Case: Burford &amp; Sons Ltd v Mowling &amp; Son [1909] HCA 83 ; (1908) 8 CLR 212
Outcome: followed
A trader has a prima facie right to put his goods in any packages which he may think attractive and convenient and in any method which he may consider suitable for carrying on his trade provided that the form adopted is not likely to deceive the ordinary reasonable consumer into mistaking his goods for the goods known in the market as manufactured, put up or sold by another: Burford &amp; Sons Ltd v Mowling &amp; Son [1909] HCA 83 ; (1908) 8 CLR 212 at 216 per O'Connor J; affirmed at 8 CLR 222-224 per Griffith CJ, Isaacs and Higgins JJ. O'Connor J said that there the plaintiffs had no monopoly in the particular kind of packing which they adopted, which was used in a large number of articles. Those included not only packed soap, but grocery items and a variety of other items. He also said that the plaintiffs could not acquire a monopoly of the form of package by adopting a particular form of packaging, because its use was open to anyone in the trade. But his Honour went on to say that: ... where, as in this case, a certain method of get up, though open to all traders, has been for many years solely identified with the plaintiffs' goods in a particular market, it is incumbent on a trader who adopts the same method of get up for the purpose of pushing his trade and a similar article in the same market, that he shall clearly differentiate his goods on the face of the package from those of the plaintiffs. (Burford &amp; Sons 8 CLR at 217) 61 O'Connor J found that the question for determination was whether the defendant had made the difference of manufacture and ownership clear on the face of the package when adopting cartons of the same material, colour, shape and size of the plaintiff's packaging. He applied what Lindley MR said in Payton &amp; Co Ltd v Snelling Lampard &amp; Co Ltd (1899) 17 RPC 48 at 52. Lindley MR discussed the situation where goods themselves resembled one another, in that case coffee, and were packaged similarly. He said that the issue was not that the defendant's goods or get-up was like the plaintiff's by reason of the features common to them and others. Rather, in a passage cited with approval by O'Connor J in Burford &amp; Sons 8 CLR at 217, in order to succeed in a passing off action, the plaintiff: ...must make out that the defendant's are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plaintiff's from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails. 63 Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford &amp; Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539. 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. 107 I am satisfied that Real Foods differentiated its products on the face of their packages from those of SunRice: Burford &amp; Sons 8 CLR at 21.