W &A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21

High Court of Australia McTiernan, Fullagar and Taylor JJ. W &A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21

ORDER Appeal allowed with costs. Order of the Supreme Court discharged and in lieu thereof order that the suit be dismissed with costs.

Cur. adv. vult.

The Court delivered the following written judgment:—

1960, April 22 McTiernan, Fullagar and Taylor JJ.

This is an appeal from an order of the Supreme Court of New South Wales by which the appellant, at the suit of the respondent, was restrained from advertising, offering for sale or selling or causing to be advertised, offered for sale or sold, vodka, not being the vodka of the respondent, under any name or mark, containing the words "Smirnoff" or "Peter Smirnoff" or "Pierre Smirnoff" and calculated to pass off or enable others to pass off such vodka as and for the respondent's vodka. By its statement of claim the respondent asserted that it and its predecessors in business had for many years been manufacturing and selling vodka and vodka liqueur, under the names of "Smirnoff" and "Peter Smirnoff" put up in bottles of distinctive shape and bearing distinctive labels whereon the words "Smirnoff" and "Peter Smirnoff" were prominently displayed. It was further alleged that such vodka and vodka liqueur had been extensively advertised by the respondent and its predecessors and that they had acquired a large and valuable reputation and market among the trade and public in New South Wales under those names. For many years past, it was asserted, the said names had been in the minds of the trade and of purchasers and of the public solely identified and associated with the vodka and vodka liqueur of the plaintiff or its predecessors. Thereupon the complaint was made that the defendant had recently been offering for sale and selling in New South Wales vodka not of the plaintiff's manufacture put up in bottles substantially identical with the bottles of the plaintiff and bearing labels on which the names "Smirnoff" and "Pierre Smirnoff" were prominently displayed.