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High Court of Australia |
H C of A
26 May 1947
Williams J.
R. L. Taylor, for the applicant.
Hardie and Macfarlan, for the respondent company.
Thomas, for the Registrar of Trade Marks.
May 26
Williams J
. delivered the following written judgment:—This is a motion made by the Seven Up Company, which is incorporated in the United States of America, under ss. 71 and 72 of the Trade Marks Act 1905-1936 to rectify the register of trade marks by removing therefrom the trade mark "8 UP" of which the respondent, an Australian company incorporated in Victoria, is the registered proprietor for a term of fourteen years from the date of application on 17th August 1939. The trade mark is registered in class 44 in respect of mineral and aerated waters.
Two grounds are stated in the notice of motion, (i) that the entry of this trade mark in the register was wrongly made; (ii) that there has been no bona fide user of the trade mark for a consecutive period of three years since the date of the last registration thereof.
The second ground can be shortly disposed of. Counsel for the appellant did not abandon this ground, but said that he could not argue it. Regulation 13 (2) of the National Security (Industrial Property) Regulations provides that an order shall not be made under s. 72 of the Trade Marks Act 1905-1936 for the removal of a trade mark from the register if the court is satisfied that the want of bona fide user of the trade mark is due to circumstances attributable to the war. The National Security Act expired on 31st December 1946, but this provision has been continued in force by the Defence (Transitional Provisions) Act 1946. The constitutional validity of this provision as an exercise of the defence power was not challenged. The respondent has not used the trade mark since it was registered, but the evidence satisfies me that this is due to circumstances attributable to the war. This ground therefore fails.
The contest has centred around the first ground. During the argument I was asked to extend the ground to include an entry wrongly remaining on the register, but there is not sufficient evidence to support an order that the register should be rectified on this extended ground. The evidence in support of the motion is contained in the affidavit of H. C. Grigg, the president of the applicant company. Counsel for the respondent objected to those portions of this affidavit which relate to events occurring after 17th August 1939, and this evidence is in my opinion inadmissible. Paragraph 14 of the affidavit relates to negotiations in 1939 between the applicant and one Guy Hutchinson of Melbourne, now deceased, with a view to placing its beverages and products on the Australian market. The paragraph states that, in or before the month of December 1939, a case of beverages and a quart jug of extract were imported into Australia by Hutchinson bearing the trade mark "7Up" to assist him in the steps he was taking to put these products on the Australian market. In the absence of evidence that the goods were imported prior to 17th August 1939, I rejected this evidence as inadmissible. Paragraph 15 of the affidavit states that products of the applicant have been advertised under the trade mark "7Up" in three publications which circulated in Australia prior to the year 1940, namely: "The National Carbonator and Bottler," "The Crown of Baltimore," and the "Journal of the Americal Medical Association." This evidence was objected to unless these journals were produced. The only journal produced was "The National Carbonator and Bottler," but the advertisements relied on in copies of this journal were not advertisements for the products of the applicant, although they did contain representations of bottles of beverages with "7Up" upon them. In the end counsel for the applicant did not seek to tender these copies in aid of par. 15, but he extracted an admission from H. W. Holmes, a director of the respondent that this company subscribed to this journal and sought to tender copies as evidence that the respondent knew that "7Up" was used as a trade mark in America at the date it applied for registration of the trade mark "8 UP" . But the director only became a director of the respondent in 1942 and aware that the respondent was a subscriber after that date so that he could not make an admission relating to the period prior to 17th August 1939. However it appears from his evidence that John Dickson, the managing director of the respondent, until his death in 1942, was in the habit of making business visits to the United States prior to 1939, and I have no doubt that in 1939 he was well aware of the existence of the applicant and that it was using the trade mark "7Up" in that and other countries in connection with its business.
Those portions of the affidavit which were not objected to prove that the applicant was incorporated under the name of the Howdy Company in 1921 and changed its name to the Seven Up Company in 1936. Since 1928 the applicant has continuously used the trade mark "7Up" in the United States and in a large number of other foreign countries to designate its goods including extracts and other ingredients for making beverages and syrups sold by it, and for designating beverages manufactured therefrom in the manner hereinafter mentioned. The applicant commenced to use the mark in Canada in 1932, and soon had an extensive business there. Since 1938 its business in Canada has been conducted by a subsidiary company, Dominion Seven Up Co. Ltd. The applicant has been the registered proprietor in the United States of the trade mark "Seven Up" since 4th October 1928, and of the trade mark "7Up" since 24th September 1935. It has used these trade marks by itself producing or having produced for it the extracts and certain other ingredients which are used to manufacture the aerated beverages sold in bottles marked "7Up" and supplying these extracts and ingredients in appropriate packages bearing the trade mark "7Up" to plants independently owned and operated, known as bottlers. The bottlers are each allotted by agreement certain exclusive territory. The bottlers manufacture the beverages in accordance with a formula supplied by the applicant, and are required to maintain a standard of quality and purity under the supervision and tests of the applicant. The bottlers mix these extracts and other ingredients of the applicant with their own sugar and other ingredients and so produce a syrup. The beverage is manufactured by the bottlers from water, the syrup, and carbonating gas or carbon dioxide. It is the exception and not the rule for the applicant to handle either the syrup or the finished beverage. The bottlers bottle the beverage in standard bottles having thereon a label including the trade mark "Seven Up," the whole process being in accordance with standards fixed, supervised and enforced by the applicant. The bottlers and the applicant co-operate in the advertising of the goods under the "7Up" trade mark.
The whole of this evidence relates to the user of the trade mark outside Australia. There is no evidence that prior to 17th August 1939 the applicant had ever used the trade mark "Seven Up" in Australia, or that there was any association in the minds of the Australian public between the expression "Seven Up" or "7Up" and the business of the applicant. The respondent had never used the expression "8 UP" as a trade mark before it applied for registration. But it is sufficient if the applicant proposes to use the mark upon or in connection with goods for the purpose of indicating that they are its goods by virtue of manufacture, selection, certification, or offering for sale.
It appears that early in 1939 F. W. Holmes believed that war was inevitable in the near future, and that the respondent would be called upon to produce large quantities of goods for the armed forces, and suggested to the managing director that an appropriate trade mark for an aerated beverage for the armed forces would be a mark consisting of the words "Australian National Drink" at the top of a label, combined with the expression "2 Up" in the centre, and on the left hand side a figure tossing two coins in the air with the word "Heads" underneath. He produced a sketch to this effect, but the managing director did not approve of the sketch and the matter was dropped. Subsequently the managing director himself applied for the registration of "8 UP" but he did this on his own initiative and there is no evidence of the circumstances leading up to the application. But I have no doubt, as I have already said, that he knew of the existence of the applicant and its trade mark, and I have little doubt that his decision to register "8 UP" in class 44 was influenced to a considerable extent by the desire to make it difficult for the applicant to commence business in Australia in competition with the respondent.
Counsel for the applicant contended that the entry in the register was wrongly made because the respondent was not at the date of the application to register "8 UP" the proprietor of the mark within the meaning of the Trade Marks Act. He submitted that "8 UP" was a clear piracy of "7Up" , and that the applicant was the proprietor of "7Up" , and as such the only person entitled to register "7Up" or any mark so nearly resembling "7Up" as to be likely to deceive.
He also contended that "8 UP" was a mark which should not have been registered because it was a mark which was likely to deceive the public into believing that the goods upon which it was used were the applicant's goods and was therefore disentitled to protection in a court of justice within the meaning of s. 114 of the Act. This section provides that no such mark shall be used or registered as a trade mark or part of a trade mark. He also contended that the application to register "8 UP" should have been refused because it was not made bona fide but in order to prevent the applicant from registering "7Up" as a trade mark in Australia and carrying on business here under its established mark.
In the case of Re a Trade Mark of the New Atlas Rubber Co. Ltd.[1] an Italian firm trading in Italy had a trade mark there consisting of the word "Talisman" which it used on goods sold in Italy. It ordered rubber heels for some of these goods from a company in England which were manufactured in England stamped with this word and the initials of the Italian firm. The English company registered the word "Talisman" in England as its own trade mark. It did so to prevent the Italian firm ordering heels from any other company in England. The trade mark was ordered to be removed from the register. Astbury J. said:—"It was contended on behalf of the Respondents, that if territorial, the same mark may exist in different countries, registered in different people's names. That is quite true as a bald statement. There may be cases, of course, where a man in this country may innocently register a mark which happens to be a trade mark of some foreigner in some foreign country. It certainly is not a practice to be encouraged, and very little is required to prevent such a registration, if the facts are known to the registrar, from being permitted. But it is perfectly plain that, if there has been user in this country by, or on behalf of, the foreign owner of the mark, then the person who has so used that mark, as agent for and on behalf of the foreign owner, cannot appropriate it as his property by registration. ... Although there had not been any public user in this country, there had been a limited user of the mark, and that, in my judgment, was sufficient to prevent the respondent from legally registering it" [2] .
In a case in this Court, Blackadder v. Good Roads Machinery Co. Inc.[3] a company incorporated in the United States manufactured and sold there road-grading machinery under the trade marks "Winner" and "Champion." These machines were for several years imported into and sold in Australia by a local company. The machines were at first imported and sold under the word "Champion." Subsequently the goods arrived in this country bearing either word, but where the goods were marked "Winner" the local company obliterated or removed this word, and substituted the word "Champion," so that the machinery was always sold in Australia under the trade mark "Champion." Orders were however given and invoices and advertisements despatched to Australia describing the goods as "Winner" machines. Subsequently Blackadder and a partner who had been employed by the local company set up a business on their own account in the same kind of machinery, and obtained registration of the word "Winner" as a trade mark in respect of such machinery. The American company applied to rectify the register of trade marks. The application succeeded before Starke J. and an appeal to the Full Court was dismissed. Starke J., after pointing out that the facts did not establish that the word "Winner" had become distinctive in Australia of the road-grading machines of the American company, said that:—"The American company had lawfully used the word in Australia in the limited way already mentioned, but had acquired no exclusive right to its use. The effect of the registration of the word by Blackadder is that the American company cannot register the word or use the name in Australia. The registration of the word will prevent the company which originated it from applying that word to machines sent to or sold in Australia. The cases establish, in my opinion, that Blackadder was not, in the circumstances stated, the proprietor of the mark or entitled to its exclusive use and registration" [4] . His Honour then cited a number of cases including the above decision of Astbury[5] . Isaacs J. said in the Full Court that:—"In a very real sense the name" (Winner) "was the trade property of the American company. It was so closely associated with goods sold, it is true, in America, but for shipment to Australia, that if the respondent were now applying for registration, I should feel constrained to exercise my discretion to refuse the application to register" [6] .
In Impex Electrical Ltd. v. Weinbaum[7] it was held that an English Company was entitled to register as a trade mark in England the word "Dario," which was already being used as a trade mark in the same class of goods in France by a French company. Tomlin J. (as he then was) said:—"The argument presented to me by the defendant in support of the motion to rectify is, as I understand, in effect this: If a manufacturer in some foreign country has a mark registered in that foreign country, that is a mark which cannot be registered in this country, or at any rate which cannot be registered in this country by anybody who ever imports the goods manufactured by the owner of the mark in a foreign country; and the Apollinaris Case[8] is cited as an authority in support of that proposition. It seems to me that the whole contention rests on a misapprehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. ... If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something that has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country. That, I venture to think, is the basis of the decision in the Apollinaris Case[9] " [10] .
In Re an application by Notox Ltd.[11] it was held that an English company was entitled to register as a trade mark in England the word "Notox" which was already being used as a trade mark in the same class of goods in the United States and other foreign countries by an American company. Luxmoore J. (as he then was), after referring to the evidence of user of the word "Notox" in the United States and other foreign countries said that this user "is really of no assistance, and I am satisfied that the evidence ... is wholly irrelevant, for it relates to user abroad and does not relate in any way to user in this country" [12] .
In Re the Trade Mark of Elaine Inescourt[13] the goods of a Swiss trader had been imported into England and sold there by the importer under the trade mark of the Swiss trader which consisted of the words "Le Vampire." The importer became the registered proprietor of this trade mark in England. The Swiss trader applied to rectify the register. Eve J. granted the application. His Lordship said:—"The result of the evidence is that the mark was used in this country in connection and as identified with the applicant's goods before the application to register, and when that application was made it was not open to the respondent to claim successfully any right to the mark for herself. ... This conclusion is in accordance with the decision of Mr. Justice Stirling in Re the European Blair Camera Co's. Trade Mark[14] and in no way departs from the principles applied by Mr. Justice Tomlin in the Dario Mark Case[15] " [16] .
In my opinion the effect of these cases is that in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader. The registrar is entitled to refuse to register the mark for such goods. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register.
Further, if at the date of the application for registration, the mark of the foreign trader, although it has not been used in Australia, has nevertheless become associated in the minds of the Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia or in some other manner, the registrar is entitled to refuse to register the mark for such goods because it is likely to deceive. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register. (In re Remfry's Trade Mark[17] ; Radio Corporation Pty. Ltd. v. Disney[18] ).
But none of these circumstances exist in the present case. There were no business or other arrangements between the applicant and the respondent which made it fraudulent for the respondent to apply to register "8 UP" on 17th August 1939. The mark "7Up" had never been used on the goods of the applicant in Australia and had never become associated in the minds of the Australian public with its goods at that date.
For these reasons I must order that the motion be dismissed and that the applicant pay the costs of the respondent and of the Registrar of Trade Marks including reserved costs.
From this decision the applicant appealed to the Full Court.
Appeal dismissed. Appellant to pay costs of the respondents.
Solicitors for the appellant, Owen Jones, McHutchinson & Co.
Solicitors for the respondent company, Moule, Hamilton & Derham, Melbourne, by Dawson, Waldron, Edwards & Nicholls.
Solicitor for the Registrar of Trade Marks, H. F. E. Whitlam, Crown Solicitor for the Commonwealth.
H C of A
19 August 1947
Latham C.J., Rich and Starke JJ.
R. L. Taylor, for the applicant.
Hardie and Macfarlan, for the respondent company.
Thomas, for the Registrar of Trade Marks.
May 26
Williams J
. delivered the following written judgment:—This is a motion made by the Seven Up Company, which is incorporated in the United States of America, under ss. 71 and 72 of the Trade Marks Act 1905-1936 to rectify the register of trade marks by removing therefrom the trade mark "8 UP" of which the respondent, an Australian company incorporated in Victoria, is the registered proprietor for a term of fourteen years from the date of application on 17th August 1939. The trade mark is registered in class 44 in respect of mineral and aerated waters.
Two grounds are stated in the notice of motion, (i) that the entry of this trade mark in the register was wrongly made; (ii) that there has been no bona fide user of the trade mark for a consecutive period of three years since the date of the last registration thereof.
The second ground can be shortly disposed of. Counsel for the appellant did not abandon this ground, but said that he could not argue it. Regulation 13 (2) of the National Security (Industrial Property) Regulations provides that an order shall not be made under s. 72 of the Trade Marks Act 1905-1936 for the removal of a trade mark from the register if the court is satisfied that the want of bona fide user of the trade mark is due to circumstances attributable to the war. The National Security Act expired on 31st December 1946, but this provision has been continued in force by the Defence (Transitional Provisions) Act 1946. The constitutional validity of this provision as an exercise of the defence power was not challenged. The respondent has not used the trade mark since it was registered, but the evidence satisfies me that this is due to circumstances attributable to the war. This ground therefore fails.
The contest has centred around the first ground. During the argument I was asked to extend the ground to include an entry wrongly remaining on the register, but there is not sufficient evidence to support an order that the register should be rectified on this extended ground. The evidence in support of the motion is contained in the affidavit of H. C. Grigg, the president of the applicant company. Counsel for the respondent objected to those portions of this affidavit which relate to events occurring after 17th August 1939, and this evidence is in my opinion inadmissible. Paragraph 14 of the affidavit relates to negotiations in 1939 between the applicant and one Guy Hutchinson of Melbourne, now deceased, with a view to placing its beverages and products on the Australian market. The paragraph states that, in or before the month of December 1939, a case of beverages and a quart jug of extract were imported into Australia by Hutchinson bearing the trade mark "7Up" to assist him in the steps he was taking to put these products on the Australian market. In the absence of evidence that the goods were imported prior to 17th August 1939, I rejected this evidence as inadmissible. Paragraph 15 of the affidavit states that products of the applicant have been advertised under the trade mark "7Up" in three publications which circulated in Australia prior to the year 1940, namely: "The National Carbonator and Bottler," "The Crown of Baltimore," and the "Journal of the Americal Medical Association." This evidence was objected to unless these journals were produced. The only journal produced was "The National Carbonator and Bottler," but the advertisements relied on in copies of this journal were not advertisements for the products of the applicant, although they did contain representations of bottles of beverages with "7Up" upon them. In the end counsel for the applicant did not seek to tender these copies in aid of par. 15, but he extracted an admission from H. W. Holmes, a director of the respondent that this company subscribed to this journal and sought to tender copies as evidence that the respondent knew that "7Up" was used as a trade mark in America at the date it applied for registration of the trade mark "8 UP" . But the director only became a director of the respondent in 1942 and aware that the respondent was a subscriber after that date so that he could not make an admission relating to the period prior to 17th August 1939. However it appears from his evidence that John Dickson, the managing director of the respondent, until his death in 1942, was in the habit of making business visits to the United States prior to 1939, and I have no doubt that in 1939 he was well aware of the existence of the applicant and that it was using the trade mark "7Up" in that and other countries in connection with its business.
Those portions of the affidavit which were not objected to prove that the applicant was incorporated under the name of the Howdy Company in 1921 and changed its name to the Seven Up Company in 1936. Since 1928 the applicant has continuously used the trade mark "7Up" in the United States and in a large number of other foreign countries to designate its goods including extracts and other ingredients for making beverages and syrups sold by it, and for designating beverages manufactured therefrom in the manner hereinafter mentioned. The applicant commenced to use the mark in Canada in 1932, and soon had an extensive business there. Since 1938 its business in Canada has been conducted by a subsidiary company, Dominion Seven Up Co. Ltd. The applicant has been the registered proprietor in the United States of the trade mark "Seven Up" since 4th October 1928, and of the trade mark "7Up" since 24th September 1935. It has used these trade marks by itself producing or having produced for it the extracts and certain other ingredients which are used to manufacture the aerated beverages sold in bottles marked "7Up" and supplying these extracts and ingredients in appropriate packages bearing the trade mark "7Up" to plants independently owned and operated, known as bottlers. The bottlers are each allotted by agreement certain exclusive territory. The bottlers manufacture the beverages in accordance with a formula supplied by the applicant, and are required to maintain a standard of quality and purity under the supervision and tests of the applicant. The bottlers mix these extracts and other ingredients of the applicant with their own sugar and other ingredients and so produce a syrup. The beverage is manufactured by the bottlers from water, the syrup, and carbonating gas or carbon dioxide. It is the exception and not the rule for the applicant to handle either the syrup or the finished beverage. The bottlers bottle the beverage in standard bottles having thereon a label including the trade mark "Seven Up," the whole process being in accordance with standards fixed, supervised and enforced by the applicant. The bottlers and the applicant co-operate in the advertising of the goods under the "7Up" trade mark.
The whole of this evidence relates to the user of the trade mark outside Australia. There is no evidence that prior to 17th August 1939 the applicant had ever used the trade mark "Seven Up" in Australia, or that there was any association in the minds of the Australian public between the expression "Seven Up" or "7Up" and the business of the applicant. The respondent had never used the expression "8 UP" as a trade mark before it applied for registration. But it is sufficient if the applicant proposes to use the mark upon or in connection with goods for the purpose of indicating that they are its goods by virtue of manufacture, selection, certification, or offering for sale.
It appears that early in 1939 F. W. Holmes believed that war was inevitable in the near future, and that the respondent would be called upon to produce large quantities of goods for the armed forces, and suggested to the managing director that an appropriate trade mark for an aerated beverage for the armed forces would be a mark consisting of the words "Australian National Drink" at the top of a label, combined with the expression "2 Up" in the centre, and on the left hand side a figure tossing two coins in the air with the word "Heads" underneath. He produced a sketch to this effect, but the managing director did not approve of the sketch and the matter was dropped. Subsequently the managing director himself applied for the registration of "8 UP" but he did this on his own initiative and there is no evidence of the circumstances leading up to the application. But I have no doubt, as I have already said, that he knew of the existence of the applicant and its trade mark, and I have little doubt that his decision to register "8 UP" in class 44 was influenced to a considerable extent by the desire to make it difficult for the applicant to commence business in Australia in competition with the respondent.
Counsel for the applicant contended that the entry in the register was wrongly made because the respondent was not at the date of the application to register "8 UP" the proprietor of the mark within the meaning of the Trade Marks Act. He submitted that "8 UP" was a clear piracy of "7Up" , and that the applicant was the proprietor of "7Up" , and as such the only person entitled to register "7Up" or any mark so nearly resembling "7Up" as to be likely to deceive.
He also contended that "8 UP" was a mark which should not have been registered because it was a mark which was likely to deceive the public into believing that the goods upon which it was used were the applicant's goods and was therefore disentitled to protection in a court of justice within the meaning of s. 114 of the Act. This section provides that no such mark shall be used or registered as a trade mark or part of a trade mark. He also contended that the application to register "8 UP" should have been refused because it was not made bona fide but in order to prevent the applicant from registering "7Up" as a trade mark in Australia and carrying on business here under its established mark.
In the case of Re a Trade Mark of the New Atlas Rubber Co. Ltd.[19] an Italian firm trading in Italy had a trade mark there consisting of the word "Talisman" which it used on goods sold in Italy. It ordered rubber heels for some of these goods from a company in England which were manufactured in England stamped with this word and the initials of the Italian firm. The English company registered the word "Talisman" in England as its own trade mark. It did so to prevent the Italian firm ordering heels from any other company in England. The trade mark was ordered to be removed from the register. Astbury J. said:—"It was contended on behalf of the Respondents, that if territorial, the same mark may exist in different countries, registered in different people's names. That is quite true as a bald statement. There may be cases, of course, where a man in this country may innocently register a mark which happens to be a trade mark of some foreigner in some foreign country. It certainly is not a practice to be encouraged, and very little is required to prevent such a registration, if the facts are known to the registrar, from being permitted. But it is perfectly plain that, if there has been user in this country by, or on behalf of, the foreign owner of the mark, then the person who has so used that mark, as agent for and on behalf of the foreign owner, cannot appropriate it as his property by registration. ... Although there had not been any public user in this country, there had been a limited user of the mark, and that, in my judgment, was sufficient to prevent the respondent from legally registering it" [20] .
In a case in this Court, Blackadder v. Good Roads Machinery Co. Inc.[21] a company incorporated in the United States manufactured and sold there road-grading machinery under the trade marks "Winner" and "Champion." These machines were for several years imported into and sold in Australia by a local company. The machines were at first imported and sold under the word "Champion." Subsequently the goods arrived in this country bearing either word, but where the goods were marked "Winner" the local company obliterated or removed this word, and substituted the word "Champion," so that the machinery was always sold in Australia under the trade mark "Champion." Orders were however given and invoices and advertisements despatched to Australia describing the goods as "Winner" machines. Subsequently Blackadder and a partner who had been employed by the local company set up a business on their own account in the same kind of machinery, and obtained registration of the word "Winner" as a trade mark in respect of such machinery. The American company applied to rectify the register of trade marks. The application succeeded before Starke J. and an appeal to the Full Court was dismissed. Starke J., after pointing out that the facts did not establish that the word "Winner" had become distinctive in Australia of the road-grading machines of the American company, said that:—"The American company had lawfully used the word in Australia in the limited way already mentioned, but had acquired no exclusive right to its use. The effect of the registration of the word by Blackadder is that the American company cannot register the word or use the name in Australia. The registration of the word will prevent the company which originated it from applying that word to machines sent to or sold in Australia. The cases establish, in my opinion, that Blackadder was not, in the circumstances stated, the proprietor of the mark or entitled to its exclusive use and registration" [22] . His Honour then cited a number of cases including the above decision of Astbury[23] . Isaacs J. said in the Full Court that:—"In a very real sense the name" (Winner) "was the trade property of the American company. It was so closely associated with goods sold, it is true, in America, but for shipment to Australia, that if the respondent were now applying for registration, I should feel constrained to exercise my discretion to refuse the application to register" [24] .
In Impex Electrical Ltd. v. Weinbaum[25] it was held that an English Company was entitled to register as a trade mark in England the word "Dario," which was already being used as a trade mark in the same class of goods in France by a French company. Tomlin J. (as he then was) said:—"The argument presented to me by the defendant in support of the motion to rectify is, as I understand, in effect this: If a manufacturer in some foreign country has a mark registered in that foreign country, that is a mark which cannot be registered in this country, or at any rate which cannot be registered in this country by anybody who ever imports the goods manufactured by the owner of the mark in a foreign country; and the Apollinaris Case[26] is cited as an authority in support of that proposition. It seems to me that the whole contention rests on a misapprehension. For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. ... If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something that has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country. That, I venture to think, is the basis of the decision in the Apollinaris Case[27] " [28] .
In Re an application by Notox Ltd.[29] it was held that an English company was entitled to register as a trade mark in England the word "Notox" which was already being used as a trade mark in the same class of goods in the United States and other foreign countries by an American company. Luxmoore J. (as he then was), after referring to the evidence of user of the word "Notox" in the United States and other foreign countries said that this user "is really of no assistance, and I am satisfied that the evidence ... is wholly irrelevant, for it relates to user abroad and does not relate in any way to user in this country" [30] .
In Re the Trade Mark of Elaine Inescourt[31] the goods of a Swiss trader had been imported into England and sold there by the importer under the trade mark of the Swiss trader which consisted of the words "Le Vampire." The importer became the registered proprietor of this trade mark in England. The Swiss trader applied to rectify the register. Eve J. granted the application. His Lordship said:—"The result of the evidence is that the mark was used in this country in connection and as identified with the applicant's goods before the application to register, and when that application was made it was not open to the respondent to claim successfully any right to the mark for herself. ... This conclusion is in accordance with the decision of Mr. Justice Stirling in Re the European Blair Camera Co's. Trade Mark[32] and in no way departs from the principles applied by Mr. Justice Tomlin in the Dario Mark Case[33] " [34] .
In my opinion the effect of these cases is that in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader. The registrar is entitled to refuse to register the mark for such goods. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register.
Further, if at the date of the application for registration, the mark of the foreign trader, although it has not been used in Australia, has nevertheless become associated in the minds of the Australian public with his goods because it has been advertised in publications which have circulated extensively in Australia or in some other manner, the registrar is entitled to refuse to register the mark for such goods because it is likely to deceive. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register. (In re Remfry's Trade Mark[35] ; Radio Corporation Pty. Ltd. v. Disney[36] ).
But none of these circumstances exist in the present case. There were no business or other arrangements between the applicant and the respondent which made it fraudulent for the respondent to apply to register "8 UP" on 17th August 1939. The mark "7Up" had never been used on the goods of the applicant in Australia and had never become associated in the minds of the Australian public with its goods at that date.
For these reasons I must order that the motion be dismissed and that the applicant pay the costs of the respondent and of the Registrar of Trade Marks including reserved costs.
From this decision the applicant appealed to the Full Court.
Appeal dismissed. Appellant to pay costs of the respondents.
Solicitors for the appellant, Owen Jones, McHutchinson & Co.
Solicitors for the respondent company, Moule, Hamilton & Derham, Melbourne, by Dawson, Waldron, Edwards & Nicholls.
Solicitor for the Registrar of Trade Marks, H. F. E. Whitlam, Crown Solicitor for the Commonwealth.
2. (1918) 35 R.P.C., at p. 275.
3. [1926] HCA 57; (1926) 38 C.L.R. 332.
4. (1926) 38 C.L.R., at p. 337.
6. (1926) 38 C.L.R., at pp. 340, 341.
10. (1927) 44 R.P.C., at p. 410.
12. (1930) 48 R.P.C., at p. 178.
16. (1928) 46 R.P.C., at p. 20.
18. [1937] HCA 38; (1937) 57 C.L.R. 448.
20. (1918) 35 R.P.C., at p. 275.
21. [1926] HCA 57; (1926) 38 C.L.R. 332.
22. (1926) 38 C.L.R., at p. 337.
24. (1926) 38 C.L.R., at pp. 340, 341.
28. (1927) 44 R.P.C., at p. 410.
30. (1930) 48 R.P.C., at p. 178.
34. (1928) 46 R.P.C., at p. 20.
36. [1937] HCA 38; (1937) 57 C.L.R. 448.
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