Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66

High Court of Australia Windeyer J. Dixon C.J. McTiernan, Kitto, Taylor and Owen JJ. Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66

ORDER Appeal allowed with costs. Discharge the order appealed from. In lieu thereof order that the action be dismissed with costs.

Cur. adv. vult.

1961, Nov. 23 Windeyer J. delivered the following written judgment:—

The plaintiff and the defendant are well-known oil companies. Each sells petrol and oils. Some sales are made directly to consumers. But retail sales of petrol and motor oil are, for the most part, made by service stations. Speaking generally, the present practice in Australia is for a service station to sell only one brand of petrol and oil; so that there are some service stations that sell the plaintiff's goods and others that sell the defendant's goods and others again that sell the goods of other oil companies. Therefore, in this trade, trade marks are important in advertising and as signs indicating where particular brands of petrol and oil may be purchased rather than as marks on containers in which goods are sold. The object of advertising is thus to keep the name of a particular brand before the public and to associate with it signs, colour schemes and lettering distinguishing the service stations and pumps where it is sold.

The plaintiff alleges that the defendant has infringed two registered trade marks, numbered 135,548 and 135,549, of which it is the registered proprietor. These trade marks are registered in class 47, that is in respect of products and preparations for lubricating, heating, illuminating and fuel and power generating purposes. Both marks are registered for a period of fourteen years from 4th February 1958. The registration was effected under the Trade Marks Act 1905-1936 Cth. But, as the Trade Marks Act 1955-1958 Cth now applies to and in relation to trade marks so registered (s. 5 (4)), it is to its provisions that I shall refer. Both the marks are for a caricature of a man, having a large head, large hands and a comparatively small body—the whole being being delineated in outline and with little detail. This figure was described during the argument as a "humanized oil-drop". In outline the head resembles a drop of fluid: and depicting inanimate objects with faces, arms and legs is, it seems, in the parlance of advertisers who make use of such pictures, called "humanizing" them. The only difference between the two registered marks is that in one case, 135,549, the man displays, on what would be his chest if his anatomy were less grotesque, the word "Esso" in an oval. "Esso" is the trade name of the plaintiff's lubricating oil. The word is said to have been derived from the initial letters S. and O., of "Standard Oil". The figure in the two trade marks is commonly referred to by the plaintiff as its "oil-drop character", or "oil-drop man" or as "the Esso oil-drop man". I was invited by both parties to notice the expression of the man's face, especially his upturned mouth, and to regard him as a cheerful person. The defendant said he was smug; the plaintiff, proud. I do not propose to speculate as to his emotions, beyond saying that he does seem comfortably satisfied. I do not say that the same figure but with a different facial expression might not be an infringement; but a cheerful expression is undoubtedly an important element in this oil-drop man's make up. The plaintiff in practice has seldom, if ever, used the trade marks in precisely the form they have on the register. But a figure recognizable as the oil-drop man illustrated in the register has for some time past been extensively used by the plaintiff and has appeared on posters at service stations where the plaintiff's goods are sold. From 1953, that is before registration, until the present time, such a figure has appeared in advertisements, often with an accompanying exhortation, "Stop at this sign". The man has been depicted in various attitudes, variants of that in the registered form. Usually he has one hand raised in salute or greeting. He seems exuberantly cheerful and the words "Happy Motoring" were commonly used with him. Usually he has worn the word "Esso", but not always.