Aristoc Ltd v Rysta Ltd

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.