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Cadbury-Schweppes Pty Ltd v Pub Squash Company Pty Ltd

Weekly Law Reports Cited authorities 4 Cited in 434 Precedent Map Related
Vincent
JurisdictionUK Non-devolved
Judgment Date1981
Date1981
Year1981
CourtPrivy Council
[PRIVY COUNCIL] CADBURY-SCHWEPPES PTY. LTD. AND OTHERS APPELLANTS AND PUB SQUASH CO. PTY. LTD. RESPONDENT [APPEAL FROM THE SUPREME COURT OF NEW SOUTH WALES, EQUITY DIVISION] 1980 June 23, 24, 26, 30; July 1; Oct. 13 Lord Wilberforce, Lord Edmund-Davies, Lord Fraser of Tullybelton, Lord Scarman and Lord Roskill

Passing Off - Risk of confusion - Imitation of trading style - Use of name “Pub Squash” for lemon drink - Name, get-up and advertising campaign imitative of slogans and visual images used in competitor's advertising - Whether sufficient to establish passing off - Relevant date for establishing reputation of product

In 1974 the plaintiffs launched on the market a new canned lemon drink. The launch was supported by an extensive advertising campaign on radio and television. In 1975 the defendant launched a similar drink and adopted an advertising campaign and chose and registered as a trade mark a name based on the theme and slogans of the plaintiffs' advertising. The sales of the plaintiffs' drink declined and they brought an action against the defendant for damages and an injunction in respect of passing off, expungement from the Register of Trade Marks and a claim in respect of unfair trading. In giving judgment the judge first considered the issue of passing off and decided that on the facts the defendant had sufficiently differentiated its product from that of the plaintiffs. He then considered the issue of unfair trading and found that the defendant had deliberately set out to exploit the market created by the plaintiffs but that since the defendant had made no relevant misrepresentation there had been no unfair trading. He also decided that the relevant date for determining whether a plaintiff had established the necessary goodwill to support a claim of passing off was that of the commencement of proceedings. He dismissed the action.

On the plaintiffs' appeal to the Judicial Committee:—

Held, dismissing the appeal, (1) that although the tort of passing off was wide enough to encompass descriptive material such as slogans and visual images used in an advertising campaign on radio and television provided that they had become part of the goodwill of the product, a deliberate imitation of another's goods, get-up, method of trading or trading style did not in itself amount to a deception sufficient to constitute passing off and that to establish the tort it was necessary for a plaintiff to show that the defendant had confused or misled the market into thinking that his product was that of the plaintiff; and that, accordingly, since the judge's findings that the defendant had sufficiently differentiated its drink from that of the plaintiffs and that the defendant had made no relevant misrepresentation were inferences which could properly be drawn from his primary findings of fact and, taking the judgment as a whole, the judge had not misled himself by its structure as to the relevance to the issue of deception of the defendant's intention to take advantage of the plaintiffs' advertising campaign, the judge had not erred in finding that the plaintiffs had not made out their case of passing off and unfair trading (post, pp. 198F–G, 200D–H, 202H, 203G–204B, 205G–H).

(2) That the relevant date for determining whether a plaintiff had established the necessary goodwill or reputation of his product to support an action of passing off was the date of the commencement of the conduct complained of but that since it was clear that in coming to his decision the judge had directed his mind to the facts as they had been at that date, his error in stating that the relevant date was that of the commencement of proceedings was immaterial to the result (post, p. 204C–E).

Decision of the Supreme Court of New South Wales, Equity Division affirmed.

The following cases are referred to in the judgment of their Lordships:

Cheney Brothers v. Doris Silk Corporation (1929) 35 F. 2d. 279.

Felton v. Mulligan (1971) 124 C.L.R. 367.

Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Pty. Ltd. (1978) 52 A.L.J.R. 392.

International News Service v. Associated Press (1918) 248 U.S. 215.

Leather Cloth Co. Ltd. v. American Leather Cloth Co. Ltd. (1865) 11 H.L.Cas. 523, H.L.(E.).

Kark (Norman) Publications Ltd. v. Odhams Press Ltd. [1962] 1 W.L.R. 380; [1962] 1 All E.R. 636 [1962] R.P.C. 163.

Reddaway & Co. Ltd. v. Banham & Co. Ltd. [1896] A.C. 199, H.L.(E.).

Slazenger & Sons v. Feltham & Co. (1889) 6 R.P.C. 531, C.A.

Spalding (A.G.) and Brothers v. A.W. Gamage Ltd. (1915) 32 R.P.C. 273; 84 L.J. Ch. 449, H.L.(E.).

Victoria Park Racing and Recreation Grounds Co. Ltd. v. Taylor (1937) 58 C.L.R. 479.

Warnink (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd. [1979] A.C. 731; [1979] 3 W.L.R. 68; [1979] 2 All E.R. 927, H.L.(E.).

The following additional cases were cited in argument:

Ash (Claudius) Sons & Co. Ltd. v. Invicta Manufacturing Co. Ltd (1911) 28 R.P.C. 252; 28 R.P.C. 597, C.A.; (1912) 29 R.P.C. 465 H.L.(E.).

Attorney-General for Trinidad and Tobago v. Eriche [1893] A.C. 518, P.C.

Australian Consolidated Press Ltd. v. Uren [1969] 1 A.C. 590; [1967] 3 W.L.R. 1338; [1967] 3 All E.R. 523, P.C.

Australian Woollen Mills Ltd. v. F.S. Walton and Co. Ltd. (1937) 58 C.L.R. 641.

Baxter v. Commissioners of Taxation, New South Wales (1907) 4 C.L.R. 1087.

Bear (Thomas) & Sons (India) Ltd. v. Prayag Narain & Jagennath (1940) 58 R.P.C. 25, P.C.

Beaudesert Shire Council v. Smith (1966) 120 C.L.R. 145.

Benmax v. Austin Motor Co. Ltd. [1955] A.C. 370; [1955] 2 W.L.R. 418; [1955] 1 All E.R. 326, H.L.(E.).

Burberrys v. J.C. Cording & Co. Ltd. (1909) 26 R.P.C. 693.

Burger King Corporation v. Registrar of Trade Marks (1973) 128 C.L.R. 417.

Cellular Clothing Co. Ltd. v. Maxton & Murray [1899] A.C. 326, H.L.(Sc.).

Chemical Corporation of America v. Anheuser-Busch Inc. (1962) 306 F. 2d 774.

Christy & Co. v. Tipper & Son (1904) 21 R.P.C. 97.

Connecticut Fire Insurance Co. v. Kavanagh [1892] A.C. 473, P.C.

Con-Stan Industries Pty. Ltd. v. Satinique Corporation Pty. Ltd. (1969) 91 W.N. (N.S.W.) 563.

F.M.C. Engineering Pty. Ltd. v. F.M.C. (Australia) Ltd. [1966] V.R. 529.

Fairfax (John) & Sons Pty. Ltd. v. Australian Consolidated Press Ltd. [1960] S.R. (N.S.W.) 413.

Flexitized Inc. v. National Flexitized Corporation (1964) 335 F. 2d 774.

General Electric Co. (of U.S.A.) v. General Electric Co. Ltd. [1972] 1 W.L.R. 729; [1972] 2 All E.R. 507, H.L.(E.).

Gilbey (W. & A.) Ltd. v. Continental Liqueurs Pty. Ltd. (1960) 103 C.L.R. 406.

Harrods Ltd. v. R. Harrod Ltd. (1923) 41 R.P.C. 74, C.A.

Hexagon Pty. Ltd. v. Australian Broadcasting Commission [1976] R.P.C. 628.

Hunter Douglas Australia Pty. Ltd. v. Perma Blinds (1970) 122 C.L.R. 49.

Lansell v. Lansell (1964) 110 C.L.R. 353.

Leahy, Kelly and Leahy v. Glover (1893) 10 R.P.C. 141, H.L.(E.).

Marengo v. Daily Sketch and Sunday Graphic Ltd. (1948) 65 R.P.C. 242, H.L.(E.).

Oertli (T.) A.G. v. E. J. Bowman (London) Ltd. [1957] R.P.C. 388, C.A.; [1959] R.P.C. 1, H.L.(E.).

O'Sullivan v. Noarlunga Meat Ltd. [1957] A.C. 1; [1956] 3 W.L.R. 436; [1956] 3 All E.R. 177, P.C.

Perpetual Executors Trustees and Agency Co. (W.A.) Ltd., as Executor of the will of Patrick Andrew Conolly, decd. v. Maslen and Commonwealth of Australia [1952] A.C. 215, P.C.

Philco Corporation v. Phillips MFG Co. (1943) 133 F. 2d 663.

Pioneer Express Pty. Ltd. v. Hotchkiss (1958) 101 C.L.R. 536.

Plomien Fuel Economiser Co. Ltd. v. National School of Salesmanship Ltd. (1943) 60 R.P.C. 209, Morton J. and C.A.

Reg. v. Green; Ex parte Cheung Cheuk To (1965) 113 C.L.R. 506.

Samuelson v. Producers' Distributing Co. Ltd. [1932] 1 Ch. 201, C.A.

Schweppes Ltd. v. Gibbens (1904) 22 R.P.C. 113, Warrington J. and C.A.

Society of Motor Manufacturers and Traders Ltd. v. Motor Manufacturers' and Traders Mutual Insurance Co. Ltd. [1925] Ch. 675, C.A.

Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 C.L.R. 592.

Triangle Publications Inc. v. New England Newspaper Publishing Co. (1942) 46 Fed.Supp. 198.

Vandervell's Trusts (No. 2), In re [1974] Ch. 269; [1974] 3 W.L.R. 256; [1974] 3 All E.R. 205, C.A.

Warren v. Coombes (1979) 53 A.L.J.R. 293.

Willard King Organisation Pty. Ltd. v. United Telecasters Sydney Ltd. (unreported) January 12, 1970, Supreme Court of New South Wales.

APPEAL (No. 5 of 1980) from a judgment given on August 8, 1978, by Powell J. in the Supreme Court of New South Wales, Equity Division by which he dismissed an action brought by the plaintiffs, Cadbury-Schweppes Pty. Ltd., Tarax Drinks Holdings Ltd., Tarax Drinks Pty. Ltd. and Tarax Pty. Ltd., against the defendant, Pub Squash Co. Pty. Ltd., for damages in respect of passing off and unfair trading, for an account of profits, for an order for rectification of the Register of Trade Marks by expungement of the defendant's trade mark and for an injunction to restrain the defendant from using the name “Pub Squash” as the name for any soft drink produced or sold by it.

The facts are stated in the judgment.

L.J. Priestley Q.C. and P.G. Hely (both of the New South Wales Bar) for the plaintiffs.

C.J. Bannon Q.C. and S.M.P. Reeves (both of the New South Wales Bar) for the defendant.

Cur. adv. vult.

October 13. The judgment of their Lordships was delivered by LORD SCARMAN.

Two questions arise in this appeal from the Supreme Court of New South Wales, Equity Division. One, which goes to the merits of the dispute, is whether the appellants, who are the plaintiffs in the suit, have established a cause of action in tort against the defendant. The tort alleged is that which is known to lawyers as passing off one's own goods as the goods of another. The second question is whether Her Majesty in Council has jurisdiction to entertain the appeal. The trial judge, Powell J. found against the plaintiffs on the first question. He did not consider, nor was it any part of his duty to consider, the second question; for it could not arise...

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