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

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

The respondent failed to prove that, by April 1954, "Smirnoff" had acquired in New South Wales a reputation distinctive of the respondent's vodka. The earlier use of "Formula of Peter Smirnoff" for vodka liqueurs was not substantial, widespread or calculated to identify those goods exclusively with the respondent, and the later use for vodka from March 1953 to April 1954 was too brief and insufficiently extensive. Evidence also showed an established overseas reputation for "Smirnoff" vodka among the immigrant market to which the respondent was selling. Accordingly the appellant's use of "Pierre Smirnoff" was not shown to constitute passing off.

Jurisdiction
Australia
Procedural Posture
Civil Appeal in Passing Off Suit / Appeal From an Order of the Supreme Court of New South Wales Granting Injunctive Relief
Outcome
Appeal allowed with costs; order of the Supreme Court discharged; suit dismissed with costs.
Legal Topics
['passing Off' 'goodwill and Reputation' 'trade Names' 'vodka Branding']
['intellectual Property' 'tort'] ['passing Off' 'goodwill and Reputation' 'trade Names' 'vodka Branding']

Case Brief

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Procedural Posture

Civil Appeal in Passing Off Suit / Appeal From an Order of the Supreme Court of New South Wales Granting Injunctive Relief

Legal Issues

  1. 1 ['Whether by April 1954 the names "Smirnoff", "Peter Smirnoff" or "Pierre Smirnoff" had in New South Wales acquired a meaning distinctive of the respondent\'s vodka products.' 'Whether the appellant\'s use of "Pierre Smirnoff" on vodka labels was likely to pass off its vodka as the respondent\'s vodka.' "Whether the respondent's earlier trade in vodka liqueurs and later trade in vodka established the necessary reputation in New South Wales."]

Ratio Decidendi

The respondent failed to prove that, by April 1954, "Smirnoff" had acquired in New South Wales a reputation distinctive of the respondent's vodka. The earlier use of "Formula of Peter Smirnoff" for vodka liqueurs was not substantial, widespread or calculated to identify those goods exclusively with the respondent, and the later use for vodka from March 1953 to April 1954 was too brief and insufficiently extensive. Evidence also showed an established overseas reputation for "Smirnoff" vodka among the immigrant market to which the respondent was selling. Accordingly the appellant's use of "Pierre Smirnoff" was not shown to constitute passing off.

Court Disposition

Appeal allowed with costs; order of the Supreme Court discharged; suit dismissed with costs.

Orders

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