RESPONDENT AND APPELLANT. Trade Mark-Application-Applications by two persons-Nearly identical marks-
Power of Registrar of Trade Marks-Refusal to register-Trade Marks Act 1905-1912 (No. 20 of 1905-No. 19 of 1912), secs. 27, 32, 33.
Sec. 27 of the Trade Marks Act 1905-1912 provides that Where each of several persons claims to be the proprietor of the same trade mark, or of nearly identical trade marks in respect of the same goods or description of goods, and to be registered as such proprietor, the Registrar may refuse to register any of them until their rights have been determined by the Court, or have been settled by agreement in a manner approved by him or (on appeal) by the Law Officer or the Court.
Held, that the power conferred by that section on the Registrar may be exercised at any time whether before or after the Registrar has, under sec. 33, accepted the applications of the persons so claiming.
Held, also, that in determining the question whether the marks are "nearly identical within the meaning of sec. 27, the inquiry is not whether the marks are likely to be confused with one another or are calculated to deceive, but whether there is claimed by several persons one mark or what the statute treats as one mark.
On 8th August 1919 the Lincoln Motor Co., of Detroit, Michigan, United States of America, applied for the registration of a trade mark in class 22 in respect of automobiles. An applica-
MOTOR Co.
tion to amend that application by substituting another mark was made on 19th November 1920, and the amendment was allowed on 30th November 1920. The following is a copy of the mark so substituted :-
OLN On 17th September 1919 Charles Innes, of Sydney, trading as the Lincoln Motor Car Co., applied for the registration of a trade mark in class 6 in respect of motor-cars and motor-car parts. The following is a copy of the mark :-
CINCOLV The applications were heard together by the Acting Registrar of Trade Marks, who, on 30th November 1920, held that the marks were "nearly identical" within the meaning of sec. 27 of the Trade Marks Act, and he refused to register either mark until the rights of the applicants had been determined by the Court.
From that decision each party appealed to the High Court pursuant
to sec. 35 of the Trade Marks Act, and the appeals coming on for hearing before Gavan Duffy J. were by him referred to the Full Court.
E. M. Mitchell, for Charles Innes. The Registrar should have accepted both applications and allowed matters to take their appointed course. The power conferred upon the Registrar by sec. 27 of the Trade Marks Act cannot be exercised until after the applications have been accepted. At present the Registrar does not know what the rights of the parties are,…
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.
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AGLC
Aristoc Ltd v Rysta Ltd [1921] HCA 16
Case
[1921] HCA 16
Decision Date
CaseChat Overview and Summary
The case involved two parties, Lincoln Motor Company and Charles Innes (trading as Lincoln Motor Car Co.), who each applied to register a trade mark for motor vehicles. The dispute arose when the Acting Registrar of Trade Marks refused to register either mark, citing section 27 of the *Trade Marks Act 1905-1912*, which allows the Registrar to refuse registration if multiple parties claim ownership of the same or nearly identical trade marks until their rights are determined by the Court. Both applicants appealed this decision to the High Court.
The legal issues before the Full Court were twofold: first, whether the Registrar had the power under section 27 to refuse registration before the applications had been formally accepted; and second, whether the trade marks in question were "nearly identical" within the meaning of section 27. The Court was required to interpret the scope and timing of the Registrar's powers under the Act and to establish the correct test for determining if marks were "nearly identical."
The Court reasoned that the power conferred by section 27 could be exercised at any time, not solely after an application had been accepted, provided that multiple parties claimed ownership of the same or nearly identical marks. The Court clarified that the inquiry under section 27 was not about whether the marks were likely to cause confusion or deceive the public, but rather whether the marks themselves were essentially the same or treated as such by the statute. Applying this test, the Court found that while both marks prominently featured the word "Lincoln," the overall devices were not identical and, crucially, not "nearly identical" in the statutory sense. Therefore, the Registrar had erred in exercising his power under section 27.
Consequently, the Full Court allowed both appeals, setting aside the Registrar's decision. The Court ordered that the Registrar should proceed with the applications in due course, leaving the ultimate decision on registration, including any potential modifications or conditions, to the Registrar's discretion under other provisions of the Act. The parties were to bear their own costs of the appeal.