Alexander Ferguson and Co v Daniel Crawford and Co Ltd - [1910] HCA 6

10 CLR 207

ALEXANDER FERGUSON &CO.

APPELLANTS;

DANIEL CRAWFORD &CO. LTD.

RESPONDENTS. Trade Mark-Practice-Costs-Award of costs by Law Officer-Excercise of discre.

tion-Appeal to High Court-Trade Marks Act 1905 (No. 20 of 1905), secs. 95, 96.

The High Court has jurisdiction to entertain an appeal as to the costs awarded by the Law Officer on an appeal to him from the Registrar of Trade

But on such an appeal the Court will not overrule his order unless there has been a disregard of principle or a misapprehension of facts.

In re Gilbert; Gilbert v. Hudlestone, 28 Ch. D., 519, applied.

APPEAL from the Law Officer.

An application was made to the Registrar of Trade Marks under the Trade Marks Act 1905 by Alexander Ferguson &Co. for the registration of a trade mark in respect of whisky, of which the letters "P. &O." were a prominent feature. The application was opposed by Daniel Crawford &Co. Ltd. The Registrar dismissed the opposition with costs.

From this decision the opponents appealed to the Law Officer, who allowed the appeal and directed that the applicants should pay to the opponents £8 8s. costs of the appeal.

The applicants gave notice of appeal to the High Court from this decision, and thereupon the opponents gave notice that on the hearing of the appeal they would contend that the decision of the Law Officer, in SO far as it did not reverse or otherwise

10 CLR 208

deal with the decision of the Registrar awarding to the applicants

the costs of the proceedings before the Registrar, and in SO far as it did not award the costs of such proceedings to the opponents, should be set aside or varied, and that an order should be made that the award of such costs by the Registrar should be set aside and that the applicants should pay to the opponents their costs of and incidental to the proceedings before the Registrar Other facts are stated in the judgment hereunder. Prior to the appeal coming on for hearing, the appellants gave notice that they abandoned it, and the only matter argued at the hearing was the contention by the respondents that the order should be varied.

Colien (with him Bryant), for the respondents. The main questions before the Registrar were whether the appellants' label was similar to that of the respondents, and whether the appel- lants' label was likely to deceive the public. The Registrar found that there was no similarity between the label of the appellants and that of the respondents, and the Law Officer agreed with him. The Registrar also found that the appellants' label was not likely to deceive the public, but the Law Officer disagreed with that finding and decided in favour of the respondents. That being so, the ordinary principle should be applied, and the Law Officer should have awarded the respondents the general costs and have given to the appellants the costs of the issue on which they suc- ceeded. The Court has, under…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Alexander Ferguson and Co v Daniel Crawford and Co Ltd

Details

AGLC: Alexander Ferguson and Co v Daniel Crawford and Co Ltd [1910] HCA 6
Case: [1910] HCA 6
Decision Date: 24 March 1910

CaseChat Overview and Summary

Alexander Ferguson & Co. (applicants) sought to register a trade mark for whisky featuring the prominent letters "P. & O.". Daniel Crawford & Co. Ltd. (opponents) opposed this application before the Registrar of Trade Marks. The Registrar dismissed the opposition with costs awarded to the applicants. The opponents appealed this decision to the Law Officer, who allowed the appeal and ordered the applicants to pay the opponents £8 8s. in costs for the appeal. The applicants then appealed to the High Court.

The legal issues before the High Court were whether it had jurisdiction to entertain an appeal concerning costs awarded by the Law Officer, and if so, what principles should guide its review of the Law Officer's discretionary decision on costs. The opponents also sought to vary the Law Officer's order to include the costs of the proceedings before the Registrar.

The High Court held that it possessed jurisdiction to hear appeals regarding costs awarded by the Law Officer. However, it affirmed that such an appeal would not lead to the Law Officer's order being overturned unless there was a clear disregard of legal principle or a misapprehension of the facts. The Court found that the Law Officer had properly considered the evidence and the relevant principles concerning costs, particularly the substantial expenditure incurred by the opponents on an issue where they ultimately failed. Therefore, the Court concluded there was no basis to interfere with the Law Officer's exercise of discretion.

The appeal by Alexander Ferguson & Co. was dismissed. The respondents, Daniel Crawford & Co. Ltd., were awarded their costs of the appeal to the High Court, and were also to pay the costs of their notice to vary the order.

Orders