Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73

High Court of Australia Gibbs C.J. Mason, Wilson, Deane and Dawson JJ. Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73

ORDER Appeal dismissed with costs.

Cur. adv. vult.

The following written judgments were delivered:—

1984, Nov. 22 Gibbs C.J.

I would dismiss this appeal for the reasons given by Deane J., which I have had the advantage of reading and with which I agree.

Mason J.

I would dismiss the appeal for reasons to be given by Deane J.

Wilson J.

I have had the advantage of reading the reasons for judgment prepared by my brother Deane. I agree with those reasons and the conclusions to which they lead. There is nothing that I wish to add.

Deane J.

This appeal is another skirmish in the hostilities between two large United States-controlled corporate groups over entitlement to use the words " golden lights " as a trade mark in relation to cigarettes. The hostilities are, so the Court was told, being waged on a number of different national fronts. They have surfaced twice before in this Court: on a question of jurisdiction (see Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [1] ) and on a question of competency: see Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [2] . The present appeal raises questions of substantive right.

1. (1980) 145 C.L.R. 457. 2. (1983) 46 A.L.R. 400.

The appellant, Moorgate Tobacco Co. Ltd. ("Moorgate") which is a member of the "British American Tobacco Group", claims that the first respondent, Philip Morris Ltd. ("Philip Morris") which is a member of the "Philip Morris Group", acted in breach of fiduciary obligation, in abuse of confidential information, tortiously ("unfair competition") and in breach of contract when, on 12 July 1977, it made an application to the Australian Trade Marks Office to register the trade mark "Golden Lights" in respect of tobacco and tobacco products. The second respondent, Philip Morris Inc. ("P.M. Inc.") which is the holding company of Philip Morris, is a party to the proceedings by reason of an assignment by Philip Morris to it of that mark. Moorgate's action in the Supreme Court of New South Wales for declaratory, injunctive and consequential relief was dismissed by the learned trial judge (Helsham C.J. in Eq.) whose decision was upheld by a unanimous New South Wales Court of Appeal (Moffitt P., Hope and Glass JJ.A.). Moorgate now appeals, as of right, to this Court from the judgment and order of the Court of Appeal.