Mark Foys Ltd v Davies Coop & Co Ltd [1956] HCA 41

High Court of Australia Dixon C.J. Williams and Kitto JJ. Mark Foys Ltd v Davies Coop & Co Ltd [1956] HCA 41

ORDER Appeal allowed with costs. Decree of Supreme Court set aside. In lieu thereof order that the defendants their servants and agents be perpetually restrained from infringing the plaintiff's trade mark Tub Happy registered under the provisions of the Trade Marks Act 1905-1948 and in particular from using it or any phrase substantially identical with it or so nearly resembling it as to be likely to deceive for the purpose of advertising offering or distributing for sale or selling articles of clothing not being the goods of the plaintiff. Liberty to the plaintiff to apply to the Supreme Court for such account of profits or at its option for such inquiry as to damages as it may be advised. Remit the suit to the Supreme Court for this purpose. Order that the defendants pay the plaintiff's costs of the proceedings in the Supreme Court up to the date of this order, and that costs of any further proceedings in the Supreme Court be in the discretion of that court. Liberty to apply to the Supreme Court.

Cur. adv. vult.

The following written judgments were delivered:—

Aug. 9 Dixon C.J.

I have had the advantage of reading the judgment prepared by Williams J. and also that prepared by Kitto J. I recognize the weight of the considerations which Kitto J. has marshalled with so much force against the view that the words "tub happy" are words having no direct reference to the character or quality of the goods within the meaning of par. (d) of s. 16 (1) of the Trade Marks Act 1905-1948. But nevertheless I am unable to adopt the conclusion that these words are disqualified from forming a registrable trade mark under s. 16 (1) (d) because they directly refer to the character or quality of the goods.