Mark Foy's Ltd v Davies Coop and Co Ltd [1956] HCA 41

Mark Foy's Ltd v Davies Coop and Co Ltd [1956] HCA 41

By majority, the words 'Tub Happy' are in the nature of a coined phrase with at most a remote, non-direct reference to the character or quality of clothing and thus registrable. The exclusive right given by s. 50 is an exclusive right to use as a trade mark, and that right is infringed by using the words as a trade mark. The use by the respondents was not a bona fide description but use of the trade mark in advertisements for their own goods.

Parties
Appellant / Plaintiff: Mark Foy's Limited; Respondent / Defendant: Davies Coop & Co Ltd.; Respondent / Defendant: Davies Coop (New South Wales) Pty Ltd.
Jurisdiction
Australia
Judgment Date
09 August 1956
Procedural Posture
Appeal / Appeal From Supreme Court of New South Wales (equity), Decree on Motion for Decree After Interlocutory Injunction
Outcome
Appeal allowed. Decree of Supreme Court set aside.
Legal Topics
Trade Marks, Infringement, Registrability of Trade Marks, Descriptive Words, Exclusive Rights
Intellectual Property Trade Marks Infringement Registrability of Trade Marks Descriptive Words Exclusive Rights

Case Brief

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Parties

Mark Foy's Limited

Appellant / Plaintiff

Davies Coop & Co Ltd.

Respondent / Defendant

Davies Coop (New South Wales) Pty Ltd.

Respondent / Defendant

Procedural Posture

Appeal / Appeal From Supreme Court of New South Wales (equity), Decree on Motion for Decree After Interlocutory Injunction

Legal Issues

  1. 1 Whether 'Tub Happy' is registrable as a trade mark under s. 16(1)(d) of the Trade Marks Act 1905-1948
  2. 2 Whether the use by the defendants constituted infringement of the trade mark
  3. 3 Whether the use by the defendants was a bona fide description of the character or quality under s. 53a of the Act

Ratio Decidendi

By majority, the words 'Tub Happy' are in the nature of a coined phrase with at most a remote, non-direct reference to the character or quality of clothing and thus registrable. The exclusive right given by s. 50 is an exclusive right to use as a trade mark, and that right is infringed by using the words as a trade mark. The use by the respondents was not a bona fide description but use of the trade mark in advertisements for their own goods.

Court Disposition

Appeal allowed. Decree of Supreme Court set aside.

Orders

  • Defendants, their servants and agents, perpetually restrained from infringing the plaintiff's trade mark 'Tub Happy' or any phrase substantially identical or likely to deceive for advertising, offering, distributing for sale, or selling clothing not the plaintiff's goods.
  • Liberty to plaintiff to apply for account of profits or inquiry as to damages in the Supreme Court.