and to cause or enable their goods to be passed off as the goods of the appellants. The contention of the parties
raised two distinct questions: their right to register in New South Wales the word "Maizena" as their trade-mark
under the Trade Marks Act of 1865 (28 Vict. No. 9); and whether the respondents independently of that Act had
violated the common law rights of the appellants by fraudulently making up their goods so as to deceive and pass
them off as made by the appellants.
The suit was instituted to restrain the respondents from using the word "Maizena" for or in connection with their
goods and for consequential relief.
The defendants in their counter-claim prayed, on the other hand, for a declaration that the term "Maizena" is and
was previously to December, 1889, a word publici juris in the colony and should be ordered to be removed from
the Register of Trade Marks.
The facts and dates in the case may be shortly stated.
In the year 1856 the appellants invented the word "Maizena" as their trade-mark for a starch or flour made from
maize. In the year 1863 their agents, through Farrar & Co., of Melbourne, introduced "Maizena" into the Australian
colonies. Large shipments were sent to those colonies for several years, but in consequence of a high tariff put on
in 1871-72 the trade fell off, and it was alleged by the respondents that there was no evidence of any sales by the
appellants of their "Maizena" between 1872 and 1885.
The appellants from time to time registered a trade-mark with this word "Maizena," and from time to time renewed
the registration of their trade-mark in the United States of America, in the United Kingdom, and elsewhere.
so until the year 1889, and the first substantial question in this case is, whether during the twenty-four years which
elapsed between 1865 and 1889 the word had been so used in the colony as to make it no longer registerable as the
appellants' trade-mark.
If during the period in question the word was only used in the colony for the fraudulent purpose of counterfeiting
their goods, the right of the appellants to register it as their trademark would not be impaired. If, on the contrary, it
was used and understood before 1889 as a term descriptive of the article, as a product of maize, and did not denote
such product to be of the manufacture or merchandize of a particular person, then it must be regarded as having
become, in the sense of law, publici juris, and was no longer registerable by the appellants as their trade-mark.
Accordingly the important question upon the evidence is whether, between 1865 and 1889, the word was used by
the appellants lawfully, and by the respondents and others fraudulently, to denote corn-flour of the appellants'
manufacture; or whether it was used and generally understood by purchasers to denote, not the manufacture of any
particular person, but the character and quality of the article.
The appellants argue that the doctrine of publici juris cannot apply, as the respondents were guilty of fraud in
originally appropriating the appellants' trade-mark, and as the use of it was continued in fraud. But their Lordships
cannot find any evidence to support this contention, and they cannot ignore the lapse of time and all that has
occurred in a quarter of a century. The appellants never registered the word as their trade-mark for twenty-four
years, they never during that long period took proceedings to restrain the respondents from using
name publici juris, and each case must depend upon its own facts.
In considering the question, it is important to bear in mind that the appellants do not claim any special right to the
manufacture of "Maizena," or any exceptional method in making their "Maizena," and that the respondents and all
other people have just as much right as the appellants have to manufacture the thing—no matter whether it is called
"Maizena," corn-flower, or any other name.
Having regard to all the facts and evidence in the case it is impossible to resist the conclusion that in December,
1889, the date of registration, and for many years previously, the word "Maizena" had become publici juris, and
their Lordships are therefore clearly of opinion that it was at the date specified not registerable by the appellants as
their trade-mark.
The second question remains: Did the respondents try to pass off their manufacture as that of the appellants, and
deceive or try to deceive the public on the subject? Although this question is distinct from the first, many of the
reasons for the conclusion already stated are of weight. Fraud or intention to deceive must be made out. The
appellants insist that the form of packet sold by the respondents, its make up, its colour, and the words printed upon
it, indicate an intention to deceive, and to pass off the goods of the respondents as their manufacture. They rely
particularly upon the use by the respondents of the statement on their wrapper of the words: "Of all competing Corn
Flowers Maizena alone received a prize medal at the International Exhibition, London, 1862." On the appellants'
wrappers are the words: "Of all competing articles of its class prepared from corn for food Maizena alone received
a prize medal at the International Exhibition, London, 1862." The
and the representation, even if unfounded, would not bar the respondents' right to resist the appellants' claim.
Their Lordships have had before them, in the book of exhibits, copies of all the labels, and they have also seen
samples of the packets used by both parties, and are themselves unable to arrive at the conclusion that the packets
and labels of the respondents would or were likely to deceive the public. They state most clearly the names of the
maker, place of manufacture, and other necessary particulars.
If the general effect of the labels and the words, colour, and make-up of the packets were calculated to mislead,
liability could not be evaded by pointing out that if the words were spelt out and carefully examined and studied by
a wary purchaser there would be no deception. But their Lordships can see no such general effect, and it is worthy
of note that no evidence of any kind has been given shewing that any one was deceived.
Their Lordships will, for these reasons, humbly advise Her Majesty to affirm the judgment of the chief judge in
equity and to dismiss this appeal. The appellants must pay the costs of this appeal.
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