Collitt v Borsalino Guiseppe E Fratello Societa Anonima [1913] HCA 34; (1913) 16 CLR 344 (27 June 1913)

HIGH COURT OF AUSTRALIA

Collitt and Another Defendants, Appellants; and Borsalino Guiseppe E Fratello Societa Anonima Plaintiffs, Respondents.

H C of A

On appeal from the Supreme Court of Victoria.

27 June 1913

Barton A.C.J., Isaacs, Powers and Rich JJ.

Irvine K.C. and Weigall K.C. (with them Mann), for the appellants.

Schutt (with him Starke), for the respondents.

Irvine K.C., in reply.

The judgment of the Court was read by Rich J

June 27

Barton A.C.J.

Isaacs, Powers and Rich JJ.

This is an appeal from so much of the judgment of Hodges J., dated 15th August 1912, as granted an injunction against the defendants to the action and ordered them to pay the costs of the action.

The action was brought by Borsalino Guiseppe e Fratello Societa Anonima, the present respondents, against Thomas Morton Collitt and Herbert Bayford Collitt, the present appellants, and was treated by the parties and dealt with by his Honor as a passing off action.

The respondents are a company incorporated according to the law of Italy, and are large manufacturers of felt hats, which they sell in Australia and elsewhere.

The appellants are retail hatters carrying on business at 103 Swanston Street, Melbourne.

The respondent company is the registered proprietor throughout Australia of three trade marks, in which the word "Borsalino" is the distinctive feature.

For upwards of fifteen years before this action was brought the respondent company had imported into Victoria large quantities of hats of its own manufacture. The word "Borsalino" was marked on the leather lining and diagonally across the top of the crown of these hats.

During the same period the respondent company extensively advertised its hats through the medium of mirrors, show cards and catalogues, on which the word "Borsalino" is the conspicuous feature, and stands, with the exception of one kind of show card in which the initials of the makers are printed in the margin, isolated and prominent.

At the end of 1908 a firm called G. B. Borsalino fu Lazzaro & Co. began to import hats of its manufacture into Victoria.

These hats were branded in the lining "G. B. Borsalino fu Lazzaro & Co." This firm also advertised its hats by means of cards, plaques, pictures, &c., which all contained the name of the firm in full.

The defendants, who at the beginning of carrying on business only stocked the respondent company's hats, had a docket (Ex. G1) written or printed containing the word "Borsalino" and the price. This docket was affixed by the defendants to the respondent company's hats.

In November 1909 the defendants stocked some of the hats made by the firm of G. B. Borsalino fu Lazzaro & Co., and affixed the same docket to those hats.

On 8th September, 23rd November and 1st December 1911, the defendants on being asked for a Borsalino hat showed the customers hats of the plaintiffs' manufacture, but in the end sold hats manufactured by the firm of G. B. Borsalino fu Lazzaro & Co., representing them to be "Borsalinos." No docket was given by the defendants on the first occasion but on the two later occasions the dockets (Exhibits U and X) given to the purchasers stated that the hat sold was a "Borsalino" hat. Thereupon the plaintiff filed a statement of claim praying, inter alia, for an injunction to restrain the defendants from passing off or attempting to pass off hats marked "G. B. Borsalino fu Lazzaro & Co.," as hats of the plaintiffs' manufacture.

At the hearing, Hodges J. found that the plaintiffs' hats were well known to both wholesale and retail dealers by the name of "Borsalino," but that "they were known hardly at all to the individual purchaser by that name." His Honor, however, held that the sales to which reference has already been made were "a distinct passing off of the G. B. Borsalino hat as a Borsalino hat;" and, although finding against a distinct fraud, his Honor found "against the defendants in that they did acts not only calculated to mislead, but acts which did deceive."

On the appeal before this Court there was really no dispute as to the law so far as it affected this case. The question resolved itself into one of fact. Mr. Irvine, on behalf of the defendants, admitted that if the word "Borsalino," as applied to the plaintiffs' hats, had acquired a secondary meaning and retained it at the dates of the acts complained of, the appeal must fail. He contended, however, that the word had acquired no such meaning, and, even if it had, that meaning had become obliterated by the intrusion into the market of the hats manufactured by the firm of G. B. Borsalino fu Lazzaro & Co., which, at the date of the acts complained of, had become known equally with the plaintiffs' hats as "Borsalino."

It becomes necessary, therefore, to examine the evidence. On behalf of the plaintiffs, ten persons engaged in the retail trade and four engaged in the wholesale trade were called, who deposed that the plaintiffs' hats were, for eight to fifteen years prior to the hearing, known as "Borsalino" hats, and several of the witnesses stated that if a member of the public asked for a "Borsalino," they would take him to mean a hat which in fact was manufactured by the plaintiffs. The defendants themselves both admit that the plaintiffs' hat was known in the trade as "Borsalino" until the introduction of the hat manufactured by the firm of G. B. Borsalino fu Lazzaro & Co., but that, thereafter, to the defendants, contrary to the otherwise invariable usage of the trade, "both hats were Borsalino." Indeed, as already pointed out, the docket (Ex. G1), printed for the defendants to indicate the plaintiffs' hats, was affixed by them to the hats manufactured by the firm of G. B. Borsalino fu Lazzaro & Co. long before these hats could possibly have been known as "Borsalino." This conduct of the defendants, who are indemnified in this action by the firm, is by no means supported by the firm itself.

G. Ferrando, the firm's agent in Victoria, is careful to explain that the firm's hats were advertised and sold as "G. B. Borsalino fu Lazzaro," in order to avoid confusion with those of the plaintiffs, and that the firm did not claim the right to use the word "Borsalino" alone.

The firm's agent in New South Wales, although in Court, was not called as a witness.

Irwin, Ferrando's traveller, admits that the plaintiffs' hats had been known in the market for a long time as "Borsalino," and that at the end of 1909 his firm's hats were being advertised in Messrs. Gliddon & Rowley's shop under the name of G. B. Borsalino fu Lazzaro and, similarly, at the end of 1912 or beginning of 1913, in Messrs. Craig, Williamson & Co.'s shop.

This witness, at any rate, and by necessary inference Messrs. Gliddon & Rowley and Messrs. Craig, Williamson & Co., had no suspicion that the public called the "G.B." hats "Borsalino." He is emphatic in stating even at the trial that it would not be fair to supply wholesale houses with small tickets with "Borsalino" simply on, and gives his reason: "because we do not sell ours as Borsalino." Richards and Rossi, also called on behalf of the defendants, distinguish "Borsalino" hats from "G.B." hats. The plaintiffs' evidence, corroborated as it is by the defendants' witnesses, coupled with the answers to interrogatories, is conclusive proof that the word "Borsalino" had acquired and retained a secondary meaning, which was not confused or obliterated by the trade dealings of the firm G. B. Borsalino fu Lazzaro & Co.

It would, indeed, be singular, if Mr. Irvine's contention were right, that the advertisements and methods of trade adopted by this firm, in order, as Ferrando states, to prevent confusion, should bring about what was being so carefully guarded against.

The principles of law applicable to this case are stated in the often cited passage from the judgment of Lord Herschell in Reddaway v. Banham[1]:—"The name of a person, or words forming part of the common stock of language, may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves without explanation or qualification by another manufacturer would deceive a purchaser into the belief that he was getting the goods of A. when he was really getting the goods of B. In a case of this description the mere proof by the plaintiff that the defendant was using a name, word, or device which he had adopted to distinguish his goods would not entitle him to any relief. He could only obtain it by proving further that the defendant was using it under such circumstances or in such manner as to put off his goods as the goods of the plaintiff. If he could succeed in proving this I think he would, on well-established principles, be entitled to an injunction."

It is not necessary that the persons purchasing goods should know of the manufacturer by name, and have in mind when they purchase the goods that they are made by a particular individual. "It seems to me," says Lord Herschell, "that one man may quite well pass off his goods as the goods of another if he passes them off to people who will accept them as the manufacture of another, though they do not know that other by name at all": Birmingham Vinegar Brewery Co. Ltd. v. Powell[2].

Nor does the fact of the defendant bearing the same name as the plaintiff enable him to invade the latter's right of property: See Valentine Meat Juice Co. v. Valentine Extract Co. Ltd.[3], per Collins L.J. and Lord Alverstone M.R. See also John Brinsmead & Sons Ltd. v. Brinsmead and Waddington & Sons Ltd.[4]. The present case is still stronger, for the defendants' name is not "Borsalino," and they have shown no authority from G. B. Borsalino fu Lazzaro & Co. to use the simple name "Borsalino."

Mr. Irvine contended that it would be difficult for a proper name, especially of the manufacturer of the goods, to acquire a secondary meaning, but Lord Halsbury in the Electromobile Co. Ltd. v. British Electromobile Co. Ltd.[5] points out that "the simpler the title and the more ordinary the words used the more difficult the plaintiffs' case is." Millington v. Fox[6] was an instance of the plaintiff's exclusive right to his own name as a trade name apart from fraud.

Careful consideration of the evidence, which does not depend on the veracity and demeanour of witnesses, leads to the conclusion that the word "Borsalino," which, at first, was naturally used as a surname, acquired and retained, at all events in Victoria, a secondary meaning denoting the hats manufactured by the plaintiffs.

For these reasons we are of opinion that the orders made by the learned Judge are right, and this appeal fails.

Appeal dismissed with costs.

Solicitors, for the appellants, Moule, Hamilton & Kiddle.

Solicitor, for the respondents, F. B. Waters.