Case: Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641
Outcome: cited
In the law of passing off, the courts have treated evidence of the intentions of the defendant as relevant to the question of whether a representation is conveyed. SunRice argued that this evidence was determinative. It relied on remarks of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 657. They said: The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public. But the practical application of the principle may sometimes be attended with difficulty. (emphasis added) 69 However, their Honours concluded that in the end it was still a question of fact for the court to determine whether, indeed, there had been established a reasonable probability of deception or confusion from the use, in that case, of a trademark or device. They held that the main issue in the case was a question which was never susceptible of much discussion. They said ( Australian Woollen Mills 58 CLR at 659; see too Burford &amp; Sons 8 CLR at 220 per O'Connor J; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 389 [121] per Weinberg and Dowsett JJ, Branson J agreeing; Office Cleaning Services Ltd v Westminster Window &amp; General Cleaners Ltd (1946) 63 RPC 39 at 40 per Lord Simonds, with whom Lords Wright, Porter and Goddard agreed): It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 97 Likewise, Mr Young expected the new enhancement to SunRice's rice cake packaging by the addition of the rice representation and words "MADE WITH WHOLEGRAIN RICE" to emphasise potential health benefits to consumers on its various rice cake products. I find this was done because Ricegrowers appreciated that the ordinary reasonable consumer of these products would pay some attention to the packaging beyond merely looking at a colour cue before purchasing. A consumer who intentionally wished to acquire one but purchase the other might feel deceived: cp Australian Woollen Mills 58 CLR at 657. While, of course, SunRice would still sell either its tomato salsa flavoured thin corn cake, or its sundried tomato and basil one, I am satisfied that Ricegrowers took sensible and appropriate precautions in designing the packagings for the two tomato products in order to prevent such confusion occurring. It was not in Ricegrowers' interests that such confusion occur between its own products. 98 The difference between the get-up of the SunRice products and those of the Real Foods ones in competition with them is, to my mind, far more striking than that of the two SunRice tomato-based products. I am satisfied that there was no real possibility of the ordinary reasonable consumer being mislead or deceived or being confused by the get-up or packaging of the cheese flavoured and salt and vinegar flavoured "Corn Thins" products. They are distinctly different from their competitor's products in their get-up and packaging in the cues of the mark "Corn Thins", as well as colour, printing of their descriptions, and pictorial representations. 99 While the green packaging of the original SunRice rice cakes (until the most recent change) was similar to the green which Real Foods adopted for its sour cream and chives corn cakes, the two get-ups are in my view so significantly different that the ordinary reasonable consumer would know immediately on looking at one or the other that they were not the same. The ordinary reasonable consumer looking at the "Corn Thins" sour cream and chives package would know that they were not SunRice's product, or associated at all with the SunRice product that was marketed as its sour cream and chives rice cake.