Innes v Lincoln Motor Company [1921] HCA 16; (1921) 29 CLR 277 (29 April 1921)

HIGH COURT OF AUSTRALIA

Innes Appellant and Respondent; and Lincoln Motor Company Respondent and Appellant.

H C of A

29 April 1921

Knox C.J., Gavan Duffy, Rich and Starke JJ.

E. M. Mitchell, for Charles Innes.

Leverrier K.C. (with him Harrington), for the Lincoln Motor Co.

H. E. Manning, for the respondent the Registrar of Trade Marks.

E. M. Mitchell, in reply,

The Court delivered the following written judgment:—

April 29

Knox C.J.,

Gavan Duffy, Rich and Starke JJ.

Applications were made to the Registrar of Trade Marks by the Lincoln Motor Co., of America, and by Charles Innes, of Sydney, trading as Lincoln Motor Car Co., for the registration of trade marks. The dates of these applications and the amendment that was made in the application of the American company are not material for present purposes. The mark applied for by the American company was a device consisting of an embellished shield or escutcheon, with wings oval in shape, bearing the word "Lincoln" in capital letters across its face and the words "Leland Build" in small letters at the top of the shield. The mark applied for by Innes was a device consisting of a five-pointed star with circular points bearing the word "Lincoln" in capital letters in a diamond across the face of the star and "Australia" in smaller letters in an oval below the diamond. Neither application has been accepted (see Trade Marks Act 1905-1912, secs. 33, 36). The Registrar, purporting to act under sec. 27 of the Act, refused to register either mark until the rights of the applicants had been determined by the Court. Both applicants appealed to this Court from the decision of the Registrar (see sec. 35 of the Act).

It was contended by the learned counsel for Innes that the authority conferred upon the Registrar by sec. 27 to refuse to register could not be exercised until after the acceptance of an application. In our opinion, the exercise of the authority is not so limited, and is conditioned only upon (1) claims made by several persons to be proprietor of the same mark or of nearly identical marks, and (2) claims, i.e., applications, to be registered as such proprietors. It is not disputed in this case that applications to be registered were made by two persons, but the question is whether the claims are to the same mark or to nearly identical marks. The learned counsel for the American company argued his appeal on this ground, namely, that the marks applied for were not "the same trade mark" or "nearly identical trade marks." Consequently, he contended that the authority of the Registrar never arose. The office of sec. 27 is to force the determination of a question of ownership, namely, the right to a trade mark. It is framed on the footing that two or more persons claim the same thing or things so like that they may rightly be called the same thing. The inquiry is not whether the marks for which application is made are likely to be confused with one another or are calculated to deceive; but whether there is one mark, or what the statute treats as one mark, and which of two or more persons is entitled to that mark. We have not overlooked the observations of Sargant J. in In re Maeder's Trade Mark Application[1], but we are of opinion that sec. 27 does not extend to the case where confusion may arise through the use of trade marks which are not really the same.

Turning now to the devices claimed by the applicants in this case, there is no difficulty in saying that the marks are not identical. Then, are they nearly identical? The only common feature is the word "Lincoln." It is no doubt conspicuous. But when you examine the totality of the marks, it is impossible to say that they are "nearly identical," that is to say, so alike that they can be described as one and the same mark.

Both appeals must, therefore, be allowed, and the applications must proceed in due course.

Our decision that the Registrar was not entitled to exercise the authority conferred upon him by sec. 27 in these cases leaves him with ample power ultimately to refuse registration of either or both marks, or to grant them with or without modifications or conditions (sec. 42). It may be that the use of the word "Lincoln" by both traders will confuse and deceive the public, and if the Registrar is of that opinion he may think it right to refuse the American company's application owing to the use of the word "Lincoln" in Australia, or to grant it with or without modification or condition. He may also think it right to refuse Innes's attempt to appropriate a common name that is not his own, or to grant it with or without modification. All this is eventually for the discretion of the Registrar, and the Court in no wise interferes with the full and proper exercise of his function.

The parties will abide their own costs of appeal.

Appeals allowed. Decision of Registrar set aside. Order that Registrar do proceed with applications in due course of law.

Solicitors for Charles Innes, Braund & Watt.

Solicitors for Lincoln Motor Co., Perkins, Stevenson & Co.

Solicitor for the Registrar of Trade Marks, Gordon H. Castle, Crown Solicitor for the Commonwealth.

[1] (1916) 1 Ch., 304.