Bedggood & Company v Graham [1909] HCA 9; (1909) 7 CLR 752 (26 March 1909)

HIGH COURT OF AUSTRALIA

Bedggood & Company Applicants, Appellants; and Graham Opponent, Respondent.

H C of A

On appeal from the Registrar of Trade Marks.

26 March 1909

Griffith C.J., O'Connor and Isaacs JJ.

Starke (with him Dethridge), for the appellants.

Schutt, for the respondent.

Griffith C.J.

This is an appeal from a decision of the Registrar of Trade Marks refusing the appellants' application for the registration for New South Wales of a trade mark used by them in connection with boots and shoes. The mark consists of a shield surmounted by a crown within a circle, having written across the shield from the lower left hand side to the upper right hand side the word "Premier." Above that word is the arm of a man holding a hammer, and below it a monogram of the letters B. and C. Before the coming into operation of the Commonwealth Trade Marks Act 1905 the appellants had this device registered in all the States except New South Wales. The respondent objected to its being registered in the Commonwealth register in respect of New South Wales on the ground that he was the proprietor of a trade mark registered in New South Wales in January 1890. That trade mark consisted of the words "Premier Brand" in a circle. The Registrar rejected the application of the appellants so far as New South Wales is concerned, and this appeal is from that decision.

A good deal of evidence was given from which it is established, clearly enough I think, that from a period anterior to the registration of the respondent's trade mark in New South Wales the appellants were using in New South Wales the device which they now seek to register in connection with boots and shoes, and have been using it ever since. The question, then, is whether, under these circumstances, the objection is a good one.

A number of interesting questions have been raised and argued with respect to the meaning of the New South Wales Act of 1865, under which the respondent's trade mark was registered; and if the appellants found it necessary to rely on sec. 9 of the Commonwealth Trade Marks Act 1905, which gives special rights with regard to unregistered trade marks in use before the passing of the Act, it would have been necessary to express an opinion on those questions. But I think that the application to register the device in question may be regarded, as far as New South Wales is concerned, as an application to register a trade mark for the first time. The objection that another person has a trade mark substantially the same or nearly identical is not a fatal objection under sec. 28. In my opinion the two marks are not the same or nearly identical. But, if they were, the case is clearly brought within sec. 28, which provides that:—"In case of honest concurrent user or of special circumstances 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." As I have said, I think there is strong evidence of honest concurrent user in New South Wales. Moreover, that user was known for many years to the respondent, and he has allowed the appellants to go on using their device in the southern parts of New South Wales, and, though he has threatened litigation, he has never taken any steps to prevent that user. I think there were both concurrent user and special circumstances, if either were necessary. Under these circumstances it appears to me that the Registrar was wrong in refusing registration with regard to New South Wales, and that the appeal should be allowed. It is pointed out that the form of the application is not entirely satisfactory. We think it better to order the application to be granted so far as New South Wales is concerned, but modifying the trade mark by stating that the essential particulars are "a distinctive device containing the word Premier in the manner above shown."

O'Connor J.

I am of the same opinion.

Isaacs J.

I agree.

Appeal allowed. Application to be granted with the modification above stated. Respondent to pay the costs of the appeal.

Solicitors, for the appellants, Waters & Crespin.

Solicitors, for the respondent, Madden & Butler.