Mond Staffordshire Refining Company Limited v Harlem [1929] HCA 6

International 'Schering AG (959) 471PR

41 C.L.R.] OF AUSTRALIA.

(HIGH COURT OF AUSTRALIA.]

THE MOND STAFFORDSHIRE REFINING ) COMPANY LIMITED Bethe ead tis ai PLAINTIFF,

APPELLANT ;

AND

HLLIS HARLEM AND ANOTHER TRADING ) AS "MULSOL" LABORATORIES. .§_ ">SPONPENTS. DEFENDANTS,

ON APPEAL FROM THE SUPREME COURT OF VICTORIA.

Trade Mark—Passing off — Monsol"—Registered trade mark of plaintiff's goods— " Mulsol" —Used as description of defendant's goods—Likelihood of deception.

The plaintiff was the registered proprietor of a trade mark of the word "Monsol" in respect of chemical substances prepared for use in medicine and pharmacy, and had put upon the market in Victoria various medical preparations under that trade name. The defendants had put upon the market in Melbourne a medical preparation under the name " Mulsol." In an action by the plaintiff to restrain the defendants from using the word "Mulsol" upon goods manufactured or sold by them and from passing off their goods as those of the plaintiff,

Held, by Knox C.J., Gavan Duffy and Starke JJ. (Isaacs and Rich JJ. dissenting), that the words were not so similar as to be likely to cause any ordinary purchaser to confuse goods marked or described as " Mulsol" with goods marked or described as ' Monsol."

Decision of Supreme Court of Victoria (Macfarlan J.) affirmed.

H.C. or A. 1929. MeLpourne,

Feb. 19; Mar. 11.

Knox C.J., Isaacs, Gavan Duffy, Bich and Starke JJ.

476 HIGH COURT [1929.

H.C. or A. Appear from the Supreme Court of Victoria. ae The Mond Staffordshire Refining Co. Ltd., a company incorporated Monp under the laws of Great Britain, brought an action against Ellis papel >- Harlem and Isaac Cyril Harlem, trading as " Mulsol " Laboratories.

RermING Tn the statement of claim the plaintiff alleged that it was the

eee registered proprietor of a trade mark registered in the Trade — Marks Office of the Commonwealth on 20th January 1927 for the word " Monsol" in respect of "chemical substances prepared for use in medicine and pharmacy"; and that since March 1927 it had put upon the market in Victoria various medical preparations under the trade name " Monsol," and had caused advertisements of such preparations to be widely circulated whereby the said trade name had come to be known as indicating the plaintiff's preparations ; and that the defendants had recently placed upon the market in Melbourne and offered for sale a medical preparation under the name " Mulsol," thereby infringing the plaintiff's registered trade mark and passing off their goods as and for the goods of the plaintiff. The plaintiff claimed (inter alia) an injunction restraining the defendants from infringing its registered trade mark and from passing off medical preparations not of the manufacture of the plaintiff as and for preparations of the plaintiff's manufacture, and restraining them from using upon goods manufactured or sold by them the word " Mulsol" or any other word so nearly resembling