'os60, HL. J. Gaeex, Govorament Printer, Methourne, a ne te. FELON 'a BK GIS | IN THE HIGH COURT OF AUSTRALIA. ELECTRIC ESSENCE PROP: 'ARY LIMITED LE. _KUGELMAN AND COMPANY FROPRIE- TARY LIMITED AND OTHERS. REASONS FOR JUDGMENT. OF MR JUSTICH STARKE Judgment delivered at_....Melbourne... on_ 3ist December 1935. oa Sapam arpa ae erncempss ae "=, IN THE MATTER OF THS TPADE MARK OF KUGHIMAN AND COMPANY Ex parte ELECTRIC ESSENCE Pty LTD. STARKE J, Fermann Emil Kugelmann carried on for many yeare the business of a consulting herbal practitioner, and that of a manufacturer of herbal and other medicinal preparations, under the name of H.E.Kugelmann and Company. He also registered a firm name "The Kugelmann Herbal Skin Soap Curative System of Australasia*, and manufactured herbal skin soap, which he sold as Kugelmann's Pure Herbal Skin Soap. But his business, I gather, was carri ed om as a whole, and at the same place. He advertised himself extensively @s & consulting herbal practitioner, and also his manufactures under such riames as Kugelman's Herbal Magnetic Blood Purifier, Kugelman's Balsam of Paradise, Kugelman's Pure Herbal Skin Soap ete. About 1921 the name H.UG. Kugelmann and Company was changed to H.E.Kugelman and Company. This busi- ness, its assets and goodwill passed to the Electric Essence Pty Ltd, which Kugelman formed in 1930. But he did not give the Company the right to his personal services as a consulting herbalist or herbal practitioner, though he became the governing director of the Company and in fact gave jhis personal services as a consulting herbalist for the benefit of the Company, In May of 1931, Kugelman gave notice under the Business Firma Act 1928 that he no longer carried on the business of H.E.Kugelman and - Company. The Electric Essence Pty Ltd was wound up voluntarily, and a liquidator appointed. Kugelman died on 23rd August 1932, soon after the wesolution authorising the winding up of the Sompany. The liquidator of the Company carried on the business for a short period. But socom after bis appointment he advertised for tenders for the purchase of assets in lots. Nine of these lots represented stock ot plant of the business in Melbourne ,' and the tenth lot was described as goodwill recipes case hooks ete. leo Norman Neal tendered for the lots sc advertised, as a whole, and the accepted his tender. On 5th November 1932 the liquidator Aigquidatorexecuted a formal contract of sale of the lots to Neal, who { toox possession of the stock and plant and proceeded to carry on the busi- ; mess at the same place and as theretofore carried on by the Company, and used the name of Kugelman in the conduct of the business. In December 1932 Neal incorporated a new Company, which he called Blectric Essence Pty Ltd, to take over the business ch he was carrying on. On 15th December 1932 3 manufacturer Neal sold to the new Company the business of herbal remed carried on by him, including the goodwill. It was agreed that the purchase should take effect ag of the 7th Yovember 1932, The new Company continued the pbusiness in the same place and as it had theretofore been carried on, and used the name Kugelman in the conduct of the business. Some axgutent was addressed to the question whether the right to use the names "Kugelman* or "Kugelman and Company" passed to the new Company, and reference was made to Ferne v. Wilson 26 V.L.R. 422, But the question dees not, I think, call for any decision. What is rtant for the purposes of this case is that for many yeare various yersons and companies were ac- tually using the names *Kugelman" and "Kugeloan and Company" as # trade names and for trading purposes. In July of 1931, Vernon Kugelman, a son of H.2.Kugelman, registered r of 1932 Verncn Kugelman registered as H.E.Kugelman and Company, and Waldemar S. Kugelman applied for the registration of a trade mark in Glass (3) in res- pect of medicated articles patent medicines botanical goods etc, The mark consisted of a signature "H.8.Kugelman" in an oval, with the monogram HEK under the signature. It was not a copy of the signature of Hermanw Emil Kugelman but the copy of a signature originally written by Vernon Kugelman himself in a special or particular manner. The application was granted, and Vernon Kugelman and Waldemar 3.Kugelman became, and still are, registered as proprietors of the mark, The Hlectrie Essence Pty Lid - the new Company - move to rectify the register of Trade Murks by the removal of this mark from the register. An order must he made accordingly. Ido not act on the view that the mover, or its predecessor in the business carried on by it,is the preprietor of the mark. registered, the mark waa never used in the business and was first adopted by the registered proprietors (See Eudson's "rade Merk 32 Ch D 311). But it is Likely to de+ ceive and must therefore be removed. "Kugelman" and ""Kugelman and Company" were used, for many years before the registration of the mark, in connection with businesses other than that carried on ar proposed to be carried on by the registered proprietors. The mark,used in conjunction with any business on by the registered proprietors, is likely to lead the public and carri ther or the purchasers to believe that it is the cld business of their f business carried oh by the Companies and persons who subsequently used the ia names *Kugelman® or geiman end Company". The registered proprietors of the mark, the sons of U.U.Kugelman, regard thenselves as the successors in business cf their father, and the only persons lawfully itled to use the name H.¥.Kugelman. Rut that view is based, first upon an erroneous under- standing of the exclusion from the le to the original Electric Essence Pty Ltd of the personal services of their father as a consulting herbalist or herbal practitioner, This exclusion is treated as meaning that a business was still carried on by H.E.Kugelman. But ne carried on no such business. The Company acquired his business, but not the right to his personal ser~ vices, though as a matter of fact he gave them. The agreement did not pre- clude the father from setting up a rival business had he desired to do so, put he did not in fact do so, and in any case he could not have solicited the customers of his old business. Next, it is based upon an erroneous view that their father's consent was all that was necessary to enable them to use the name H.!.Kugelman and Company. And finally, upon the erroneous view that their father had some personal practice or business as a herbalist which his personal representative - their mother - could sell to them. TI cannot, however, acquit the sons of some uncandid if not untruthful state- ments in their circular letter which is Exhibit E to the affidavit of Wil- liam Stubbs sworn en 12th November 1935. It indicates a desire to mislead the public, and possibly explains the reasons for the adoption of the trade mark which they registered. But all this is somewhat beside the question. A mark has been registered the esaential feature of which is the signature H.B.Kugelman, and that name had long been in use, though not in the special or particular form registered, by persons and companies other than the reg- istered proprietors. The likelihood of confusion and deception is abundant- ly clear. Order that the Register of Trade Marks Kept under the Trade Marks Act 1905-22 be rectified by the removal cf the mark therein registered in Class (3} in respect of medicated articles etc included in that class and numher- ed 60556, and it is ordered tr zt notice of this Order be given to the Regis- trar of Trade Marks by serving an office copy of this Order upon the said Registrar by leaving the same with a clerk at the office of the said Regis- trar. Order that the respondents , ¥.S, and V. Kugelman, do pay the taxed costs of this motion.