James F McKenzie & Co v Leslie & Leslie [1909] HCA 38; (1909) 9 CLR 247 (14 June 1909)

HIGH COURT OF AUSTRALIA

James F. McKenzie & Co. Applicants, Appellants; and E. A. Leslie and J. R. Leslie Opponents, Respondents.

H C of A

On appeal from the Registrar of Trade Marks.

14 June 1909

Griffith C.J., Isaacs and Higgins JJ.

Schutt, for the appellants.

Starke and Levinson, for the respondents.

Schutt, in reply.

June 14

Griffith C.J.

These are two appeals from the Registrar of Trade Marks who refused applications made by the present appellants for the registration of two trade marks in respect of baking powder. The first application, No. 1192, was for registration of the word "Excelsior" and no more. The application was made for the whole of the Commonwealth, and was granted except with respect to New South Wales. The respondents carry on business in New South Wales as manufacturers of baking powder, and they objected to the registration of the appellants' mark on various grounds which may be summarized under the following three, viz., (1) That the respondents are the registered proprietors in New South Wales of a trade mark substantially the same as that of the applicants; (2) that, if that be not a good objection, the appellants are not entitled to have their mark registered because they have not honestly used the mark in New South Wales for any period; and (3) that the two marks are so alike as to be calculated to deceive.

The respondents' mark is a large label printed on yellow paper and of such a shape as to wrap round the four sides of a box. On one side is printed in very large type the word "Leslie's," in smaller type the words "Baking Powder" and the name "William Leslie" on a scroll. On the opposite side is a device supposed to suggest the word "Excelsior" by reference to the poem of Long-fellow. The device is that of a man in armour walking along level ground there being low hills in the distance. The man is followed by a dog, and is himself carrying a black banner on which are the words "Leslie's Excelsior Baking Powder."

That mark was registered in New South Wales in 1886 and the respondents claim that the effect of that registration was that they acquired not only a right to the exclusive use of that label in New South Wales, but also the exclusive right to the use of the word "Excelsior" there. They claim that right under sec. 6 of the Commonwealth Trade Marks Act 1905 and the New South Wales Trade Marks Act 1865. Sec. 6 of the former Act provides that:—"The State Trade Marks Acts of each State shall, on the commencement of this Act, cease to apply to trade marks further than as follows:—(a) The State Trade Marks Act under which a trade mark is registered shall continue to apply to that trade mark so long as the registration under that Act remains in force." It follows that the New South Wales Act applies to the respondents' trade mark while the registration remains in force. By sec. 2 of the Trade Marks Act 1865 N.S.W. it is provided that:—

A mark shall not be recognized or considered to be the trade mark of any person until the same has been registered by or on behalf of the person claiming to be entitled thereto as his trade mark.

By sec. 4 it is provided that any person desirous of registering a trade mark shall comply with certain formalities and "the Registrar shall unless it be shown to the satisfaction of the Registrar that such trade mark had been previously registered or that some other person is entitled to such trade mark or that such trade mark is so like some other trade mark that it may be mistaken for the same issue to the applicant a certificate setting forth that such trade mark to be described on such certificate has been duly registered and that the person named in such certificate is entitled to the use of the trade mark described therein."

Sec. 7 declares the rights conferred by registration of a trade mark; it provides that:—"The registration of any trade mark shall not confer any patent right over or any sole right to manufacture any article to which it is proposed to apply such trade mark but the certificate of the registration of any trade mark shall be proof of the right of the person named in such certificate or of the registered transferee of such certificate to use such trade mark except in case of any suit instituted to try the right of any person to have had such trade mark registered."

It was contended that the word "Excelsior" is substantially the same as the elaborate label of the respondents to which I have referred. I do not think it is. If it were, an interesting question would arise as to whether the registration of the respondents' trade mark in New South Wales gives an exclusive right under all circumstances to use the trade mark in New South Wales, that is to say, even in the case where another person has been honestly using the same mark in New South Wales for many years. It has been suggested that that is the result of the words of sec. 7, and there is a dictum to that effect in a judgment of the Supreme Court of New South Wales.

But the words of sec. 7 only say that the certificate of registration "shall be proof of the right of the person named in such certificate ... to use such trade mark," and not that no one else is entitled to use it. It is true that no one could maintain an action for infringement of a trade mark unless he was the registered owner of the mark, but the words seem very inapplicable to deprive a person of a right of property, which a right to a trade mark was at common law. However, it is not necessary to decide that question, because it cannot be said that the two marks are identical.

On the other two objections the Registrar was of opinion on the evidence that there had been no honest user—no genuine user—of the word "Excelsior" by the appellants in New South Wales, and he found that the two marks so closely resembled one another as to be calculated to deceive. There was abundant evidence that the respondents had used their mark in New South Wales since 1882. But the Registrar appears to me to have fallen into error, perhaps from his not having a sufficient knowledge of the geography of New South Wales. The evidence for the respondents showed that their trade mark had been used since 1882 in the western district of New South Wales surrounding the town of Dubbo, which had no commercial intercourse with the Riverina District. But the evidence also showed that the appellants had used their trade mark in the Riverina District for a long period. It is said that the appellants' witnesses did not make sufficiently definite statements as to the places where the trade mark was used. But all the statements are made by persons carrying on business at different towns in the Riverina District, and they say they had known the appellants' trade mark all the time that the respondents' mark was being used. There is ample evidence therefore of honest concurrent user in New South Wales for a period of over 20 years. Under those circumstances, the objection under the Act of New South Wales being gone, what ought to be done? All that remains for the respondents to rely upon is sec. 114 of the Trade Marks Act 1905 which provides that "no mark the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a Court of Justice, or the use of which would be contrary to law or morality, shall be used or registered as a trade mark or part of a trade mark."

As a matter of strict right, if there are two marks belonging to two different persons of which there has been honest concurrent user, I should not like to say that sec. 114 would over-ride sec. 28, which makes provision for the case of honest concurrent user. It provides that in the case of honest concurrent user, "the Registrar, Law Officer, or the Court may, in his or its discretion, permit the registration of the same trade mark or of nearly identical trade marks for the like goods or class of goods by more than one proprietor, subject to such conditions and limitations as to mode or place of user or otherwise as he or it thinks fit to impose." But it is not necessary to have recourse to that section, because the only objection there could be to the registration of the appellants' trade mark is the possibility of deception, and whether the case of possibility of deception provided for in sec. 114 would make it practically mandatory on the Court to impose conditions as to the mode or place of user it is unnecessary to determine now. The only objection is that the appellants' trade mark might be calculated to deceive persons who have been accustomed to attach the word "Excelsior" to the respondents' goods. The Court has, on an appeal to it, power under sec. 44 to attach conditions to the grant of an application for registration. To deprive the appellants of the right to use their trade mark, which they have been using for 25 years, would be unjust to them, and to allow them to use it in such a manner as to represent to persons accustomed to buy the respondents' article that the article of the appellants was that of the respondents would, while in no sense absolutely depriving the respondents of any right, interfere substantially with their right. Therefore, in my opinion, this is a proper case for imposing conditions upon the registration. The conditions have been discussed during argument, and those which I and my brothers think reasonable are that in respect of New South Wales the application should be granted subject to the conditions that the appellants shall not use the mark upon yellow paper, and shall, in every case in which they use the trade mark in New South Wales, prefix the word "McKenzie's."

The other appeal is as to application No. 1193. The parties are the same and the objections are the same, but the mark which the appellants seek to have registered is different. It consists of the portrait of an elderly gentleman in the middle: above him are the sun, the crescent moon and five stars, and below him is the word "The Excelsior" on a scroll. As far as that mark is concerned there is no similarity between it and the respondents' registered trade mark, and any probability of deception is limited to the word "Excelsior" which occurs in both. It has been used by the appellants in New South Wales for over 20 years. In this case, for the reasons given in the other case, we think the applications should be granted with respect to New South Wales with this exception, that it shall not be used upon yellow wrappers or labels. Both appeals, therefore, will be allowed.

Isaacs J.

I entirely concur, with this additional observation: I think sec. 114 of the Trade Marks Act 1905 applies both to the use and the registration of trade marks.

Higgins J. read the following judgment.

I concur in the orders which have been stated. I think that the conditions which are imposed on the registration under application 1192, taken with secs. 6, 50 and 51 of the Trades Marks Act 1905, sufficiently protect any rights which the respondents have under the New South Wales registration. Under sec. 50, registration under that Act is mere primâ facie evidence of right to ex-exclusive use; and under sec. 51 it becomes after five years conclusive evidence "subject to this Act"—that is to say, subject (inter alia) to sec. 6.

Appeals allowed.

Solicitors, for the appellants, Waters & Crespin.

Solicitor, for the respondents, S. E. Pile, Sydney.