.J. There may be many
matters to be considered apart from the inherent character of the goods in
respect of which the application is made and some indication of what matters
are relevant to this inquiry was given by Romer J.
in In re Jellinek's
Application. Romer J. thought it necessary to look beyond
the nature of the goods in question and to compare not only their respective
uses but also to examine the trade channels through which the commodities in
question were bought and sold. Shortly after the decision in Jellinek's Case the
Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: “In
arriving at a decision upon this issue the reported cases show that I have to
take account of a number of factors, including in particular the nature and
characteristics of the goods, their origin, their purpose, whether they are
usually produced by one and the same manufacturer or distributed by the same
wholesale houses, whether they are sold in the same shops over the same
counters during the same seasons and to the same class or classes of customers,
and whether by those engaged in their manufacture and distribution they are
regarded as belonging to the same trade. In the case of Jellinek's Application, Romer J. classified these various factors under
three heads, viz., the nature of the goods, the uses thereof, and the trade
channels through which they are bought and sold. No single consideration is
conclusive in itself, and it has further been emphasized that the
classifications contained in the schedules to the Trade Marks Rules are not a
decisive criterion as to whether or not two sets of goods are ‘of the same
description’”: In re an Application by John Crowther & Sons (Milnsbridge) Ltd. Much the same
considerations are evident in the observation of Dixon J. (as
he then was) in Reckitt & Colman (Australia) Ltd. v. Boden when he
said: “What forms the same description of goods must be discovered from a
consideration of the course of trade or business. One factor is the use to
which the two sets of goods are put. Another is whether they are commonly dealt
with in the same course of trade or business. In the present case, the goods
are quite different, their uses are widely separated and they are not commonly
sold in the same kinds of shops or departments”.
Giving full weight
to all of these matters we are satisfied that s. 25 has no application to this
case. The goods to be compared and their respective uses are vastly different
and, though the evidence shows that in the course of marketing and distribution
there may be substantial points of contact, the evidence does not lead to the
conclusion that the goods of the appellant are of the same description as
those of the respondent.
We have thought it
necessary to make some reference to the matters proper for consideration in
relation to this issue under s. 25 for the argument of the appellant seizes upon
them and asserts that once these matters have been considered and the relevant
issue answered in favour of an applicant it is impossible to say that the use
by him, with respect to his goods, of the trade mark in question would be “likely
to deceive” within the meaning of s. 114. Whilst conceding that the likelihood
of deception is not as great where, in no sense, can it be said that an
applicant's goods are the same or of the same description as those of an
opponent, it is quite clear that the latter finding by no means disposes of the
relevant inquiry under s. 114. To suggest that it does really confuses the
nature of the inquiry which arises under s. 25 for it is not sufficient in
order to reach the conclusion that an applicant's goods are of the same
description as those of an opponent, merely, to find that in the course of
marketing there is a likelihood of deception taking place; the inquiry is much
more limited and must be answered in favour of the applicant unless upon an
examination of the material matters the conclusion is justified that the
applicant's goods ought to be regarded as being of the same description as
those of the opponent. This is far from saying that if the evidence shows a
probability or likelihood of deception such a conclusion would be justified.
Indeed, if it were not a distinct and separate inquiry it would be impossible
to reconcile the multitude of cases—of which In re Jellinek's Application and Reckitt
& Colman (Australia) Ltd. v. Boden are
themselves examples—in which it has been thought necessary to consider the
likelihood of deception notwithstanding a finding that the respective goods of
the applicant and the opponent were not the same or of the same description.
whether it is likely that deception will result from the use of a mark which is
the same as, or which closely resembles, a trade mark already in use may, and
frequently will, require the consideration of matters additional to and
distinct from those which are relevant to an inquiry under s. 25. It may be of
importance to see whether the registered mark is general or special in
character and to ascertain the extent of its reputation. Again, it may be
important to see whether the goods in respect of which it is registered
constitute a narrow class or a wide variety of goods as also will be the
question whether the goods of both the applicant and the opponent will be
likely to find markets substantially in common areas and among the same classes
of people. It is, of course, for the person applying for registration to
establish that there is no likelihood of confusion and we agree with Kitto J. that registration should be refused if
it appears that there is a real risk that “the result of the user of the
mark will be that a number of persons will be caused to wonder whether it might
not be the case that the two products came from the same source”; it is, of
course, not necessary that it should appear that the user of the mark will lead
to passing-off: see per Morton J. (as he then was) in In re Hack's Application. Further, it is
not enough for the applicant “to negative the likelihood of confusion in
relation to the actual trade carried on by the opponent at the time of
registration and to the manner in which the latter then uses his mark. The
applicant must also take into account all legitimate uses which the opponent
may reasonably make of his mark within the ambit of his registration”: Reckitt
& Colman (Australia) Ltd. v. Boden per Dixon J.
(as he then was).
The second branch
of the appellant's argument asserted that the question of fact under s. 114,
which was decided adversely to him, should, upon the evidence, have been
decided otherwise. In our opinion, there was, however, abundant evidence to
justify his Honour's conclusion; there was evidence which his Honour
found “entirely convincing” and we find it of equal cogency. Not only was
there evidence which established the probability of confusion but, also, quite
substantial evidence of actual confusion. But the appellant claims that any
actual or probable confusion had proceeded or would proceed from a belief that
the respondent had a monopoly of the “Southern Cross” mark. This mistaken
belief, it was said, alone had led to the actual confusion deposed to and this
circumstance operated to strip the evidence of real weight. We do not agree. In
part the confusion resulted from the use by the appellant of a mark which had
long and widely been used by the respondent, in part from the fact that it was
a mark which had been used by the latter with respect to such diverse objects
as both manual and power well-drilling and boring machinery, milking machines
and engines and windmills, in part from the fact that in the course of business
those articles frequently are and have, for a long time, been sold in country
stores where, side by side with them, domestic refrigerators are stocked and
sold, and last, but not least, from the circumstance that the name “Southern
Cross” is a mark of a general character and—as appears from what we have
already said—of a wide and varied significance. A careful scrutiny of the
evidence convinces us that the respondent made out a clear case, not only that
a user of the mark by the appellant for the purposes proposed by it would be
likely to deceive, but that it has already done so in a not inconsiderable
number of cases. In those circumstances we do not propose, nor do we think it
necessary to traverse the whole of the facts again.
For the reasons
given we are of opinion that the appeal should be dismissed.
(1937) 57 C.L.R. 115.
(1946) 63 R.P.C. 59, at p. 78.
(1945) C.L.R. 65, at pp. 94, 95.
(1949) 80 C.L.R. 65, at p. 79.
(1937) 57 C.L.R. 115, at p. 120.
(1945) 70 C.L.R. 84.
(1945) 70 C.L.R., at p. 90.
(1940) 58 R.P.C. 91.
(1940) 58 R.P.C. 91, at pp. 103, 104.
(1889) 41 Ch. D. 278, at p. 291.
(1945) 70 C.L.R. 84, at p. 90.
(1946) 63 R.P.C. 59.
(1946) 63 R.P.C. 59.
(1946) 63 R.P.C. 59.
(1948) 65 R.P.C. 369, at p. 372.
(1945) 70 C.L.R. 84.
(1945) 70 C.L.R., at p. 94.
(1946) 63 R.P.C. 59.
(1945) 70 C.L.R. 84.
(1940) 58 R.P.C. 91, at p. 103.
(1945) 70 C.L.R., at pp. 94, 95.