Case: Need v J H Coles Pty Ltd [1931] HCA 55 ; (1931) 46 CLR 470
Outcome: cited
The High Court, by majority, allowed Need's appeal: Need v J H Coles Pty Ltd [1931] HCA 55 ; (1931) 46 CLR 470. The Privy Council allowed Coles' appeal. The Board agreed with the reasoning of the Chief Justice, the Full Court and the dissenting judges in the High Court, Starke and Dixon JJ. Their Lordships said, at 46 CLR 503: "all the right that the respondent ever had in regard to the user of the appellant's trade names was a revocable licence to use these names so long as the business arrangement continued between the appellant and respondent. From these conclusions it follows that prima facie the appellant is entitled on well-recognized principles to an order restraining the respondent from the unauthorized use of the appellant's trade names after the licence was revoked, since the continuance thereafter of such user necessarily involves a passing off by the respondent of his business as being a business for the sale of the appellant's goods and as being a business in which the appellant has at least an interest, and in this way there would be practised a deception of the public to the prejudice of the appellant's business reputation and goodwill." 178 Their Lordships went on to consider whether the appellant's conduct had disentitled it to relief, and decided that it had not. 179 In the Supreme Court Irvine CJ and two members of the Full Court (Macfarlan and Mann JJ) thought the licence revocable at will, and that no question of reasonable notice arose. In the High Court Starke J was of the same view. The other members of the High Court did not consider the question. Dixon J said, at 46 CLR 483: "I agree with the view that the agreement was brought to an end and that it had ceased before the suit was commenced to confer upon the appellant a contractual right or licence to the use of the trade names. I think that, if the agreement had not already ended, it terminated when the winding-up commenced. The arrangement made between the appellant and the Company created a business relation in which the advantages reciprocally enjoyed and conferred depended on each continuing to carry on his or her trade. The shopkeeper for his profit sold with the help of the Company's trade names and methods the goods with which the Company supplied him. The remuneration of the Company for the use of its names and for whatever other service it gave was obtained from the profitable supply of the goods which the shopkeeper sold. Such an arrangement could not survive the termination of the business existence of either party. I do not think that a contractual intention should be imputed to the Company and the appellant to confer upon the appellant a right to the use of the trade names on the termination of the agreement. The parties did not, I think, consider what was to happen if the agreement was brought to an end, and the Company at least meant to do no more than allow its name to be used so long as the shop was a means of selling its goods." At [110] I have rejected the respondents' submission that the applicants' licence to use the name was revocable at will. Harold and Saul were at liberty to use the Squires Loft name in the City restaurant as long as they wanted to.